37 CFR Ch. I (7–1–20 Edition) § 1.957

SUBCHAPTER A—GENERAL

PATENTS 1.28 Refunds when small entity status is later established; how errors in small entity status are excused. PART 1—RULES OF PRACTICE IN 1.29 Micro entity status. PATENT CASES Subpart B—National Processing Provisions

Subpart A—General Provisions PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT GENERAL INFORMATION AND CORRESPONDENCE 1.31 Applicant may be represented by one or Sec. more patent practitioners or joint inven- 1.1 Addresses for non-trademark cor- tors. respondence with the United States Pat- 1.32 Power of attorney. ent and Trademark Office. 1.33 Correspondence respecting patent ap- 1.2 Business to be transacted in writing. plications, reexamination proceedings, 1.3 Business to be conducted with decorum and other proceedings. and courtesy. 1.34 Acting in a representative capacity. 1.4 Nature of correspondence and signature 1.36 Revocation of power of attorney; with- requirements. drawal of patent attorney or agent. 1.5 Identification of patent, patent application, or patent-related proceeding. WHO MAY APPLY FOR A PATENT 1.6 Receipt of correspondence. 1.41 Inventorship. 1.7 Times for taking action; Expiration on 1.42 Applicant for patent. Saturday, Sunday or Federal holiday. 1.43 Application for patent by a legal rep- 1.8 Certificate of mailing or transmission. resentative of a deceased or legally inca- 1.9 Definitions. pacitated inventor. 1.10 Filing of correspondence by Priority 1.44 [Reserved] Mail Express®. 1.45 Application for patent by joint inventors. RECORDS AND FILES OF THE PATENT AND 1.46 Application for patent by an assignee, TRADEMARK OFFICE obligated assignee, or a person who oth- 1.11 Files open to the public. erwise shows sufficient proprietary inter- 1.12 Assignment records open to public in- est in the matter. spection. 1.47 [Reserved] 1.48 Correction of inventorship pursuant to 1.13 Copies and certified copies. 35 U.S.C. 116 or correction of the name or 1.14 Patent applications preserved in con- order of names in a patent application, fidence. other than a reissue application. 1.15 Requests for identifiable records. THE APPLICATION FEES AND PAYMENT OF MONEY 1.51 General requisites of an application. 1.16 National application filing, search, and 1.52 Language, paper, writing, margins, examination fees. compact disc specifications. 1.17 Patent application and reexamination 1.53 Application number, filing date, and processing fees. completion of application. 1.18 Patent post allowance (including issue) 1.54 Parts of application to be filed to- fees. gether; filing receipt. 1.19 Document supply fees. 1.55 Claim for foreign priority. 1.20 Post issuance fees. 1.56 Duty to disclose information material 1.21 Miscellaneous fees and charges. to patentability. 1.22 Fees payable in advance. 1.57 Incorporation by reference. 1.23 Methods of payment. 1.58 Chemical and mathematical formulae 1.24 [Reserved] and tables. 1.25 Deposit accounts. 1.59 Expungement of information or copy of 1.26 Refunds. papers in application file. 1.27 Definition of small entities and estab- 1.60–162 [Reserved] lishing status as a small entity to permit OATH OR DECLARATION payment of small entity fees; when a determination of entitlement to small enti- 1.63 Inventor’s oath or declaration. ty status and notification of loss of enti- 1.64 Substitute statement in lieu of an oath tlement to small entity status are re- or declaration. quired; fraud on the Office. 1.66 Statements under oath.

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1.67 Supplemental oath or declaration. 1.114 Request for continued examination. 1.68 Declaration in lieu of oath. 1.69 Foreign language oaths and declara- AMENDMENTS tions. 1.115 Preliminary amendments. 1.70 [Reserved] 1.116 Amendments and affidavits or other evidence after final action and prior to SPECIFICATION appeal. 1.71 Detailed description and specification 1.117–1.119 [Reserved] of the invention. 1.121 Manner of making amendments in ap- 1.72 Title and abstract. plications. 1.73 Summary of the invention. 1.122–1.124 [Reserved] 1.74 Reference to drawings. 1.125 Substitute specification. 1.75 Claim(s). 1.126 Numbering of claims. 1.76 Application data sheet. 1.127 [Reserved] 1.77 Arrangement of application elements. 1.78 Claiming benefit of earlier filing date TRANSITIONAL PROVISIONS and cross-references to other applications. 1.129 Transitional procedures for limited ex- 1.79 [Reserved] amination after final rejection and restriction practice. THE DRAWINGS AFFIDAVITS OVERCOMING REJECTIONS 1.81 Drawings required in patent application. 1.130 Affidavit or declaration of attribution 1.83 Content of drawing. or prior public disclosure under the 1.84 Standards for drawings. Leahy-Smith America Invents Act. 1.85 Corrections to drawings. 1.131 Affidavit or declaration of prior inven- 1.88 [Reserved] tion or to disqualify commonly owned patent or published application as prior MODELS, EXHIBITS, SPECIMENS art. 1.132 Affidavits or declarations traversing 1.91 Models or exhibits not generally admit- rejections or objections. ted as part of application or patent. 1.92 [Reserved] INTERVIEWS 1.93 Specimens. 1.94 Return of models, exhibits or speci- 1.133 Interviews. mens. TIME FOR REPLY BY APPLICANT; 1.95 Copies of exhibits. ABANDONMENT OF APPLICATION 1.96 Submission of computer program listings. 1.134 Time period for reply to an Office action. INFORMATION DISCLOSURE STATEMENT 1.135 Abandonment for failure to reply 1.97 Filing information disclosure state- within time period. ment. 1.136 Extensions of time. 1.98 Content of information disclosure 1.137 Revival of abandoned application, or statement. terminated or limited reexamination 1.99 [Reserved] prosecution. 1.138 Express abandonment. EXAMINATION OF APPLICATIONS 1.139 [Reserved] 1.101 [Reserved] JOINDER OF INVENTIONS IN ONE APPLICATION; 1.102 Advancement of examination. RESTRICTION 1.103 Suspension of action by the Office. 1.104 Nature of examination. 1.141 Different inventions in one national 1.105 Requirements for information. application. 1.106–1.109 [Reserved] 1.142 Requirement for restriction. 1.109 Effective filing date of a claimed in- 1.143 Reconsideration of requirement. vention under the Leahy-Smith America 1.144 Petition from requirement for restric- Invents Act. tion. 1.110 Inventorship and ownership of the sub- 1.145 Subsequent presentation of claims for ject matter of individual claims. different invention. 1.146 Election of species. ACTION BY APPLICANT AND FURTHER CONSIDERATION DESIGN PATENTS 1.111 Reply by applicant or patent owner to 1.151 Rules applicable. a non-final Office action. 1.152 Design drawings. 1.112 Reconsideration before final action. 1.153 Title, description and claim, oath or 1.113 Final rejection or action. declaration.

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1.154 Arrangement of application elements 1.291 Protests by the public against pending in a design application. applications. 1.155 Expedited examination of design appli- 1.292 [Reserved] cations. 1.293–1.297 [Reserved]

PLANT PATENTS REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT 1.161 Rules applicable. 1.162 Applicant, oath or declaration. 1.301–1.304 [Reserved] 1.163 Specification and arrangement of application elements in a plant application. ALLOWANCE AND ISSUE OF PATENT 1.164 Claim. 1.311 Notice of allowance. 1.165 Plant drawings. 1.312 Amendments after allowance. 1.166 Specimens. 1.313 Withdrawal from issue. 1.167 Examination. 1.314 Issuance of patent. 1.315 Delivery of patent. REISSUES 1.316 Application abandoned for failure to 1.171 Application for reissue. pay issue fee. 1.172 Reissue applicant. 1.317–1.318 [Reserved] 1.173 Reissue specification, drawings, and amendments. DISCLAIMER 1.174 [Reserved] 1.321 Statutory disclaimers, including ter- 1.175 Inventor’s oath or declaration for a re- minal disclaimers. issue application. 1.176 Examination of reissue. CORRECTION OF ERRORS IN PATENT 1.177 Issuance of multiple reissue patents. 1.322 Certificate of correction of Office mis- 1.178 Original patent; continuing duty of ap- take. plicant. 1.323 Certificate of correction of applicant’s 1.179 [Reserved] mistake. PETITIONS AND ACTION BY THE DIRECTOR 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256. 1.181 Petition to the Director. 1.325 Other mistakes not corrected. 1.182 Questions not specifically provided for. ARBITRATION AWARDS 1.183 Suspension of rules. 1.331–1.334 [Reserved] 1.184 [Reserved] 1.335 Filing of notice of arbitration awards. APPEAL TO THE PATENT TRIAL AND APPEAL 1.351–352 [Reserved] BOARD MAINTENANCE FEES 1.191 Appeal to Patent Trial and Appeal 1.362 Time for payment of maintenance Board. fees. 1.192–1.196 [Reserved] 1.363 Fee address for maintenance fee pur- 1.197 Termination of proceedings. poses. 1.198 Reopening after a final decision of the 1.366 Submission of maintenance fees. Patent Trial and Appeal Board. 1.377 Review of decision refusing to accept PUBLICATION OF APPLICATIONS. and record payment of a maintenance fee filed prior to expiration of patent. 1.211 Publication of applications. 1.378 Acceptance of delayed payment of 1.213 Nonpublication request. maintenance fee in expired patent to re- 1.215 Patent application publication. instate patent. 1.217 Publication of a redacted copy of an application. Subpart C—International Processing 1.219 Early publication. Provisions 1.221 Voluntary publication or republication of patent application publication. GENERAL INFORMATION

MISCELLANEOUS PROVISIONS 1.401 Definitions of terms under the Patent Cooperation Treaty. 1.248 Service of papers; manner of service; 1.412 The United States Receiving Office. proof of service in cases other than inter- 1.413 The United States International ferences and trials. Searching Authority. 1.251 Unlocatable file. 1.414 The United States Patent and Trade- mark Office as a Designated Office or PREISSUANCE SUBMISSIONS AND PROTESTS BY Elected Office. THIRD PARTIES 1.415 The International Bureau. 1.290 Submissions by third parties in appli- 1.416 The United States International Pre- cations. liminary Examining Authority.

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1.417 Submission of translation of inter- UNITY OF INVENTION national publication. 1.475 Unity of invention before the Inter- 1.419 Display of currently valid control national Searching Authority, the Inter- number under the Paperwork Reduction national Preliminary Examining Author- Act. ity and during the national stage. 1.476 Determination of unity of invention WHO MAY FILE AN INTERNATIONAL before the International Searching Au- APPLICATION thority. 1.421 Applicant for international applica- 1.477 Protest to lack of unity of invention tion. before the International Searching Au- 1.422 Legal representative as applicant in thority. an international application. INTERNATIONAL PRELIMINARY EXAMINATION 1.423 [Reserved] 1.424 Assignee, obligated assignee, or person 1.480 Demand for international preliminary having sufficient proprietary interest as examination. applicant in an international applica- 1.481 Payment of international preliminary tion. examination fees. 1.482 International preliminary examina- THE INTERNATIONAL APPLICATION tion and processing fees. 1.484 Conduct of international preliminary 1.431 International application require- examination. ments. 1.485 Amendments by applicant during 1.432 Designation of States by filing an international preliminary examination. international application. 1.488 Determination of unity of invention 1.433 Physical requirements of inter- before the International Preliminary Ex- national application. amining Authority. 1.434 The request. 1.489 Protest to lack of unity of invention 1.435 The description. before the International Preliminary Ex- 1.436 The claims. amining Authority. 1.437 The drawings. 1.438 The abstract. NATIONAL STAGE 1.491 National stage commencement, entry, FEES and fulfillment. 1.445 International application filing, proc- 1.492 National stage fees. essing and search fees. 1.494 Entering the national stage in the 1.446 Refund of international application United States of America as a Des- filing and processing fees. ignated Office. 1.495 Entering the national stage in the PRIORITY United States of America. 1.496 Examination of international applica- 1.451 The priority claim and priority docu- tions in the national stage. ment in an international application. 1.497 Inventor’s oath or declaration under 35 1.452 Restoration of right of priority. U.S.C. 371(c)(4). 1.453 Transmittal of documents relating to 1.499 Unity of invention during the national earlier search or classification. stage.

REPRESENTATION Subpart D—Ex Parte Reexamination of 1.455 Representation in international appli- Patents cations. CITATION OF PRIOR ART AND WRITTEN STATEMENTS TRANSMITTAL OF RECORD COPY 1.501 Citation of prior art and written state- 1.461 Procedures for transmittal of record ments in patent files. copy to the International Bureau. 1.502 Processing of prior art citations dur- TIMING ing an ex parte reexamination proceeding. 1.465 Timing of application processing based REQUEST FOR Ex Parte REEXAMINATION on the priority date. 1.510 Request for ex parte reexamination. 1.468 Delays in meeting time limits. 1.515 Determination of the request for ex parte AMENDMENTS 1.520 Ex parte reexamination at the initia- 1.471 Corrections and amendments during tive of the Director. international processing. Ex Parte REEXAMINATION 1.472 Changes in person, name, or address of applicants and inventors. 1.525 Order for ex parte reexamination.

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1.530 Statement by patent owner in ex parte EXTENSION OF PATENT TERM DUE TO reexamination; amendment by patent REGULATORY REVIEW owner in ex parte or inter partes reexam- 1.710 Patents subject to extension of the ination; inventorship change in ex parte patent term. or inter partes reexamination. 1.535 Reply by third party requester in ex 1.720 Conditions for extension of patent parte reexamination. term. 1.540 Consideration of responses in ex parte 1.730 Applicant for extension of patent reexamination. term; signature requirements. 1.550 Conduct of ex parte reexamination pro- 1.740 Formal requirements for application ceedings. for extension of patent term; correction 1.552 Scope of reexamination in ex parte re- of informalities. examination proceedings. 1.741 Complete application given a filing 1.555 Information material to patentability date; petition procedure. in ex parte reexamination and inter partes 1.750 Determination of eligibility for exten- reexamination proceedings. sion of patent term. 1.560 Interviews in ex parte reexamination 1.760 Interim extension of patent term proceedings. under 35 U.S.C. 156(e)(2). 1.565 Concurrent office proceedings which 1.765 Duty of disclosure in patent term ex- include an ex parte reexamination pro- tension proceedings. ceeding. 1.770 Express withdrawal of application for extension of patent term. Ex Parte REEXAMINATION CERTIFICATE 1.775 Calculation of patent term extension 1.570 Issuance of ex parte reexamination cer- for a human drug, antibiotic drug or tificate after ex parte reexamination pro- human biological product. ceedings. 1.776 Calculation of patent term extension for a food additive or color additive. Subpart E—Supplemental Examination of 1.777 Calculation of patent term extension Patents for a medical device. 1.778 Calculation of patent term extension 1.601 Filing of papers in supplemental ex- for an animal drug product. amination. 1.779 Calculation of patent term extension 1.605 Items of information. for a veterinary biological product. 1.610 Content of request for supplemental 1.780 Certificate or order of extension of examination. patent term. 1.615 Format of papers filed in a supple- 1.785 Multiple applications for extension of mental examination proceeding. term of the same patent or of different 1.620 Conduct of supplemental examination patents for the same regulatory review proceeding. period for a product. 1.625 Conclusion of supplemental examina- 1.790 Interim extension of patent term tion; publication of supplemental exam- under 35 U.S.C. 156(d)(5). ination certificate; procedure after con- 1.791 Termination of interim extension clusion. granted prior to regulatory approval of a product for commercial marketing or Subpart F—Adjustment and Extension of use. Patent Term Subpart G—Biotechnology Invention ADJUSTMENT OF PATENT TERM DUE TO Disclosures EXAMINATION DELAY 1.701 Extension of patent term due to exam- DEPOSIT OF BIOLOGICAL MATERIAL ination delay under the Uruguay Round 1.801 Biological material. Agreements Act of 1999 (original applica- 1.802 Need or Opportunity to make a de- tions, other than designs, filed on or posit. after June 8, 1995, and before May 29, 1.803 Acceptable depository. 2000). 1.804 Time of making an original deposit. 1.702 Grounds for adjustment of patent term 1.805 Replacement or supplement of deposit. due to examination delay under the Pat- 1.806 Term of deposit. ent Term Guarantee Act of 1999 (original applications, other than designs, filed on 1.807 Viability of deposit. or after May 29, 2000). 1.808 Furnishing of samples. 1.703 Period of adjustment of patent term 1.809 Examination procedures. due to examination delay. APPLICATION DISCLOSURES CONTAINING 1.704 Reduction of period of adjustment of NUCLEOTIDE AND/OR AMINO ACID SEQUENCES patent term. 1.705 Patent term adjustment determina- 1.821 Nucleotide and/or amino acid sequence tion. disclosures in patent applications.

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1.822 Symbols and format to be used for nu- 1.939 Unauthorized papers in inter partes re- cleotide and/or amino acid sequence examination. data. 1.941 Amendments by patent owner in inter 1.823 Requirements for nucleotide and/or partes reexamination. amino acid sequences as part of the ap- 1.943 Requirements of responses, written plication. comments, and briefs in inter partes reex- 1.824 Form and format for nucleotide and/or amination. amino acid sequence submissions in com- 1.945 Response to Office action by patent puter readable form. owner in inter partes reexamination. 1.825 Amendments to or replacement of se- 1.947 Comments by third party requester to quence listing and computer readable patent owner’s response in inter partes re- copy thereof. examination. APPENDIX A TO SUBPART G OF PART 1—SAM- 1.948 Limitations on submission of prior art PLE SEQUENCE LISTING by third party requester following the order for inter partes reexamination. Subpart H—Inter Partes Reexamination of 1.949 Examiner’s Office action closing pros- Patents That Issued From an Original ecution in inter partes reexamination. 1.951 Options after Office action closing Application Filed in the United States prosecution in inter partes reexamination. on or After November 29, 1999 1.953 Examiner’s Right of Appeal Notice in inter partes reexamination. PRIOR ART CITATIONS 1.902 Processing of prior art citations dur- INTERVIEWS PROHIBITED IN Inter Partes ing an inter partes reexamination pro- REEXAMINATION ceeding. 1.955 Interviews prohibited in inter partes reexamination proceedings. REQUIREMENTS FOR Inter Partes REEXAMINATION PROCEEDINGS EXTENSIONS OF TIME, TERMINATING OF REEX- 1.903 Service of papers on parties in inter AMINATION PROSECUTION, AND PETITIONS TO partes reexamination. REVIVE IN Inter Partes REEXAMINATION 1.904 Notice of inter partes reexamination in 1.956 Patent owner extensions of time in Official Gazette. inter partes reexamination. 1.905 Submission of papers by the public in 1.957 Failure to file a timely, appropriate or inter partes reexamination. complete response or comment in inter 1.906 Scope of reexamination in inter partes partes reexamination. reexamination proceeding. 1.958 Petition to revive inter partes reexam- 1.907 Inter partes reexamination prohibited. ination prosecution terminated for lack 1.913 Persons eligible to file, and time for of patent owner response. filing, a request for inter partes reexamination. APPEAL TO THE PATENT TRIAL AND APPEAL 1.915 Content of request for inter partes reex- BOARD IN Inter Partes REEXAMINATION amination. 1.959 Appeal in inter partes reexamination. 1.919 Filing date of request for inter partes 1.961–1.977 [Reserved] reexamination. 1.979 Return of Jurisdiction from the Pat- 1.923 Examiner’s determination on the re- ent Trial and Appeal Board; termination quest for inter partes reexamination. of appeal proceedings. 1.925 Partial refund if request for inter 1.981 Reopening after a final decision of the partes reexamination is not ordered. Patent Trial and Appeal Board. 1.927 Petition to review refusal to order inter partes reexamination. APPEAL TO THE UNITED STATES COURT OF AP- PEALS FOR THE FEDERAL CIRCUIT IN Inter Inter Partes REEXAMINATION OF PATENTS Partes REEXAMINATION 1.931 Order for inter partes reexamination. 1.983 Appeal to the United States Court of Appeals for the Federal Circuit in inter INFORMATION DISCLOSURE IN Inter Partes partes reexamination. REEXAMINATION 1.933 Patent owner duty of disclosure in CONCURRENT PROCEEDINGS INVOLVING SAME inter partes reexamination proceedings. PATENT IN Inter Partes REEXAMINATION 1.985 Notification of prior or concurrent OFFICE ACTIONS AND RESPONSES (BEFORE THE proceedings in inter partes reexamina- EXAMINER) IN Inter Partes REEXAMINATION tion. 1.935 Initial Office action usually accom- 1.987 Suspension of inter partes reexamina- panies order for inter partes reexamination proceeding due to litigation. tion. 1.989 Merger of concurrent reexamination 1.937 Conduct of inter partes reexamination. proceedings.

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1.991 Merger of concurrent reissue applica- RELIEF FROM PRESCRIBED TIME LIMITS; CON- tion and inter partes reexamination pro- VERSION TO A DESIGN APPLICATION UNDER 35 ceeding. U.S.C. CHAPTER 16 1.993 Suspension of concurrent interference 1.1051 Relief from prescribed time limits. and inter partes reexamination pro- 1.1052 Conversion to a design application ceeding. under 35 U.S.C. chapter 16. 1.995 Third party requester’s participation rights preserved in merged proceeding. NATIONAL PROCESSING OF INTERNATIONAL DESIGN APPLICATIONS REEXAMINATION CERTIFICATE IN Inter Partes REEXAMINATION 1.1061 Rules applicable. 1.1062 Examination. 1.997 Issuance and publication of inter partes 1.1063 Notification of Refusal. reexamination certificate concludes inter 1.1064 One independent and distinct design. partes reexamination proceeding. 1.1065 Corrections and other changes in the International Register. Subpart I—International Design Application 1.1066 Correspondence address for a nonprovisional international design applica- GENERAL INFORMATION tion. 1.1067 Title, description, and the inventor’s 1.1001 Definitions related to international oath or declaration. design applications. 1.1068 Statement of grant of protection. 1.1002 The United States Patent and Trade- 1.1070 Notification of Invalidation. mark Office as an office of indirect filing. 1.1071 Grant of protection for an industrial 1.1003 The United States Patent and Trade- design only upon issuance of a patent. mark Office as a designated office. 1.1004 The International Bureau. AUTHORITY: 35 U.S.C. 2(b)(2), unless other- 1.1005 Display of currently valid control wise noted. number under the Paperwork Reduction SOURCE: 24 FR 10332, Dec. 22, 1959, unless Act. otherwise noted.

WHO MAY FILE AN INTERNATIONAL DESIGN EDITORIAL NOTES: 1. In Patent and Trade- APPLICATION mark Office publications and usage the part number is omitted from the numbers of §§ 1.1 1.1011 Applicant for international design ap- to 1.352 and the numbers to the right of the plication. decimal point correspond with the respective 1.1012 Applicant’s Contracting Party. rule numbers. 2. For nomenclature changes to part 1, see THE INTERNATIONAL DESIGN APPLICATION 68 FR 14335, Mar. 25, 2003. 1.1021 Contents of the international design application. Subpart A—General Provisions 1.1022 Form and signature. 1.1023 Filing date of an international design GENERAL INFORMATION AND application in the United States. CORRESPONDENCE 1.1024 The description. 1.1025 The claim. § 1.1 Addresses for non-trademark cor- 1.1026 Reproductions. respondence with the United States 1.1027 Specimens. Patent and Trademark Office. 1.1028 Deferment of publication. (a) In general. Except as provided in FEES paragraphs (a)(3)(i), (a)(3)(ii), and (d)(1) of this section, all correspondence in- 1.1031 International design application fees. tended for the United States Patent REPRESENTATION and Trademark Office must be addressed to either ‘‘Director of the 1.1041 Representation in an international United States Patent and Trademark design application. Office, P.O. Box 1450, Alexandria, Vir- 1.1042 Correspondence respecting international design applications filed with ginia 22313–1450’’ or to specific areas the Office as an office of indirect filing. within the Office as set out in paragraphs (a)(1), and (a)(3)(iii) of this sec- TRANSMITTAL OF THE INTERNATIONAL DESIGN tion. When appropriate, correspondence APPLICATION TO THE INTERNATIONAL BUREAU should also be marked for the atten- 1.1045 Procedures for transmittal of inter- tion of a particular office or individual. national design application to the Inter- (1) Patent correspondence—(i) In gen- national Bureau. eral. All correspondence concerning

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patent matters processed by organiza- vision, except for documents filed to- tions reporting to the Commissioner gether with a new application, should for Patents should be addressed to: be addressed to: Mail Stop Assignment Commissioner for Patents, PO Box Recordation Services, Director of the 1450, Alexandria, Virginia 22313–1450. United States Patent and Trademark (ii) Patent Trial and Appeal Board. See Office, P.O. Box 1450, Alexandria, Vir- § 41.10 or § 42.6 of this title. Notices of ginia 22313–1450. See § 3.27. appeal, appeal briefs, reply briefs, re- (5) Office of Enrollment and Discipline quests for oral hearing, as well as all correspondence. All correspondence di- other correspondence in an application rected to the Office of Enrollment and or a patent involved in an appeal to the Discipline concerning enrollment, reg- Board for which an address is not oth- istration, and investigation matters erwise specified, should be addressed as should be addressed to Mail Stop OED, set out in paragraph (a)(1)(i) of this Director of the United States Patent section. and Trademark Office, P.O. Box 1450, (2) [Reserved] Alexandria, Virginia 22313–1450. (3) Office of General Counsel cor- (ii) Documents. All requests for cer- respondence—(i) Litigation and service. tified or uncertified copies of patent Correspondence relating to pending documents should be addressed to: Mail litigation or otherwise within the Stop Document Services, Director of scope of part 104 of this title shall be the United States Patent and Trade- addressed as provided in § 104.2. mark Office, P.O. Box 1450, Alexandria, (ii) Disciplinary proceedings. Cor- Virginia 22313–1450. respondence to counsel for the Director (b) Patent Cooperation Treaty. Letters of the Office of Enrollment and Dis- and other communications relating to cipline relating to disciplinary pro- international applications during the ceedings pending before a Hearing Offi- international stage and prior to the as- cer or the Director shall be mailed to: signment of a national serial number Mail Stop 8, Office of the Solicitor, should be additionally marked ‘‘Mail United States Patent and Trademark Stop PCT.’’ Office, P.O. Box 1450, Alexandria, Vir- (c) For reexamination or supplemental ginia 22313–1450. examination proceedings. (1) All cor- (iii) Solicitor, in general. Correspond- respondence concerning ex parte reex- ence to the Office of the Solicitor not amination, other than correspondence otherwise provided for shall be ad- to the Office of the General Counsel dressed to: Mail Stop 8, Office of the pursuant to § 1.1(a)(3) and § 102.4 of this Solicitor, United States Patent and chapter, should be additionally marked Trademark Office, P.O. Box 1450, Alex- ‘‘Mail Stop Ex Parte Reexam.’’ andria, Virginia 22313–1450. (2) All correspondence concerning (iv) General Counsel. Correspondence inter partes reexamination, other than to the Office of the General Counsel correspondence to the Office of the not otherwise provided for, including General Counsel pursuant to § 1.1(a)(3) correspondence to the General Counsel and § 102.4 of this chapter, should be ad- relating to disciplinary proceedings, ditionally marked ‘‘Mail Stop Inter shall be addressed to: General Counsel, Partes Reexam.’’ United States Patent and Trademark (3) Requests for supplemental exam- Office, PO Box 1450, Alexandria, Vir- ination (original and corrected request ginia 22313–1450. papers) and any other paper filed in a (v) Improper correspondence. Cor- supplemental examination proceeding, respondence improperly addressed to a should be additionally marked ‘‘Mail Post Office Box specified in paragraphs Stop Supplemental Examination.’’ (a)(3)(i) and(a)(3)(ii) of this section will (4) All correspondence concerning a not be filed elsewhere in the United reexamination proceeding ordered as a States Patent and Trademark Office, result of a supplemental reexamination and may be returned. proceeding, other than correspondence (4) Office of Public Records correspond- to the Office of the General Counsel ence. (i) Assignments. All patent-re- pursuant to § 1.1(a)(3) and § 102.4 of this lated documents submitted by mail to chapter should be additionally marked be recorded by Assignment Services Di- ‘‘Mail Stop Ex Parte Reexam.’’

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(d) Payments of maintenance fees in must be made in correspondence sepa- patents not submitted electronically rate from other papers. over the Internet, and correspondence [68 FR 38624, June 30, 2003] related to maintenance fees may be addressed to: Director of the United § 1.4 Nature of correspondence and States Patent and Trademark Office, signature requirements. Attn: Maintenance Fee, 2051 Jamieson (a) Correspondence with the Patent Avenue, Suite 300, Alexandria, Virginia and Trademark Office comprises: 22314. (1) Correspondence relating to serv- (e) Patent term extension. All applica- ices and facilities of the Office, such as tions for extension of patent term general inquiries, requests for publica- under 35 U.S.C. 156 and any commu- tions supplied by the Office, orders for nications relating thereto intended for printed copies of patents, orders for the United States Patent and Trade- copies of records, transmission of as- mark Office should be additionally signments for recording, and the like, marked ‘‘Mail Stop Hatch-Waxman and PTE.’’ When appropriate, the commu- (2) Correspondence in and relating to a nication should also be marked to the particular application or other proceeding attention of a particular individual, as in the Office. See particularly the rules where a decision has been rendered. relating to the filing, processing, or (f) [Reserved] other proceedings of national applications in subpart B of this part; of inter- [68 FR 14335, Mar. 25, 2003; 68 FR 19371, Apr. national applications in subpart C of 21, 2003, as amended at 68 FR 48287, Aug. 13, this part; of ex parte reexaminations of 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 29877, May 26, 2004; 69 FR 35451, June 24, 2004; 69 FR patents in subpart D of this part; of 49997, Aug. 12, 2004; 72 FR 18904, Apr. 16, 2007; supplemental examination of patents 73 FR 47540, Aug. 14, 2008; 75 FR 36295, June in subpart E of this part; of extension 25, 2010; 77 FR 46624, Aug. 6, 2012; 77 FR 48811, of patent term in subpart F of this Aug. 14, 2012; 78 FR 62393, Oct. 21, 2013] part; of inter partes reexaminations of patents in subpart H of this part; of § 1.2 Business to be transacted in writ- international design applications in ing. subpart I of this part; and of the Patent All business with the Patent and Trial and Appeal Board in parts 41 and Trademark Office should be transacted 42 of this chapter. in writing. The personal attendance of (b) Since each file must be complete applicants or their attorneys or agents in itself, a separate copy of every paper at the Patent and Trademark Office is to be filed in a patent application, pat- unnecessary. The action of the Patent ent file, or other proceeding must be and Trademark Office will be based ex- furnished for each file to which the clusively on the written record in the paper pertains, even though the contents of the papers filed in two or more Office. No attention will be paid to any files may be identical. The filing of du- alleged oral promise, stipulation, or plicate copies of correspondence in the understanding in relation to which file of an application, patent, or other there is disagreement or doubt. proceeding should be avoided, except in situations in which the Office requires § 1.3 Business to be conducted with decorum and courtesy. the filing of duplicate copies. The Of- fice may dispose of duplicate copies of Applicants and their attorneys or correspondence in the file of an appli- agents are required to conduct their cation, patent, or other proceeding. business with the United States Patent (c) Since different matters may be and Trademark Office with decorum considered by different branches or sec- and courtesy. Papers presented in vio- tions of the Office, each distinct sub- lation of this requirement will be subject, inquiry, or order must be con- mitted to the Director and will not be tained in a separate paper to avoid con- entered. A notice of the non-entry of fusion and delay in answering papers the paper will be provided. Complaints dealing with different subjects. Sub- against examiners and other employees jects provided for on a single Office or

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World Intellectual Property Organiza- 1.33(b)(2), must supply his/her registration form may be contained in a single tion number either as part of the S-sig- paper. nature, or immediately below or adja- (d)(1) Handwritten signature. Each cent to the S-signature. The number piece of correspondence, except as pro- (#) character may be used only as part vided in paragraphs (d)(2), (d)(3), (d)(4), of the S-signature when appearing be- (e), and (f) of this section, filed in an fore a practitioner’s registration num- application, patent file, or other pro- ber; otherwise the number character ceeding in the Office which requires a may not be used in an S-signature. person’s signature, must: (iii) The signer’s name must be: (i) Be an original, that is, have an (A) Presented in printed or typed original handwritten signature person- form preferably immediately below or ally signed, in permanent dark ink or adjacent the S-signature, and its equivalent, by that person; or (B) Reasonably specific enough so (ii) Be a direct or indirect copy, such that the identity of the signer can be as a photocopy or facsimile trans- readily recognized. mission (§ 1.6(d)), of an original. In the (3) Electronically submitted correspond- event that a copy of the original is ence. Correspondence permitted via the filed, the original should be retained as Office electronic filing system may be evidence of authenticity. If a question signed by a graphic representation of a of authenticity arises, the Office may handwritten signature as provided for require submission of the original. in paragraph (d)(1) of this section or a (2) S-signature. An S-signature is a graphic representation of an S-signa- signature inserted between forward ture as provided for in paragraph (d)(2) slash marks, but not a handwritten sig- of this section when it is submitted via nature as defined by paragraph (d)(1) of the Office electronic filing system. this section. An S-signature includes (4) Certifications—(i) Certification as to any signature made by electronic or the paper presented. The presentation to mechanical means, and any other mode the Office (whether by signing, filing, of making or applying a signature submitting, or later advocating) of any other than a handwritten signature as paper by a party, whether a practi- provided for in paragraph (d)(1) of this tioner or non-practitioner, constitutes section. Correspondence being filed in a certification under § 11.18(b) of this the Office in paper, by facsimile trans- subchapter. Violations of § 11.18(b)(2) of mission as provided in § 1.6(d), or via this subchapter by a party, whether a the Office electronic filing system as practitioner or non-practitioner, may an attachment as provided in § 1.6(a)(4), result in the imposition of sanctions for a patent application, patent, or a under § 11.18(c) of this subchapter. Any reexamination or supplemental exam- practitioner violating § 11.18(b) of this ination proceeding may be S-signature subchapter may also be subject to dis- signed instead of being personally ciplinary action. See § 11.18(d) of this signed (i.e., with a handwritten signa- subchapter. ture) as provided for in paragraph (d)(1) (ii) Certification as to the signature. of this section. The requirements for The person inserting a signature under an S-signature under this paragraph paragraph (d)(2) or (d)(3) of this section (d)(2) of this section are as follows. in a document submitted to the Office (i) The S-signature must consist only certifies that the inserted signature ap- of letters, or Arabic numerals, or both, pearing in the document is his or her with appropriate spaces and commas, own signature. A person submitting a periods, apostrophes, or hyphens for document signed by another under punctuation, and the person signing paragraph (d)(2) or (d)(3) of this section the correspondence must insert his or is obligated to have a reasonable basis her own S-signature with a first single to believe that the person whose signa- forward slash mark before, and a sec- ture is present on the document was ond single forward slash mark after, actually inserted by that person, and the S-signature (e.g.,/Dr. James T. should retain evidence of authenticity Jones, Jr./); and of the signature. Violations of the cer- (ii) A patent practitioner (§ 1.32(a)(1)), tification as to the signature of an- signing pursuant to §§ 1.33(b)(1) or other or a person’s own signature as set

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forth in this paragraph may result in names of the person or persons pro- the imposition of sanctions under viding such assistance. Assistance in- § 11.18(c) and (d) of this chapter. cludes the preparation for the appli- (5) Forms. The Office provides forms cant of the specification and amend- for the public to use in certain situa- ments or other papers to be filed in the tions to assist in the filing of cor- Patent and Trademark Office, as well respondence for a certain purpose and as other assistance in such matters, to meet certain requirements for pat- but does not include merely making ent applications and proceedings. Use drawings by draftsmen or stenographic of the forms for purposes for which services in typing papers. they were not designed is prohibited. (h) Ratification/confirmation/evidence No changes to certification statements of authenticity: The Office may require on the Office forms (e.g., oath or declaration forms, terminal disclaimer ratification, confirmation (which informs, petition forms, and nonpublica- cludes submission of a duplicate docu- tion request forms) may be made. The ment but with a proper signature), or existing text of a form, other than a evidence of authenticity of a signature, certification statement, may be modi- such as when the Office has reasonable fied, deleted, or added to, if all text doubt as to the authenticity (veracity) identifying the form as an Office form of the signature, e.g., where there are is removed. The presentation to the Of- variations of a signature, or where the fice (whether by signing, filing, sub- signature and the typed or printed mitting, or later advocating) of any Of- name, do not clearly identify the per- fice form with text identifying the son signing. form as an Office form by a party, whether a practitioner or non-practi- (Pub. L. 94–131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97–247) tioner, constitutes a certification under § 11.18(b) of this chapter that the [24 FR 10332, Dec. 22, 1959] existing text and any certification EDITORIAL NOTE: For FEDERAL REGISTER ci- statements on the form have not been tations affecting § 1.4, see the List of CFR altered other than permitted by EFS- Sections Affected, which appears in the Web customization. Finding Aids section of the printed volume (e) The following correspondence and at www.govinfo.gov. must be submitted with an original handwritten signature personally § 1.5 Identification of patent, patent signed in permanent dark ink or its application, or patent-related pro- equivalent: ceeding. (1) Correspondence requiring a per- (a) No correspondence relating to an son’s signature and relating to reg- application should be filed prior to re- istration to practice before the Patent ceipt of the assigned application num- and Trademark Office in patent cases, ber (i.e., U.S. application number, enrollment and disciplinary investiga- international application number, or tions, or disciplinary proceedings; and international registration number as (2) Payments by credit cards where appropriate). When correspondence di- the payment is not being made via the rected to the Patent and Trademark Office’s electronic filing systems. (f) When a document that is required Office concerns a previously filed appli- by statute to be certified must be filed, cation for a patent, it must identify on a copy, including a photocopy or fac- the top page in a conspicuous location, simile transmission, of the certifi- the application number (consisting of cation is not acceptable. the series code and the serial number; (g) An applicant who has not made of e.g., 07/123,456), or the serial number record a registered attorney or agent and filing date assigned to that appli- may be required to state whether as- cation by the Patent and Trademark sistance was received in the prepara- Office, or the international application tion or prosecution of the patent appli- number of the international applica- cation, for which any compensation or tion, or the international registration consideration was given or charged, and if so, to disclose the name or

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number of an international design ap- reexamination or supplemental exam- plication. Any correspondence not con- ination, the request control number as- taining such identification will be re- signed to such proceeding, and, if turned to the sender where a return ad- known, the group art unit and name of dress is available. The returned cor- the examiner to which it been assigned. respondence will be accompanied with (e) [Reserved] a cover letter, which will indicate to (f) When a paper concerns a provi- the sender that if the returned cor- sional application, it should identify respondence is resubmitted to the Pat- the application as such and include the ent and Trademark Office within two application number. weeks of the mail date on the cover letter, the original date of receipt of the (Pub. L. 94–131, 89 Stat. 685; 35 U.S.C. 6, Pub. correspondence will be considered by L. 97–247) the Patent and Trademark Office as [24 FR 10332, Dec. 22, 1959, as amended at 46 the date of receipt of the correspond- FR 29181, May 29, 1981; 49 FR 552, Jan. 4, 1984; ence. Applicants may use either the 49 FR 48451, Dec. 12, 1984; 53 FR 47807, Nov. 28, Certificate of Mailing or Transmission 1988; 58 FR 54501, Oct. 22, 1993; 61 FR 42802, procedure under § 1.8 or the Priority Aug. 19, 1996; 61 FR 56446, Nov. 1, 1996; 64 FR Mail Express® procedure under § 1.10 for 48917, Sept. 8, 1999; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, Aug. 12, 2004; 77 FR 46624, Aug. 6, resubmissions of returned correspond- 2012; 77 FR 48812, Aug. 14, 2012; 78 FR 62394, ence if they desire to have the benefit Oct. 21, 2013; 79 FR 63039, Oct. 22, 2014; 80 FR of the date of deposit in the United 17952, Apr. 2, 2015] States Postal Service. If the returned correspondence is not resubmitted § 1.6 Receipt of correspondence. within the two-week period, the date of (a) Date of receipt and Priority Mail receipt of the resubmission will be con- Express® date of deposit. Correspondence sidered to be the date of receipt of the received in the Patent and Trademark correspondence. The two-week period Office is stamped with the date of re- to resubmit the returned correspond- ceipt except as follows: ence will not be extended. In addition to the application number, all cor- (1) The Patent and Trademark Office respondence directed to the Patent and is not open for the filing of correspond- Trademark Office concerning applica- ence on any day that is a Saturday, tions for patent should also state the Sunday, or Federal holiday within the name of the first listed inventor, the District of Columbia. Except for cor- title of the invention, the date of filing respondence transmitted by facsimile the same, and if known, the group art under paragraph (a)(3) of this section, unit or other unit within the Patent or filed electronically under paragraph and Trademark Office responsible for (a)(4) of this section, no correspondence considering the correspondence and the is received in the Office on Saturdays, name of the examiner or other person Sundays, or Federal holidays within to which it has been assigned. the District of Columbia. (b) When the letter concerns a patent (2) Correspondence filed in accord- other than for purposes of paying a ance with § 1.10 will be stamped with maintenance fee, it should state the the date of deposit as Priority Mail Ex- number and date of issue of the patent, press® with the United States Postal the name of the patentee, and the title Service. of the invention. For letters con- (3) Correspondence transmitted by cerning payment of a maintenance fee facsimile to the Patent and Trademark in a patent, see the provisions of Office will be stamped with the date on § 1.366(c). which the complete transmission is re- (c) Correspondence relating to a trial ceived in the Patent and Trademark proceeding before the Patent Trial and Office unless that date is a Saturday, Appeal Board (part 42 of this title) are Sunday, or Federal holiday within the governed by § 42.6 of this title. District of Columbia, in which case the (d) A letter relating to a reexamina- date stamped will be the next suc- tion or supplemental examination proceeding day which is not a Saturday, ceeding should identify it as such by Sunday, or Federal holiday within the the number of the patent undergoing District of Columbia.

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(4) Correspondence may be submitted under § 1.53(d) may be transmitted to using the Office electronic filing sys- the Office by facsimile; tem only in accordance with the Office (4) Color drawings submitted under electronic filing system requirements. §§ 1.81, 1.83 through 1.85, 1.152, 1.165, Correspondence submitted to the Office 1.173, 1.437, or 1.1026; by way of the Office electronic filing (5) A request for reexamination under system will be accorded a receipt date, § 1.510 or § 1.913, or a request for supple- which is the date the correspondence is mental examination under § 1.610; received at the correspondence address (6) Correspondence to be filed in an for the Office set forth in § 1.1 when it application subject to a secrecy order was officially submitted. under §§ 5.1 through 5.5 of this chapter (b) [Reserved] and directly related to the secrecy (c) Correspondence delivered by hand. order content of the application; In addition to being mailed, cor- (7) In contested cases and trials be- respondence may be delivered by hand fore the Patent Trial and Appeal during hours the Office is open to re- Board, except as the Board may ex- ceive correspondence. pressly authorize. (d) Facsimile transmission. Except in (e) [Reserved] the cases enumerated below, cor- (f) Facsimile transmission of a patent respondence, including authorizations application under § 1.53(d). In the event to charge a deposit account, may be that the Office has no evidence of re- transmitted by facsimile. The receipt ceipt of an application under § 1.53(d) (a date accorded to the correspondence continued prosecution application) will be the date on which the complete transmitted to the Office by facsimile transmission is received in the United transmission, the party who trans- States Patent and Trademark Office, mitted the application under § 1.53(d) unless that date is a Saturday, Sunday, may petition the Director to accord or Federal holiday within the District the application under § 1.53(d) a filing of Columbia. See paragraph (a)(3) of date as of the date the application this section. To facilitate proper proc- under § 1.53(d) is shown to have been essing, each transmission session transmitted to and received in the Of- should be limited to correspondence to fice, be filed in a single application or other (1) Provided that the party who proceeding before the United States transmitted such application under Patent and Trademark Office. The ap- § 1.53(d): plication number of a patent applica- (i) Informs the Office of the previous tion, the control number of a reexam- transmission of the application under ination or supplemental examination § 1.53(d) promptly after becoming aware proceeding, the interference number of that the Office has no evidence of re- an interference proceeding, the trial ceipt of the application under § 1.53(d); number of a trial proceeding before the (ii) Supplies an additional copy of the Board, or the patent number of a pat- previously transmitted application ent should be entered as a part of the under § 1.53(d); and sender’s identification on a facsimile (iii) Includes a statement which at- cover sheet. Facsimile transmissions tests on a personal knowledge basis or are not permitted and, if submitted, to the satisfaction of the Director to will not be accorded a date of receipt in the previous transmission of the appli- the following situations: cation under § 1.53(d) and is accom- (1) Correspondence as specified in panied by a copy of the sending unit’s § 1.4(e), requiring an original signature; report confirming transmission of the (2) Certified documents as specified application under § 1.53(d) or evidence in § 1.4(f); that came into being after the com- (3) Correspondence that cannot re- plete transmission and within one busi- ceive the benefit of the certificate of ness day of the complete transmission mailing or transmission as specified in of the application under § 1.53(d). § 1.8(a)(2)(i)(A) through (D), (F), (I), and (2) The Office may require additional (K) and § 1.8(a)(2)(iii)(A), except that a evidence to determine if the applica- continued prosecution application tion under § 1.53(d) was transmitted to

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and received in the Office on the date or paying any fee in the United States in question. Patent and Trademark Office falls on (g) Submission of the national stage cor- Saturday, Sunday, or on a Federal hol- respondence required by § 1.495 via the Of- iday within the District of Columbia, fice electronic filing system. In the event the action may be taken, or the fee that the Office has no evidence of re- paid, on the next succeeding business ceipt of the national stage correspond- day which is not a Saturday, Sunday, ence required by § 1.495, which was sub- or a Federal holiday. See § 90.3 of this mitted to the Office by the Office elec- chapter for time for appeal or for com- tronic filing system, the party who mencing civil action. submitted the correspondence may pe- (b) If the day that is twelve months tition the Director to accord the na- after the filing date of a provisional ap- tional stage correspondence a receipt plication under 35 U.S.C. 111(b) and date as of the date the correspondence § 1.53(c) falls on Saturday, Sunday, or is shown to have been officially sub- on a Federal holiday within the Dis- mitted to the Office. trict of Columbia, the period of pend- (1) The petition of this paragraph (g) ency shall be extended to the next suc- requires that the party who submitted ceeding secular or business day which such national stage correspondence: is not a Saturday, Sunday, or a Federal (i) Informs the Office of the previous holiday. submission of the correspondence [65 FR 14871, Mar. 20, 2000, as amended at 78 promptly after becoming aware that FR 62395, Oct. 21, 2013] the Office has no evidence of receipt of the correspondence under § 1.495; § 1.8 Certificate of mailing or trans- (ii) Supplies an additional copy of the mission. previously submitted correspondence; (a) Except in the situations enumer- (iii) Includes a statement that at- ated in paragraph (a)(2) of this section tests on a personal knowledge basis, or or as otherwise expressly excluded in to the satisfaction of the Director, that this chapter, correspondence required the correspondence was previously offi- to be filed in the U.S. Patent and cially submitted; and Trademark Office within a set period of (iv) Supplies a copy of an acknowl- time will be considered as being timely edgment receipt generated by the Of- filed if the procedure described in this fice electronic filing system, or equiva- section is followed. The actual date of lent evidence, confirming the submis- receipt will be used for all other pur- sion to support the statement of para- poses. graph (g)(1)(iii) of this section. (1) Correspondence will be considered (2) The Office may require additional as being timely filed if: evidence to determine if the national (i) The correspondence is mailed or stage correspondence was submitted to transmitted prior to expiration of the the Office on the date in question. set period of time by being: [58 FR 54501, Oct. 22, 1993; 58 FR 64154, Dec. 6, (A) Addressed as set out in § 1.1(a) 1993; 61 FR 56447, Nov. 1, 1996; 62 FR 53180, and deposited with the U.S. Postal Oct. 10, 1997; 64 FR 48917, Sept. 8, 1999; 65 FR Service with sufficient postage as first 54657, Sept. 8, 2000; 65 FR 76772, Dec. 7, 2000; class mail; 68 FR 14336, Mar. 25, 2003; 68 FR 48288, Aug. (B) Transmitted by facsimile to the 13, 2003; 69 FR 49997, Aug. 12, 2004; 69 FR 56536, Patent and Trademark Office in ac- Sept. 21, 2004; 72 FR 2775, Jan. 23, 2007; 77 FR 42173, July 17, 2012; 77 FR 46624, Aug. 6, 2012; cordance with § 1.6(d); or 78 FR 62394, Oct. 21, 2013; 79 FR 63039, Oct. 22, (C) Transmitted via the Office elec- 2014; 80 FR 17952, Apr. 2, 2015] tronic filing system in accordance with § 1.6(a)(4); and § 1.7 Times for taking action; Expira- (ii) The correspondence includes a tion on Saturday, Sunday or Fed- certificate for each piece of correspond- eral holiday. ence stating the date of deposit or (a) Whenever periods of time are transmission. The person signing the specified in this part in days, calendar certificate should have reasonable days are intended. When the day, or basis to expect that the correspondence the last day fixed by statute or by or would be mailed or transmitted on or under this part for taking any action before the date indicated.

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(2) The procedure described in para- correspondence, or after the applica- graph (a)(1) of this section does not tion is held to be abandoned, or after apply to, and no benefit will be given the proceeding is dismissed or decided to a Certificate of Mailing or Trans- with prejudice, or the prosecution of a mission on the following: reexamination proceeding is termi- (i) Relative to Patents and Patent Ap- nated pursuant to § 1.550(d) or § 1.957(b) plications— or limited pursuant to § 1.957(c), or a re- (A) The filing of a national patent ap- quester paper is refused consideration plication specification and drawing or pursuant to § 1.957(a), the correspond- other correspondence for the purpose of ence will be considered timely if the obtaining an application filing date, in- party who forwarded such correspond- cluding a request for a continued pros- ence: ecution application under § 1.53(d); (1) Informs the Office of the previous (B) Papers filed in trials before the mailing or transmission of the cor- Patent Trial and Appeal Board, which respondence promptly after becoming are governed by § 42.6(b) of this title; (C) Papers filed in contested cases be- aware that the Office has no evidence fore the Patent Trial and Appeal of receipt of the correspondence; Board, which are governed by § 41.106 (f) (2) Supplies an additional copy of the of this title; previously mailed or transmitted cor- (D) The filing of an international ap- respondence and certificate; and plication for patent; (3) Includes a statement that attests (E) The filing of correspondence in an on a personal knowledge basis or to the international application before the satisfaction of the Director to the pre- U.S. Receiving Office, the U.S. Inter- vious timely mailing, transmission or national Searching Authority, or the submission. If the correspondence was U.S. International Preliminary Exam- sent by facsimile transmission, a copy ining Authority; of the sending unit’s report confirming (F) The filing of a copy of the inter- transmission may be used to support national application and the basic na- this statement. If the correspondence tional fee necessary to enter the na- was transmitted via the Office elec- tional stage, as specified in § 1.495(b). tronic filing system, a copy of an ac- (G) The filing of a written declara- knowledgment receipt generated by tion of abandonment under § 1.138; the Office electronic filing system con- (H) The filing of a submission under firming submission may be used to sup- § 1.217 for publication of a redacted port this statement. copy of an application; (c) The Office may require additional (I) The filing of a third-party submis- evidence to determine if the cor- sion under § 1.290; respondence was timely filed. (J) The calculation of any period of adjustment, as specified in § 1.703(f); [58 FR 54502, Oct. 22, 1993; 58 FR 64154, Dec. 6, and 1993, as amended at 61 FR 56447, Nov. 1, 1996; (K) The filing of an international de- 62 FR 53181, Oct. 10, 1997; 67 FR 523, Jan. 4, sign application. 2002; 68 FR 48288, Aug. 13, 2003; 69 FR 49997, (ii) [Reserved] Aug. 12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR (iii) Relative to Disciplinary Pro- 2775, Jan. 23, 2007; 72 FR 18904, Apr. 16, 2007; ceedings— 73 FR 47684, Aug. 14, 2008; 77 FR 42173, July 17, 2012; 80 FR 17953, Apr. 2, 2015] (A) Correspondence filed in connection with a disciplinary proceeding § 1.9 Definitions. under part 11 of this chapter. (B) [Reserved] (a)(1) A national application as used (b) In the event that correspondence in this chapter means either a U.S. ap- is considered timely filed by being plication for patent which was filed in mailed or transmitted in accordance the Office under 35 U.S.C. 111, an inter- with paragraph (a) of this section, but national application filed under the not received in the U.S. Patent and Patent Cooperation Treaty in which Trademark Office after a reasonable the basic national fee under 35 U.S.C. amount of time has elapsed from the 41(a)(1)(F) has been paid, or an inter- time of mailing or transmitting of the national design application filed under

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the Hague Agreement in which the Of- (h) A Federal holiday within the Dis- fice has received a copy of the inter- trict of Columbia as used in this chapter national registration pursuant to means any day, except Saturdays and Hague Agreement Article 10. Sundays, when the Patent and Trade- (2) A provisional application as used mark Office is officially closed for busi- in this chapter means a U.S. national ness for the entire day. application for patent filed in the Of- (i) National security classified as fice under 35 U.S.C. 111(b). used in this chapter means specifically (3) A nonprovisional application as authorized under criteria established used in this chapter means either a by an Act of Congress or Executive U.S. national application for patent Order to be kept secret in the interest which was filed in the Office under 35 of national defense or foreign policy U.S.C. 111(a), an international applica- and, in fact, properly classified pursu- tion filed under the Patent Cooperation ant to such Act of Congress or Execu- Treaty in which the basic national fee tive Order. under 35 U.S.C. 41(a)(1)(F) has been (j) Director as used in this chapter, paid, or an international design appli- except for part 11 of this chapter, cation filed under the Hague Agree- means the Under Secretary of Com- ment in which the Office has received a merce for Intellectual Property and Di- copy of the international registration rector of the United States Patent and pursuant to Hague Agreement Article 10. Trademark Office. (b) An international application as (k) Paper as used in this chapter used in this chapter means an inter- means a document that may exist in national application for patent filed electronic form, or in physical form, under the Patent Cooperation Treaty and therefore does not necessarily prior to entering national processing at imply physical sheets of paper. the Designated Office stage. (l) Hague Agreement as used in this (c) A published application as used in chapter means the Geneva Act of the this chapter means an application for Hague Agreement Concerning the patent which has been published under International Registration of Indus- 35 U.S.C. 122(b). trial Designs adopted at Geneva, Swit- (d)(1) The term inventor or zerland, on July 2, 1999, and Hague inventorship as used in this chapter Agreement Article as used in this chap- means the individual or, if a joint inter means an Article under the Hague vention, the individuals collectively Agreement. who invented or discovered the subject (m) Hague Agreement Regulations as matter of the invention. used in this chapter means the Com- (2) The term joint inventor or co- mon Regulations Under the 1999 Act inventor as used in this chapter means and the 1960 Act of the Hague Agree- any one of the individuals who in- ment, and Hague Agreement Rule as vented or discovered the subject mat- used in this chapter means one of the ter of a joint invention. Hague Agreement Regulations. (e) The term joint research agree- (n) An international design applica- ment as used in this chapter means a tion as used in this chapter means an written contract, grant, or cooperative application for international registra- agreement entered into by two or more tion of a design filed under the Hague persons or entities for the performance Agreement. Unless otherwise clear of experimental, developmental, or re- from the wording, reference to ‘‘design search work in the field of the claimed invention. application’’ or ‘‘application for a design patent’’ in this chapter includes (f) The term claimed invention as used in this chapter means the subject matter defined by a claim in a patent or an application for a patent. (g) For definitions in Patent Trial and Appeal Board proceedings, see parts 41 and 42 of this title.

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an international design application the correspondence and the date of de- that designates the United States. posit as shown by the ‘‘date accepted’’ on the Priority Mail Express® mailing (Pub. L. 94–131, 89 Stat. 685; 35 U.S.C. 6, Pub. L. 97–247; 15 U.S.C. 1113, 1123) label or other official USPS notation, may petition the Director to accord [43 FR 20461, May 11, 1978, as amended at 47 the correspondence a filing date as of FR 40139, Sept. 10, 1982; 47 FR 43275, Sept. 30, 1982; 49 FR 48451, Dec. 12, 1984; 60 FR 20220, the ‘‘date accepted’’ on the Priority ® Apr. 25, 1995; 61 FR 56447, Nov. 1, 1996; 62 FR Mail Express mailing label or other 53181, Oct. 10, 1997; 65 FR 54657, Sept. 8, 2000; official USPS notation, provided that: 65 FR 57051, Sept. 20, 2000; 68 FR 14336, Mar. (1) The petition is filed promptly 25, 2003; 68 FR 38624, June 30, 2003; 69 FR after the person becomes aware that 49997, Aug. 12, 2004; 73 FR 47685, Aug. 14, 2008; the Office has accorded, or will accord, 77 FR 46624, Aug. 6, 2012; 77 FR 48812, Aug. 14, a filing date other than the USPS de- 2012; 78 FR 11052, Feb. 14, 2013; 80 FR 17953, Apr. 2, 2015] posit date; (2) The number of the Priority Mail § 1.10 Filing of correspondence by Pri- Express® mailing label was placed on ority Mail Express®. the paper(s) or fee(s) that constitute (a)(1) Any correspondence received by the correspondence prior to the origi- ® the U.S. Patent and Trademark Office nal mailing by Priority Mail Express ; (USPTO) that was delivered by the Pri- and ority Mail Express® Post Office to Ad- (3) The petition includes a true copy ® dressee service of the United States of the Priority Mail Express mailing Postal Service (USPS) will be consid- label showing the ‘‘date accepted,’’ and ered filed with the USPTO on the date of any other official notation by the of deposit with the USPS. USPS relied upon to show the date of (2) The date of deposit with USPS is deposit. shown by the ‘‘date accepted’’ on the (d) Any person filing correspondence Priority Mail Express® label or other under this section that was received by official USPS notation. If the USPS de- the Office and delivered by the Priority posit date cannot be determined, the Mail Express® Post Office to Addressee correspondence will be accorded the service of the USPS, who can show USPTO receipt date as the filing date. that the ‘‘date accepted’’ on the Pri- See § 1.6(a). ority Mail Express® mailing label or (b) Correspondence should be depos- other official notation entered by the ited directly with an employee of the USPS was incorrectly entered or omit- USPS to ensure that the person depos- ted by the USPS, may petition the Di- iting the correspondence receives a leg- rector to accord the correspondence a ible copy of the Priority Mail Express® filing date as of the date the cor- mailing label with the ‘‘date accepted’’ respondence is shown to have been de- clearly marked. Persons dealing indi- posited with the USPS, provided that: rectly with the employees of the USPS (1) The petition is filed promptly (such as by deposit in a Priority Mail after the person becomes aware that Express® drop box) do so at the risk of the Office has accorded, or will accord, not receiving a copy of the Priority a filing date based upon an incorrect Mail Express® mailing label with the entry by the USPS; desired ‘‘date accepted’’ clearly (2) The number of the Priority Mail marked. The paper(s) or fee(s) that Express® mailing label was placed on constitute the correspondence should the paper(s) or fee(s) that constitute also include the Priority Mail Express® the correspondence prior to the origi- mailing label number thereon. See nal mailing by Priority Mail Express®; paragraphs (c), (d) and (e) of this sec- and tion. (3) The petition includes a showing (c) Any person filing correspondence which establishes, to the satisfaction under this section that was received by of the Director, that the requested fil- the Office and delivered by the Priority ing date was the date the correspond- Mail Express® Post Office to Addressee ence was deposited in the Priority Mail service of the USPS, who can show Express® Post Office to Addressee serv- that there is a discrepancy between the ice prior to the last scheduled pickup filing date accorded by the Office to for that day. Any showing pursuant to

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this paragraph must be corroborated and official notation entered by the by evidence from the USPS or that USPS. came into being after deposit and with- (f) The Office may require additional in one business day of the deposit of evidence to determine if the cor- the correspondence in the Priority respondence was deposited as Priority Mail Express® Post Office to Addressee Mail Express® with the USPS on the service of the USPS. date in question. (e) Any person mailing correspond- (g) Any person who mails correspondence addressed as set out in § 1.1(a) to ence addressed as set out in § 1.1(a) to the Office with sufficient postage uti- the Office with sufficient postage utilizing the Priority Mail Express® Post lizing the Priority Mail Express® Post Office to Addressee service of the USPS Office to Addressee service of the but not received by the Office, may pe- USPS, but has the correspondence re- tition the Director to consider such turned by the USPS due to an interrup- correspondence filed in the Office on tion or emergency in Priority Mail Ex- the USPS deposit date, provided that: press® service, may petition the Direc- (1) The petition is filed promptly tor to consider such correspondence as after the person becomes aware that filed on a particular date in the Office, the Office has no evidence of receipt of provided that: the correspondence; (1) The petition is filed promptly (2) The number of the Priority Mail after the person becomes aware of the Express® mailing label was placed on return of the correspondence; the paper(s) or fee(s) that constitute (2) The number of the Priority Mail the correspondence prior to the origi- Express® mailing label was placed on nal mailing by Priority Mail Express®; the paper(s) or fee(s) that constitute (3) The petition includes a copy of the correspondence prior to the origi- the originally deposited paper(s) or nal mailing by Priority Mail Express®; fee(s) that constitute the correspond- (3) The petition includes the original ence showing the number of the Pri- correspondence or a copy of the origi- ority Mail Express® mailing label nal correspondence showing the num- thereon, a copy of any returned post- ber of the Priority Mail Express® mail- card receipt, a copy of the Priority ing label thereon and a copy of the Pri- Mail Express® mailing label showing ority Mail Express® mailing label the ‘‘date accepted,’’ a copy of any showing the ‘‘date accepted’’; and other official notation by the USPS re- (4) The petition includes a statement lied upon to show the date of deposit, which establishes, to the satisfaction and, if the requested filing date is a of the Director, the original deposit of date other than the ‘‘date accepted’’ on the correspondence and that the cor- the Priority Mail Express® mailing respondence or copy of the correspond- label or other official notation entered ence is the original correspondence or a by the USPS, a showing pursuant to true copy of the correspondence origi- paragraph (d)(3) of this section that the nally deposited with the USPS on the requested filing date was the date the requested filing date. The Office may correspondence was deposited in the require additional evidence to deter- Priority Mail Express® Post Office to mine if the correspondence was re- Addressee service prior to the last turned by the USPS due to an interrup- scheduled pickup for that day; and tion or emergency in Priority Mail Ex- (4) The petition includes a statement press® service. which establishes, to the satisfaction (h) Any person who attempts to mail of the Director, the original deposit of correspondence addressed as set out in the correspondence and that the copies § 1.1(a) to the Office with sufficient of the correspondence, the copy of the postage utilizing the Priority Mail Ex- Priority Mail Express® mailing label, press® Post Office to Addressee service the copy of any returned postcard re- of the USPS, but has the correspond- ceipt, and any official notation entered ence refused by an employee of the by the USPS are true copies of the USPS due to an interruption or emer- originally mailed correspondence, gency in Priority Mail Express® serv- original Priority Mail Express® mail- ice, may petition the Director to con- ing label, returned postcard receipt, sider such correspondence as filed on a

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particular date in the Office, provided ence is the original correspondence or a that: true copy of the correspondence origi- (1) The petition is filed promptly nally attempted to be deposited with after the person becomes aware of the the USPS on the requested filing date. refusal of the correspondence; [79 FR 63039, Oct. 22, 2014] (2) The number of the Priority Mail ® Express mailing label was placed on RECORDS AND FILES OF THE PATENT AND the paper(s) or fee(s) that constitute TRADEMARK OFFICE the correspondence prior to the attempted mailing by Priority Mail Ex- § 1.11 Files open to the public. press®; (a) The specification, drawings, and (3) The petition includes the original all papers relating to the file of: A pub- correspondence or a copy of the origi- lished application; a patent; or a statu- nal correspondence showing the num- tory invention registration are open to ber of the Priority Mail Express® mail- inspection by the public, and copies ing label thereon; and may be obtained upon the payment of (4) The petition includes a statement the fee set forth in § 1.19(b)(2). If an ap- by the person who originally attempted plication was published in redacted to deposit the correspondence with the form pursuant to § 1.217, the complete USPS which establishes, to the satis- file wrapper and contents of the patent faction of the Director, the original at- application will not be available if: The tempt to deposit the correspondence requirements of paragraphs (d)(1), and that the correspondence or copy of (d)(2), and (d)(3) of § 1.217 have been met the correspondence is the original cor- in the application; and the application respondence or a true copy of the cor- is still pending. See § 2.27 of this title respondence originally attempted to be for trademark files. deposited with the USPS on the re- (b) All reissue applications, all appli- quested filing date. The Office may re- cations in which the Office has accept- quire additional evidence to determine ed a request to open the complete ap- if the correspondence was refused by an plication to inspection by the public, employee of the USPS due to an inter- and related papers in the application ruption or emergency in Priority Mail file, are open to inspection by the pub- Express® service. lic, and copies may be furnished upon (i) Any person attempting to file cor- paying the fee therefor. The filing of respondence under this section that reissue applications, other than contin- was unable to be deposited with the ued prosecution applications under USPS due to an interruption or emer- § 1.53(d) of reissue applications, will be gency in Priority Mail Express® service announced in the Official Gazette. The which has been so designated by the announcement shall include at least Director, may petition the Director to the filing date, reissue application and consider such correspondence as filed original patent numbers, title, class on a particular date in the Office, pro- and subclass, name of the inventor, vided that: name of the owner of record, name of (1) The petition is filed in a manner the attorney or agent of record, and ex- designated by the Director promptly amining group to which the reissue ap- after the person becomes aware of the plication is assigned. designated interruption or emergency (c) All requests for reexamination for in Priority Mail Express® service; which all the requirements of § 1.510 or (2) The petition includes the original § 1.915 have been satisfied will be an- correspondence or a copy of the origi- nounced in the Official Gazette. Any re- nal correspondence; and examinations at the initiative of the (3) The petition includes a statement Director pursuant to § 1.520 will also be which establishes, to the satisfaction announced in the Official Gazette. The of the Director, that the correspond- announcement shall include at least ence would have been deposited with the date of the request, if any, the re- the USPS but for the designated inter- examination request control number or ruption or emergency in Priority Mail the Director initiated order control Express® service, and that the cor- number, patent number, title, class and respondence or copy of the correspond- subclass, name of the inventor, name of

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the patent owner of record, and the ex- the public. Copies of any assignment amining group to which the reexamina- records, digests, and indexes that are tion is assigned. not available to the public shall be ob- (d) All papers or copies thereof relat- tainable only upon written authority ing to a reexamination proceeding of an inventor, the applicant, the as- which have been entered of record in signee or an assignee of an undivided the patent or reexamination file are part interest, or a patent practitioner open to inspection by the general pub- of record, or upon a showing that the lic, and copies may be furnished upon person seeking such information is a paying the fee therefor. bona fide prospective or actual pur- (e) Except as prohibited in § 41.6(b), chaser, mortgagee, or licensee of such § 42.14 or § 42.410(b), the file of any in- application, unless it shall be nec- terference or trial before the Patent essary to the proper conduct of busi- Trial and Appeal Board is open to pub- ness before the Office or as provided in lic inspection and copies of the file this part. may be obtained upon payment of the (c) Any request by a member of the fee therefor. public seeking copies of any assignment records of any pending or aban- (35 U.S.C. 6; 15 U.S.C. 1113, 1123) doned patent application preserved in [46 FR 29181, May 29, 1981, as amended at 47 confidence under § 1.14, or any informa- FR 41272, Sept. 17, 1982; 50 FR 9378, Mar. 7, tion with respect thereto, must: 1985; 60 FR 14518, Mar. 17, 1995; 62 FR 53181, (1) Be in the form of a petition in- Oct. 10, 1997; 65 FR 57051, Sept. 20, 2000; 69 FR 49997, Aug. 12, 2004; 70 FR 56126, Sept. 26, 2005; cluding the fee set forth in § 1.17(g); or 71 FR 44223, Aug. 4, 2006; 77 FR 46624, Aug. 6, (2) Include written authority grant- 2012] ing access to the member of the public to the particular assignment records § 1.12 Assignment records open to pub- from an inventor, the applicant, the as- lic inspection. signee or an assignee of an undivided (a)(1) Separate assignment records part interest, or a patent practitioner are maintained in the United States of record. Patent and Trademark Office for pat- (d) An order for a copy of an assign- ents and trademarks. The assignment ment or other document should iden- records, relating to original or reissue tify the reel and frame number where patents, including digests and indexes the assignment or document is re- (for assignments recorded on or after corded. If a document is identified May 1, 1957), and published patent ap- without specifying its correct reel and plications, are open to public inspec- frame, an extra charge as set forth in tion at the United States Patent and § 1.21(j) will be made for the time con- Trademark Office, and copies of patent sumed in making a search for such as- assignment records may be obtained signment. upon request and payment of the fee (35 U.S.C. 6; 15 U.S.C. 1113, 1123) set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trade- [47 FR 41272, Sept. 17, 1982, as amended at 54 mark assignment records. FR 6900, Feb. 15, 1989; 56 FR 65151, Dec. 13, 1991; 56 FR 66670, Dec. 24, 1991; 57 FR 29641, (2) All records of assignments of pat- July 6, 1992; 60 FR 20221, Apr. 25, 1995; 61 FR ents recorded before May 1, 1957, are 42802, Aug. 19, 1996; 65 FR 54657, Sept. 8, 2000; maintained by the National Archives 65 FR 57051, Sept. 20, 2000; 68 FR 48288, Aug. and Records Administration (NARA). 13, 2003; 69 FR 29877, May 26, 2004; 69 FR 56536, The records are open to public inspec- Sept. 21, 2004; 77 FR 48812, Aug. 14, 2012] tion. Certified and uncertified copies of those assignment records are provided § 1.13 Copies and certified copies. by NARA upon request and payment of (a) Non-certified copies of patents, the fees required by NARA. and patent application publications (b) Assignment records, digests, and and of any records, books, papers, or indexes relating to any pending or drawings within the jurisdiction of the abandoned patent application, which is United States Patent and Trademark open to the public pursuant to § 1.11 or Office and open to the public, will be for which copies or access may be sup- furnished by the United States Patent plied pursuant to § 1.14, are available to and Trademark Office to any person,

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and copies of other records or papers application may be provided to any will be furnished to persons entitled person upon request and payment of thereto, upon payment of the appro- the appropriate fee set forth in § 1.19(b). priate fee. See § 2.201 of this chapter re- (iii) Published pending applications. A garding copies of trademark records. copy of the application-as-filed, the file (b) Certified copies of patents, patent contents of the application, or a spe- application publications, and trade- cific document in the file of a pending mark registrations and of any records, published application may be provided books, papers, or drawings within the to any person upon request and pay- jurisdiction of the United States Pat- ment of the appropriate fee set forth in ent and Trademark Office and open to § 1.19(b). If a redacted copy of the appli- the public or persons entitled thereto cation was used for the patent applica- will be authenticated by the seal of the tion publication, the copy of the speci- United States Patent and Trademark fication, drawings, and papers may be Office and certified by the Director, or limited to a redacted copy. The Office in his or her name, upon payment of will not provide access to the paper file the fee for the certified copy. of a pending application that has been [68 FR 48288, Aug. 13, 2003, as amended at 68 published, except as provided in para- FR 71006, Dec. 22, 2003] graph (c) or (i) of this section. (iv) Unpublished abandoned applica- § 1.14 Patent applications preserved in tions (including provisional applications) confidence. that are identified or relied upon. The file (a) Confidentiality of patent application contents of an unpublished, abandoned information. Patent applications that application may be made available to have not been published under 35 U.S.C. the public if the application is identi- 122(b) are generally preserved in con- fied in a U.S. patent, a statutory inven- fidence pursuant to 35 U.S.C. 122(a). In- tion registration, a U.S. patent appli- formation concerning the filing, pend- cation publication, an international ency, or subject matter of an applica- publication of an international application for patent, including status infor- tion under PCT Article 21(2), or a publi- mation, and access to the application, cation of an international registration will only be given to the public as set under Hague Agreement Article 10(3) of forth in § 1.11 or in this section. an international design application (1) Records associated with patent designating the United States. An ap- applications (see paragraph (g) of this plication is considered to have been section for international applications identified in a document, such as a pat- and paragraph (j) of this section for ent, when the application number or international design applications) may serial number and filing date, first be available in the following situa- named inventor, title, and filing date tions: or other application specific informa- (i) Patented applications and statutory tion are provided in the text of the pat- invention registrations. The file of an ap- ent, but not when the same identifica- plication that has issued as a patent or tion is made in a paper in the file con- published as a statutory invention reg- tents of the patent and is not included istration is available to the public as in the printed patent. Also, the file set forth in § 1.11(a). A copy of the pat- contents may be made available to the ent application-as-filed, the file con- public, upon a written request, if ben- tents of the application, or a specific efit of the abandoned application is document in the file of such an applica- claimed under 35 U.S.C. 119(e), 120, 121, tion may be provided upon request and 365(c), or 386(c) in an application that payment of the appropriate fee set has issued as a U.S. patent, or has pub- forth in § 1.19(b). lished as a statutory invention reg- (ii) Published abandoned applications. istration, a U.S. patent application The file of an abandoned published ap- publication, an international publica- plication is available to the public as tion of an international application set forth in § 1.11(a). A copy of the ap- under PCT Article 21(2), or a publica- plication-as-filed, the file contents of tion of an international registration the published application, or a specific under Hague Agreement Article 10(3). A document in the file of the published copy of the application-as-filed, the file

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contents of the application, or a spe- 365(c), or 386(c) in an application that cific document in the file of the appli- has issued as a U.S. patent, an applica- cation may be provided to any person tion that has published as a statutory upon written request and payment of invention registration, a U.S. patent the appropriate fee (§ 1.19(b)). application publication, an inter- (v) Unpublished pending applications national publication of an inter- (including provisional applications) whose national application under PCT Article benefit is claimed. A copy of the file con- 21(2), or a publication of an inter- tents of an unpublished pending appli- national registration under Hague cation may be provided to any person, Agreement Article 10(3), or are not upon written request and payment of identified in a U.S. patent, a statutory the appropriate fee (§ 1.19(b)), if the invention registration, a U.S. patent benefit of the application is claimed application publication, an inter- under 35 U.S.C. 119(e), 120, 121, 365(c), or national publication of an inter- 386(c) in an application that has issued national application under PCT Article as a U.S. patent, or in an application 21(2), or a publication of an inter- that has published as a statutory in- national registration under Hague vention registration, a U.S. patent ap- Agreement Article 10(3) of an inter- plication publication, an international national design application designating publication of an international applica- the United States, are not available to tion under PCT Article 21(2), or a publi- the public. If an application is identi- cation of an international registration fied in the file contents of another ap- under Hague Agreement Article 10(3). A plication, but not the published patent copy of the application-as-filed or a application or patent itself, a granted specific document in the file of the petition for access (see paragraph (i)) pending application may also be pro- or a power to inspect (see paragraph (c) vided to any person upon written re- of this section) is necessary to obtain quest and payment of the appropriate the application, or a copy of the appli- fee (§ 1.19(b)). The Office will not pro- cation. vide access to the paper file of a pend- (2) Information concerning a patent ing application, except as provided in application may be communicated to paragraph (c) or (i) of this section. the public if the patent application is (vi) Unpublished pending applications identified in a published patent docu- (including provisional applications) that ment or in an application as set forth are incorporated by reference or otherwise in paragraphs (a)(1)(i) through (a)(1)(vi) identified. A copy of the application as of this section. The information that originally filed of an unpublished pend- may be communicated to the public ing application may be provided to any (i.e., status information) includes: person, upon written request and pay- (i) Whether the application is pend- ment of the appropriate fee (§ 1.19(b)), if ing, abandoned, or patented; the application is incorporated by ref- (ii) Whether the application has been erence or otherwise identified in a U.S. published under 35 U.S.C. 122(b); patent, a statutory invention registra- (iii) The application ‘‘numerical iden- tion, a U.S. patent application publica- tifier’’ which may be: tion, an international publication of an (A) The eight-digit application num- international application under PCT ber (the two-digit series code plus the Article 21(2), or a publication of an six-digit serial number); or international registration under Hague (B) The six-digit serial number plus Agreement Article 10(3) of an inter- any one of the filing date of the na- national design application designating tional application, the international the United States. The Office will not filing date, or date of entry into the provide access to the paper file of a national stage; and pending application, except as provided (iv) Whether another application in paragraph (c) or (i) of this section. claims the benefit of the application (vii) When a petition for access or a (i.e., whether there are any applica- power to inspect is required. Applications tions that claim the benefit of the fil- that were not published or patented, ing date under 35 U.S.C. 119(e), 120, 121, that are not the subject of a benefit 365, or 386 of the application), and if claim under 35 U.S.C. 119(e), 120, 121, there are any such applications, the

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numerical identifier of the application, (2) The applicant is given notice and the specified relationship between the an opportunity to object in writing applications (e.g., continuation), within two months on the ground that whether the application is pending, the decision discloses a trade secret or abandoned or patented, and whether other confidential information. Any the application has been published objection must identify the deletions under 35 U.S.C. 122(b). in the text of the decision considered (b) Electronic access to an application. necessary to protect the information, Where a copy of the application file or or explain why the entire decision access to the application may be made must be withheld from the public to available pursuant to this section, the protect such information. An applicant Office may at its discretion provide ac- or party will be given time, not less cess to only an electronic copy of the than twenty days, to request reconsid- specification, drawings, and file contents of the application. eration and seek court review before (c) Power to inspect a pending or aban- any portions of a decision are made doned application. Access to an applica- public under this paragraph over his or tion may be provided to any person if her objection. the application file is available, and (f) Notice to inventor of the filing of an the application contains written au- application. The Office may publish no- thority (e.g., a power to inspect) grant- tice in the Official Gazette as to the filing access to such person. The written ing of an application on behalf of an in- authority must be signed by: ventor by a person who otherwise (1) The applicant; shows sufficient proprietary interest in (2) A patent practitioner of record; the matter. (3) The assignee or an assignee of an (g) International applications. (1) Cop- undivided part interest; ies of international application files for (4) The inventor or a joint inventor; international applications which des- or ignate the U.S. and which have been (5) A registered attorney or agent published in accordance with PCT Arti- named in the papers accompanying the cle 21(2), or copies of a document in application papers filed under § 1.53 or such application files, will be furnished the national stage documents filed in accordance with PCT Articles 30 and under § 1.495, if a power of attorney has 38 and PCT Rules 94.2 and 94.3, upon not been appointed under § 1.32. written request including a showing (d) Applications reported to Department of Energy. Applications for patents that the publication of the application which appear to disclose, purport to has occurred and that the U.S. was des- disclose or do disclose inventions or ignated, and upon payment of the ap- discoveries relating to atomic energy propriate fee (see § 1.19(b)), if: are reported to the Department of En- (i) With respect to the Home Copy ergy, which Department will be given (the copy of the international applica- access to the applications. Such report- tion kept by the Office in its capacity ing does not constitute a determina- as the Receiving Office, see PCT Arti- tion that the subject matter of each cle 12(1)), the international application application so reported is in fact useful was filed with the U.S. Receiving Of- or is an invention or discovery, or that fice; such application in fact discloses sub- (ii) With respect to the Search Copy ject matter in categories specified by (the copy of an international applica- 42 U.S.C. 2181(c) and (d). tion kept by the Office in its capacity (e) Decisions by the Director. Any deci- as the International Searching Author- sion by the Director that would not ity, see PCT Article 12(1)), the U.S. otherwise be open to public inspection acted as the International Searching may be published or made available for Authority, except for the written opin- public inspection if: ion of the International Searching Au- (1) The Director believes the decision thority which shall not be available involves an interpretation of patent laws or regulations that would be of until the expiration of thirty months precedential value; and from the priority date; or

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(iii) With respect to the Examination ticipating foreign intellectual property Copy (the copy of an international ap- offices in accordance with their respec- plication kept by the Office in its ca- tive agreements with the Office: pacity as the International Prelimi- (i) A copy of the application-as-filed nary Examining Authority), the United and its related bibliographic data; States acted as the International Pre- (ii) A copy of the application-as-filed liminary Examining Authority, an of any application the filing date of International Preliminary Examina- which is claimed by the application in tion Report has issued, and the United which written authority under this States was elected. paragraph (h)(1) is filed and its related (2) A copy of an English language bibliographic data; and translation of a publication of an inter- (iii) The date of filing of the written national application which has been authorization under this paragraph filed in the United States Patent and (h)(1). Trademark Office pursuant to 35 U.S.C. (2) Access to the file contents of an 154(d)(4) will be furnished upon written application may be provided to a for- request including a showing that the eign intellectual property office that publication of the application in ac- has imposed a requirement for infor- cordance with PCT Article 21(2) has oc- mation on a counterpart application curred and that the U.S. was des- filed with the foreign intellectual prop- ignated, and upon payment of the ap- erty office where the foreign intellec- propriate fee (§ 1.19(b)(4)). tual property office is a party to a bi- (3) Access to international application files for international applications lateral or multilateral agreement with which designate the U.S. and which the Office to provide the required infor- have been published in accordance with mation from the application filed with PCT Article 21(2), or copies of a docu- the Office and the application contains ment in such application files, will be written authority granting such ac- permitted in accordance with PCT Ar- cess. Written authority provided under ticles 30 and 38 and PCT Rules 44ter.1, this paragraph (h)(2) will be treated as 94.2 and 94.3, upon written request in- authorizing the Office to provide the cluding a showing that the publication following to all foreign intellectual of the application has occurred and property offices in accordance with that the U.S. was designated. their respective agreements with the (4) In accordance with PCT Article Office: 30, copies of an international applica- (i) Bibliographic data related to the tion-as-filed under paragraph (a) of this application; and section will not be provided prior to (ii) Any content of the application the international publication of the ap- file necessary to satisfy the foreign in- plication pursuant to PCT Article 21(2). tellectual property office requirement (5) Access to international applica- for information imposed on the coun- tion files under paragraphs (a)(1)(i) terpart application as indicated in the through (a)(1)(vi) and (g)(3) of this sec- respective agreement. tion will not be permitted with respect (3) Written authority provided under to the Examination Copy in accordance paragraphs (h)(1) and (h)(2) of this sec- with PCT Article 38. tion must include the title of the in- (h) Access by a Foreign Intellectual vention (§ 1.72(a)), comply with the re- Property Office. (1) Access to an applica- quirements of paragraph (c) of this section-as-filed may be provided to any tion, and be submitted on an applica- foreign intellectual property office par- tion data sheet (§ 1.76) or on a separate ticipating with the Office in a bilateral document (§ 1.4(c)). The written author- or multilateral priority document ex- ity provided under these paragraphs change agreement (participating for- should be submitted before filing any eign intellectual property office), if the subsequent foreign application in application contains written authority which priority is claimed to the appli- granting such access. Written author- cation. ity provided under this paragraph (h)(1) (i) Access or copies in other cir- will be treated as authorizing the Of- cumstances. The Office, either sua fice to provide the following to all par- sponte or on petition, may also provide

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access or copies of all or part of an ap- § 1.15 [Reserved] plication if necessary to carry out an Act of Congress or if warranted by FEES AND PAYMENT OF MONEY other special circumstances. Any petition by a member of the public seeking AUTHORITY: Sections 1.16 through 1.22 also access to, or copies of, all or part of issued under 35 U.S.C. 41, 111, 119, 120, 132(b), 156, 157, 255, 302, and 311, Public Laws 103–465, any pending or abandoned application 106–113, and 112–29. preserved in confidence pursuant to paragraph (a) of this section, or any re- § 1.16 National application filing, lated papers, must include: search, and examination fees. (1) The fee set forth in § 1.17(g); and (a) Basic fee for filing each applica- (2) A showing that access to the ap- tion under 35 U.S.C. 111 for an original plication is necessary to carry out an patent, except design, plant, or provi- Act of Congress or that special cir- sional applications: cumstances exist which warrant petitioner being granted access to all or By a micro entity (§ 1.29) ...... $75.00 By a small entity (§ 1.27(a)) ...... 150.00 part of the application. By a small entity (§ 1.27(a)) if the (j) International design applications. (1) application is submitted in With respect to an international design compliance with the Office application maintained by the Office in electronic filing system its capacity as a designated office (§ 1.27(b)(2)) ...... 75.00 (§ 1.1003) for national processing, the By other than a small or micro entity ...... 300.00 records associated with the international design application may be (b) Basic fee for filing each applica- made available as provided under para- tion under 35 U.S.C. 111 for an original graphs (a) through (i) of this section. design patent: (2) With respect to an international By a micro entity (§ 1.29) ...... $50.00 design application maintained by the By a small entity (§ 1.27(a)) ...... 100.00 Office in its capacity as an office of in- By other than a small or micro direct filing (§ 1.1002), the records of the entity ...... 200.00 international design application may (c) Basic fee for filing each applica- be made available under paragraph tion for an original plant patent: (j)(1) of this section where contained in the file of the international design ap- By a micro entity (§ 1.29) ...... $50.00 plication maintained by the Office for By a small entity (§ 1.27(a)) ...... 100.00 national processing. Also, if benefit of By other than a small or micro the international design application is entity ...... 200.00 claimed under 35 U.S.C. 386(c) in a U.S. (d) Basic fee for filing each provi- patent or published application, the sional application: file contents of the application may be made available to the public, or the file By a micro entity (§ 1.29) ...... $70.00 contents of the application, a copy of By a small entity (§ 1.27(a)) ...... 140.00 the application-as-filed, or a specific By other than a small or micro entity ...... 280.00 document in the file of the application may be provided to any person upon (e) Basic fee for filing each applica- written request and payment of the ap- tion for the reissue of a patent: propriate fee (§ 1.19(b)). By a micro entity (§ 1.29) ...... $75.00 [68 FR 38624, June 30, 2003, as amended at 68 By a small entity (§ 1.27(a)) ...... 150.00 FR 59886, Oct. 20, 2003; 68 FR 67805, Dec. 4, By other than a small or micro 2003; 68 FR 71006, Dec. 22, 2003; 69 FR 49997, entity ...... 300.00 Aug. 12, 2004; 69 FR 56536, Sept. 21, 2004; 72 FR (f) Surcharge for filing the basic fil- 1667, Jan. 16, 2007; 77 FR 48812, Aug. 14, 2012; ing fee, search fee, examination fee, or 78 FR 11052, Feb. 14, 2013; 80 FR 17953, Apr. 2, 2015; 80 FR 65655, Oct. 27, 2015] the inventor’s oath or declaration on a date later than the filing date of the application, an application that does not contain at least one claim on the

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filing date of the application, or an ap- By other than a small or micro plication filed by reference to a pre- entity ...... 660.00 viously filed application under § 1.57(a), (l) Search fee for each application except provisional applications: under 35 U.S.C. 111 for an original design patent: By a micro entity (§ 1.29) ...... $40.00 By a small entity (§ 1.27(a)) ...... 80.00 By other than a small or micro By a micro entity (§ 1.29) ...... $40.00 entity ...... 160.00 By a small entity (§ 1.27(a)) ...... 80.00 By other than a small or micro (g) Surcharge for filing the basic fil- entity ...... 160.00 ing fee or cover sheet (§ 1.51(c)(1)) on a date later than the filing date of the (m) Search fee for each application provisional application: for an original plant patent: By a micro entity (§ 1.29) ...... $15.00 By a micro entity (§ 1.29) ...... $105.00 By a small entity (§ 1.27(a)) ... 30.00 By a small entity (§ 1.27(a)) ...... 210.00 By other than a small or By other than a small or micro micro entity ...... 60.00 entity ...... 420.00 (h) In addition to the basic filing fee (n) Search fee for each application in an application, other than a provi- for the reissue of a patent: sional application, for filing or later presentation at any other time of each By a micro entity (§ 1.29) ...... $165.00 claim in independent form in excess of By a small entity (§ 1.27(a)) ...... 330.00 3: By other than a small or micro entity ...... 660.00 By a micro entity (§ 1.29) ...... $115.00 By a small entity (§ 1.27(a)) ...... 230.00 (o) Examination fee for each applica- By other than a small or micro tion filed under 35 U.S.C. 111 for an entity ...... 460.00 original patent, except design, plant, or (i) In addition to the basic filing fee provisional applications: in an application, other than a provisional application, for filing or later By a micro entity (§ 1.29) ...... $190.00 presentation at any other time of each By a small entity (§ 1.27(a)) ...... 380.00 By other than a small or micro claim (whether dependent or inde- entity ...... 760.00 pendent) in excess of 20 (note that § 1.75(c) indicates how multiple depend- (p) Examination fee for each applica- ent claims are considered for fee cal- tion under 35 U.S.C. 111 for an original culation purposes): design patent:

By a micro entity (§ 1.29) ...... $25.00 By a micro entity (§ 1.29) ...... $150.00 By a small entity (§ 1.27(a)) ...... 50.00 By a small entity (§ 1.27(a)) ...... 300.00 By other than a small or micro By other than a small or micro entity ...... 100.00 entity ...... 600.00 (j) In addition to the basic filing fee (q) Examination fee for each applica- in an application, other than a provi- tion for an original plant patent: sional application, that contains, or is amended to contain, a multiple depend- By a micro entity (§ 1.29) ...... $155.00 ent claim, per application: By a small entity (§ 1.27(a)) ...... 310.00 By other than a small or micro By a micro entity (§ 1.29) ...... $205.00 entity ...... 620.00 By a small entity (§ 1.27(a)) ...... 410.00 By other than a small or micro (r) Examination fee for each applica- entity ...... 820.00 tion for the reissue of a patent: (k) Search fee for each application By a micro entity (§ 1.29) ...... $550.00 filed under 35 U.S.C. 111 for an original By a small entity (§ 1.27(a)) ...... 1,100.00 patent, except design, plant, or provi- By other than a small or micro sional applications: entity ...... 2,200.00

By a micro entity (§ 1.29) ...... $165.00 (s) Application size fee for any appli- By a small entity (§ 1.27(a)) ...... 330.00 cation filed under 35 U.S.C. 111 for the

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specification and drawings which ex- (b) For fees in proceedings before the ceed 100 sheets of paper, for each addi- Patent Trial and Appeal Board, see tional 50 sheets or fraction thereof: § 41.20 and § 42.15 of this title. By a micro entity (§ 1.29) ...... $100.00 (c) For filing a request for prioritized By a small entity (§ 1.27(a)) ... 200.00 examination under § 1.102(e): By other than a small or By a micro entity (§ 1.29) ...... $1,000.00 By a small entity (§ 1.27(a)) ...... $2,000.00 micro entity ...... 400.00 By other than a small or micro (t) Non-electronic filing fee for any entity ...... $4,000.00 application under 35 U.S.C. 111(a) that (d) For correction of inventorship in is filed on or after November 15, 2011, an application after the first action on other than by the Office electronic fil- the merits: ing system, except for a reissue, design, By a micro entity (§ 1.29) ...... $150.00 or plant application: By a small entity (§ 1.27(a)) ...... $300.00 By other than a small or micro By a small entity (§ 1.27(a)) ... $200.00 entity ...... $600.00 By other than a small entity $400.00 (e) To request continued examination pursuant to § 1.114: NOTE TO § 1.16: See §§ 1.445, 1.482 and 1.492 (1) For filing a first request for con- for international application filing and proc- tinued examination pursuant to § 1.114 essing fees. in an application: [70 FR 3887, Jan. 27, 2005, as amended at 70 FR 30365, May 26, 2005; 72 FR 46901, Aug. 22, By a micro entity (§ 1.29) ...... $325.00 2007; 73 FR 47540, Aug. 14, 2008; 76 FR 70653, By a small entity (§ 1.27(a)) ...... 650.00 Nov. 15, 2011; 77 FR 48812, Aug. 14, 2012; 77 FR By other than a small or micro 54365, Sept. 5, 2012; 78 FR 4284, Jan. 18, 2013; entity ...... 1,300.00 78 FR 62395, Oct. 21, 2013; 80 FR 17954, Apr. 2, 2015; 82 FR 52813, Nov. 14, 2017] (2) For filing a second or subsequent request for continued examination pur- § 1.17 Patent application and reexam- suant to § 1.114 in an application: ination processing fees. By a micro entity (§ 1.29) ...... $475.00 (a) Extension fees pursuant to By a small entity (§ 1.27(a)) ...... 950.00 § 1.136(a): By other than a small or micro (1) For reply within first month: entity ...... 1,900.00 By a micro entity (§ 1.29) ...... $50.00 (f) For filing a petition under one of By a small entity (§ 1.27(a)) ...... $100.00 the following sections which refers to By other than a small or micro this paragraph: entity ...... $200.00 (2) For reply within second month: By a micro entity (§ 1.29) ...... $100.00 By a small entity (§ 1.27(a)) ...... 200.00 By a micro entity (§ 1.29) ...... $150.00 By other than a small or micro entity .. 400.00 By a small entity (§ 1.27(a)) ...... $300.00 By other than a small or micro § 1.36(a)—for revocation of a power of attor- entity ...... $600.00 ney by fewer than all of the applicants. § 1.53(e)—to accord a filing date. (3) For reply within third month: § 1.182—for decision on a question not spe- By a micro entity (§ 1.29) ...... $350.00 cifically provided for in an application for By a small entity (§ 1.27(a)) ...... $700.00 patent. By other than a small or micro § 1.183—to suspend the rules in an applica- entity ...... $1,400.00 tion for patent. § 1.741(b)—to accord a filing date to an ap- (4) For reply within fourth month: plication under § 1.740 for extension of a pat- By a micro entity (§ 1.29) ...... $550.00 ent term. By a small entity (§ 1.27(a)) ...... $1,100.00 § 1.1023—to review the filing date of an By other than a small or micro international design application. entity ...... $2,200.00 (g) For filing a petition under one of the following sections which refers to (5) For reply within fifth month: this paragraph: By a micro entity (§ 1.29) ...... $750.00 By a small entity (§ 1.27(a)) ...... $1,500.00 By a micro entity (§ 1.29) ...... $50.00 By other than a small or micro By a small entity (§ 1.27(a)) ...... 100.00 entity ...... $3,000.00 By other than a small or micro entity .. 200.00

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§ 1.12—for access to an assignment record. § 1.48—for correcting inventorship, except § 1.14—for access to an application. in provisional applications. § 1.46—for filing an application on behalf of § 1.52(d)—for processing a nonprovisional an inventor by a person who otherwise shows application filed with a specification in a sufficient proprietary interest in the matter. language other than English. § 1.55(f)—for filing a belated certified copy § 1.53(c)(3)—t convert a provisional applica- of a foreign application. tion filed under § 1.53(c) into a nonprovisional § 1.55(g)—for filing a belated certified copy application under § 1.53(b). of a foreign application. § 1.71(g)(2)—for processing a belated amend- § 1.57(a)—for filing a belated certified copy ment under § 1.71(g). of a foreign application. § 1.102(e)—for requesting prioritized exam- § 1.59—for expungement of information. ination of an application. § 1.103(a)—to suspend action in an applica- § 1.103(b)—for requesting limited suspension tion. of action, continued prosecution application § 1.136(b)—for review of a request for exten- for a design patent (§ 1.53(d)). sion of time when the provisions of § 1.136(a) are not available. § 1.103(c)—for requesting limited suspension § 1.377—for review of decision refusing to of action, request for continued examination accept and record payment of a maintenance (§ 1.114). fee filed prior to expiration of a patent. § 1.103(d)—for requesting deferred examina- § 1.550(c)—for patent owner requests for ex- tion of an application. tension of time in ex parte reexamination § 1.291(c)(5)—for processing a second or sub- proceedings. sequent protest by the same real party in in- § 1.956—for patent owner requests for exten- terest. sion of time in inter partes reexamination § 3.81—for a patent to issue to assignee, as- proceedings. signment submitted after payment of the § 5.12—for expedited handling of a foreign issue fee. filing license. (2) For taking action under one of § 5.15—for changing the scope of a license. the following sections which re- § 5.25—for retroactive license. fers to this paragraph ...... $130.00 (h) For filing a petition under one of the following sections which refers to § 1.217—for processing a redacted copy of a paper submitted in the file of an application this paragraph (h): in which a redacted copy was submitted for the patent application publication. By a micro entity (§ 1.29) ...... $35.00 § 1.221—for requesting voluntary publica- By a small entity (§ 1.27(a)) ...... 70.00 tion or republication of an application. By other than a small or micro entity ...... 140.00 (j) [Reserved] (k) For filing a request for expedited § 1.84—for accepting color drawings or pho- examination under § 1.155(a): tographs. § 1.91—for entry of a model or exhibit. By a micro entity (§ 1.29) ...... $225.00 § 1.102(d)—to make an application special. By a small entity (§ 1.27(a)) ...... $450.00 § 1.138(c)—to expressly abandon an applica- By other than a small or micro tion to avoid publication. entity...... $900.00 § 1.313—to withdraw an application from issue. (l) [Reserved] § 1.314—to defer issuance of a patent. (m) For filing a petition for the re- (i) Processing fees. (1) For taking ac- vival of an abandoned application for a tion under one of the following sections patent, for the delayed payment of the which refers to this paragraph: fee for issuing each patent, for the delayed response by the patent owner in By a micro entity (§ 1.29) ...... $35.00 any reexamination proceeding, for the By a small entity (§ 1.27(a)) ...... 70.00 delayed payment of the fee for main- By other than a small or micro entity .. 140.00 taining a patent in force, for the de- § 1.28(c)(3)—for processing a non-itemized layed submission of a priority or ben- fee deficiency based on an error in small en- efit claim, for the extension of the tity status. twelve-month (six-month for designs) § 1.29(k)(3)—for processing a non-itemized period for filing a subsequent applica- fee deficiency based on an error in micro en- tion (§§ 1.55(c) and (e), 1.78(b), (c), and tity status. (e), 1.137, 1.378, and 1.452), or for filing a § 1.41(b)—for supplying the name or names of the inventor or joint inventors in an appli- petition to excuse applicant’s failure to cation without either an application data act within prescribed time limits in an sheet or the inventor’s oath or declaration, international design application except in provisional applications. (§ 1.1051):

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§ 1.18 Patent post allowance (including By a micro entity (§ 1.29) ...... $500.00 issue) fees. By a small entity (§ 1.27(a)) ...... 1,000.00 (a)(1) Issue fee for issuing each origi- By other than a small or micro nal patent, except a design or plant entity ...... 2,000.00 patent, or for issuing each reissue pat- (n) [Reserved] ent: (o) For every ten items or fraction By a micro entity (§ 1.29) ...... $250.00 thereof in a third-party submission By a small entity (§ 1.27(a)) ...... 500.00 under § 1.290: By other than a small or micro By a small entity (§ 1.27(a)) or entity ...... 1,000.00 micro entity (§ 1.29) ...... $90.00 (2) [Reserved] By other than a small entity ...... $180.00 (b)(1) Issue fee for issuing an original (p) For an information disclosure design patent: statement under § 1.97(c) or (d): By a micro entity (§ 1.29) ...... $175.00 By a small entity (§ 1.27(a)) ...... 350.00 By a micro entity (§ 1.29) ...... $60.00 By other than a small or micro By a small entity (§ 1.27(a)) ...... 120.00 entity ...... 700.00 By other than a small or micro entity ...... 240.00 (2) [Reserved] (q) Processing fee for taking ac- (3) Issue fee for issuing an inter- tion under one of the following national design application designating sections which refers to this the United States, where the issue fee paragraph ...... $50.00 is paid through the International Bu- § 1.41—to supply the name or names of the reau (Hague Agreement Rule 12(3)(c)) inventor or inventors after the filing date as an alternative to paying the issue without a cover sheet as prescribed by fee under paragraph (b)(1) of this sec- § 1.51(c)(1) in a provisional application. tion: The amount established in Swiss § 1.48—for correction of inventorship in a currency pursuant to Hague Agreement provisional application. Rule 28 as of the date of mailing of the § 1.53(c)(2)—to convert a nonprovisional ap- notice of allowance (§ 1.311). plication filed under § 1.53(b) to a provisional (c)(1) Issue fee for issuing an original application under § 1.53(c). plant patent: (r) For entry of a submission after final rejection under § 1.129(a): By a micro entity (§ 1.29) ...... $200.00 By a small entity (§ 1.27(a)) ...... 400.00 By a micro entity (§ 1.29) ...... $210.00 By other than a small or micro By a small entity (§ 1.27(a)) ...... $420.00 entity ...... 800.00 By other than a small or micro entity ...... $840.00 (2) [Reserved] (d)(1) Publication fee on or after (s) For each additional invention re- January 1, 2014 ...... $0.00 quested to be examined under § 1.129(b): (2) Publication fee before January By a micro entity (§ 1.29) ...... $210.00 1, 2014 ...... 300.00 By a small entity (§ 1.27(a)) ...... $420.00 (3) Republication fee (§ 1.221(a)) .... 300.00 By other than a small or micro (e) For filing an application for entity ...... $840.00 patent term adjustment under § 1.705: ...... $200.00. (t) For filing a petition to convert an (f) For filing a request for rein- international design application to a statement of all or part of the design application under 35 U.S.C. term reduced pursuant to § 1.704(b) in an application for chapter 16 (§ 1.1052): patent term adjustment under§ 1.705: ...... $400.00. By a micro entity (§ 1.29) ...... $45.00 By a small entity (§ 1.27(a)) ...... 90.00 [78 FR 4286, Jan. 18, 2013, as amended at 80 By other than a small or micro FR 17955, Apr. 2, 2015; 82 FR 52814, Nov. 14, entity ...... 180.00 2017]

[78 FR 17105, Mar. 20, 2013, as amended at 78 § 1.19 Document supply fees. FR 62395, Oct. 21, 2013; 78 FR 75252, Dec. 11, The United States Patent and Trade- 2013; 80 FR 17954, Apr. 2, 2015; 82 FR 52814, mark Office will supply copies of the Nov. 14, 2017] 33

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following patent-related documents lateral or multilateral agreement (see upon payment of the fees indicated. § 1.14(h)): $0.00. Paper copies will be in black and white (2) [Reserved] unless the original document is in (3) Copy of Office records, except cop- color, a color copy is requested and the ies available under paragraph (b)(1) or fee for a color copy is paid. (2) of this section: $25.00. (a) Uncertified copies of patent appli- (4) For assignment records, abstract cation publications and patents: of title and certification, per patent: (1) Printed copy of the paper portion $35.00. of a patent application publication or (c) Library service (35 U.S.C. 13): For patent including a design patent, stat- providing to libraries copies of all pat- utory invention registration, or defen- ents issued annually, per annum: $50.00. sive publication document. Service in- (d)–(e) [Reservedb cludes preparation of copies by the Of- (f) Uncertified copy of a non-United fice within two to three business days States patent document, per document: and delivery by United States Postal $25.00. Service; and preparation of copies by (g) [Reserved] the Office within one business day of (h) Copy of Patent Grant Single-Page receipt and delivery to an Office Box or TIFF Images (52 week subscription): by electronic means (e.g., facsimile, $10,400.00. electronic mail): $3.00. (i) Copy of Patent Grant Full-Text W/ (2) Printed copy of a plant patent in Embedded Images, Patent Application color: $15.00. Publication Single-Page TIFF Images, (3) Color copy of a patent (other than or Patent Application Publication a plant patent) or statutory invention Full-Text W/Embedded Images (52 week registration containing a color draw- subscription): $5,200.00. ing: $25.00. (j) Copy of Patent Technology Moni- (b) Copies of Office documents to be toring Team (PTMT) Patent Biblio- provided in paper, or in electronic graphic Extract and Other DVD (Opti- form, as determined by the Director cal Disc) Products: $50.00. (k) Copy of U.S. Patent Custom Data (for other patent-related materials see Extracts: $100.00. § 1.21(k)): (l) Copy of Selected Technology Re- (1) Copy of a patent application as ports, Miscellaneous Technology Areas: filed, or a patent-related file wrapper $30.00. and contents, stored in paper in a paper file wrapper, in an image format in an [78 FR 4287, Jan. 18, 2013, as amended at 80 image file wrapper, or if color docu- FR 65655, Oct. 27, 2015; 82 FR 52814, Nov. 14, ments, stored in paper in an Artifact 2017] Folder: § 1.20 Post issuance fees. (i) If provided on paper: (A) Application as filed: $35.00. (a) For providing a certificate of (B) File wrapper and contents: correction for applicant’s mis- $280.00. take (§ 1.323) ...... $150.00 (C) [Reserved] (b) Processing fee for correcting (D) Individual application docu- inventorship in a patent ments, other than application as filed, (§ 1.324) ...... 150.00 per document: $25.00. (c) In reexamination proceedings: (ii) If provided on compact disc or (1)(i) For filing a request for ex parte other physical electronic medium in reexamination (§ 1.510(a)) having: single order or if provided electroni- (A) Forty (40) or fewer pages; cally (e.g., by electronic transmission) (B) Lines that are double-spaced or other than on a physical electronic me- one-and-a-half spaced; dium: (C) Text written in a non-script type (A) Application as filed: $35.00. font such as Arial, Times New Roman, (B) File wrapper and contents: $55.00. or Courier; (C) [Reserved] (D) A font size no smaller than 12 (iii) [Reserved] point; (iv) If provided to a foreign intellec- (E) Margins which conform to the re- tual property office pursuant to a bi- quirements of § 1.52(a)(1)(ii); and

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(F) Sufficient clarity and contrast to By other than a small or micro permit direct reproduction and elec- entity ...... 100.00 tronic capture by use of digital imag- (d) For filing each statutory dis- ing and optical character recognition. claimer (§ 1.321) ...... $160.00 (e) For maintaining an original or By a micro entity (§ 1.29) ...... $1,500.00 any reissue patent, except a design or By a small entity (§ 1.27(a)) ...... 3,000.00 plant patent, based on an application By other than a small or micro filed on or after December 12, 1980, in entity ...... 6,000.00 force beyond four years, the fee being (ii) The following parts of an ex parte due by three years and six months reexamination request are excluded after the original grant: from paragraphs (c)(1)(i)(A) through (F) of this section: By a micro entity (§ 1.29) ...... $400.00 (A) The copies of every patent or By a small entity (§ 1.27(a)) ...... 800.00 printed publication relied upon in the By other than a small or micro request pursuant to § 1.510(b)(3); entity ...... 1,600.00 (B) The copy of the entire patent for (f) For maintaining an original or which reexamination is requested pur- any reissue patent, except a design or suant to § 1.510(b)(4); and plant patent, based on an application (C) The certifications required pursu- filed on or after December 12, 1980, in ant to § 1.510(b)(5) and (6). force beyond eight years, the fee being (2) For filing a request for ex parte re- due by seven years and six months examination (§ 1.510(b)) which has suffi- after the original grant: cient clarity and contrast to permit direct reproduction and electronic cap- By a micro entity (§ 1.29) ...... $900.00 ture by use of digital imaging and opti- By a small entity (§ 1.27(a)) ...... 1,800.00 cal character recognition, and which By other than a small or micro otherwise does not comply with the entity ...... 3,600.00 provisions of paragraph (c)(1) of this (g) For maintaining an original or section: any reissue patent, except a design or plant patent, based on an application By a micro entity (§ 1.29) ...... $3,000.00 filed on or after December 12, 1980, in By a small entity (§ 1.27(a)) ...... 6,000.00 force beyond twelve years, the fee By other than a small or micro being due by eleven years and six entity ...... 12,000.00 months after the original grant: (3) For filing with a request for reexamination or later presentation at any By a micro entity (§ 1.29) ...... $1,850.00 other time of each claim in inde- By a small entity (§ 1.27(a)) ...... 3,700.00 pendent form in excess of three and By other than a small or micro also in excess of the number of claims entity ...... 7,400.00 in independent form in the patent (h) Surcharge for paying a mainte- under reexamination: nance fee during the six-month grace period following the expiration of three By a micro entity (§ 1.29) ...... $115.00 years and six months, seven years and By a small entity (§ 1.27(a)) ...... 230.00 six months, and eleven years and six By other than a small or micro months after the date of the original entity ...... 460.00 grant of a patent based on an applica- (4) For filing with a request for reex- tion filed on or after December 12, 1980: amination or later presentation at any other time of each claim (whether de- By a micro entity (§ 1.29) ...... $40.00 pendent or independent) in excess of 20 By a small entity (§ 1.27(a)) ... $80.00 and also in excess of the number of By other than a small or claims in the patent under reexamina- micro entity ...... $160.00 tion (note that § 1.75(c) indicates how (i) [Reserved] multiple dependent claims are consid- (j) For filing an application for ex- ered for fee calculation purposes): tension of the term of a patent

By a micro entity (§ 1.29) ...... $25.00 Application for extension under By a small entity (§ 1.27(a)) ...... 50.00 § 1.740 ...... $1,120.00

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Initial application for interim ex- (2) On registration to practice or tension under § 1.790 ...... $420.00 grant of limited recognition: Subsequent application for in- (i) On registration to practice under terim extension under § 1.790 .... $220.00 § 11.6 of this chapter: $200.00. (k) In supplemental examination pro- (ii) On grant of limited recognition ceedings: under § 11.9(b) of this chapter: $200.00. (1) For processing and treating a re- (iii) On change of registration from quest for supplemental examination: agent to attorney: $100.00. (3) [Reserved] By a micro entity (§ 1.29) ...... $1,100.00 By a small entity (§ 1.27(a)) ... $2,200.00 (4) For certificate of good standing as By other than a small or an attorney or agent: micro entity ...... $4,400.00 (i) Standard: $40.00. (2) For ex parte reexamination or- (ii) Suitable for framing: $50.00. dered as a result of a supplemental ex- (5) For review of decision: amination proceeding: (i) By the Director of Enrollment and Discipline under § 11.2(c) of this chap- By a micro entity (§ 1.29) ...... $3,025.00 ter: $400.00. By a small entity (§ 1.27(a)) ... $6,050.00 (ii) Of the Director of Enrollment and By other than a small or Discipline under § 11.2(d) of this chap- micro entity ...... $12,100.00 ter: $400.00. (3) For processing and treating, in a (6) Recovery/Retrieval of OED Infor- supplemental examination proceeding, mation System Customer Interface ac- a non-patent document over 20 sheets count by USPTO: in length, per document: (i) For USPTO-assisted recovery of (i) Between 21 and 50 sheets: ID or reset of password: $70.00. (ii) For USPTO-assisted change of ad- By a micro entity (§ 1.29) ...... $45.00 By a small entity (§ 1.27(a)) ... $90.00 dress: $70.00. By other than a small or (7)–(8) [Reserved] micro entity...... $180.00 (9)(i) Delinquency fee: $50.00. (ii) For each additional 50 sheets or a (ii) Administrative reinstatement fraction thereof: fee: $200.00. (10) On application by a person for By a micro entity (§ 1.29) ...... $70.00 recognition or registration after dis- By a small entity (§ 1.27(a)) ... $140.00 barment or suspension on ethical By other than a small or grounds, or resignation pending dis- micro entity ...... $280.00 ciplinary proceedings in any other jurisdiction; on application by a person [78 FR 17106, Mar. 20, 2013, as amended at 78 FR 62395, Oct. 21, 2013; 82 FR 52815, Nov. 14, for recognition or registration who is 2017] asserting rehabilitation from prior conduct that resulted in an adverse deci- § 1.21 Miscellaneous fees and charges. sion in the Office regarding the per- The Patent and Trademark Office has son’s moral character; and on applica- established the following fees for the tion by a person for recognition or reg- services indicated: istration after being convicted of a fel- (a) Registration of attorneys and ony or crime involving moral turpitude agents: or breach of fiduciary duty; on petition (l) For admission to examination for for reinstatement by a person excluded registration to practice: or suspended on ethical grounds, or ex- (i) Application Fee (non-refundable): cluded on consent from practice before $100.00. the Office: $1,600.00. (ii) Registration examination fee. (b) Deposit accounts: (A) For test administration by com- (1) [Reserved] mercial entity: $200.00. (2) Service charge for each month (B) For test administration by the when the balance at the end of the USPTO: $450.00. month is below $1,000: $25.00. (iii) For USPTO-administered review (3) Service charge for each month of registration examination: $450.00. when the balance at the end of the

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month is below $300 for restricted sub- § 1.22 Fees payable in advance. scription deposit accounts used exclu- (a) Patent fees and charges payable sively for subscription order of patent to the United States Patent and Trade- copies as issued: $25.00. mark Office are required to be paid in (c)–(d) [Reserved] advance; that is, at the time of re- (e) International type search reports: questing any action by the Office for For preparing an international type which a fee or charge is payable, with search report of an international type the exception that under § 1.53 applica- search made at the time of the first actions for patent may be assigned a fil- tion on the merits in a national patent ing date without payment of the basic application: $40.00. filing fee. (f)–(g) [Reserved] (b) All fees paid to the United States (h) For recording each assignment, Patent and Trademark Office must be agreement, or other paper relating to itemized in each individual applica- the property in a patent or application, tion, patent, or other proceeding in per property: such a manner that it is clear for (1) If submitted electronically, on or which purpose the fees are paid. The after January 1, 2014: $0.00. Office may return fees that are not (2) If not submitted electronically: itemized as required by this paragraph. $50.00. The provisions of § 1.5(a) do not apply (i) Publication in Official Gazette: to the resubmission of fees returned For publication in the Official Gazette pursuant to this paragraph. of a notice of the availability of an ap- [68 FR 48288, Aug. 13, 2003] plication or a patent for licensing or sale: Each application or patent: $25.00. § 1.23 Methods of payment. (j)–(l) [Reserved] (a) All payments of money required (m) For processing each payment re- for United States Patent and Trade- fused (including a check returned ‘‘un- mark Office fees, including fees for the paid’’) or charged back by a financial processing of international applica- institution: $50.00. tions (§ 1.445), shall be made in U.S. dol- (n) For handling an application in lars and in the form of a cashier’s or which proceedings are terminated pur- certified check, Treasury note, na- suant to § 1.53(e): $130.00. tional bank notes, or United States (o) The submission of very lengthy Postal Service money order. If sent in sequence listings (mega-sequence list- any other form, the Office may delay ings) are subject to the following fees: or cancel the credit until collection is (1) Submission of sequence listings in made. Checks and money orders must electronic form ranging in size from 300 be made payable to the Director of the MB to 800 MB: United States Patent and Trademark Office. (Checks made payable to the By a micro entity (§ 1.29) ...... $250.00 Commissioner of Patents and Trade- By a small entity (§ 1.27(a)) ...... 500.00 marks will continue to be accepted.) By other than a small or micro Payments from foreign countries must entity ...... 1,000.00 be payable and immediately negotiable (2) Submission of sequence listings in in the United States for the full electronic form exceeding 800 MB in amount of the fee required. Money sent size: to the Office by mail will be at the risk of the sender, and letters containing By a micro entity (§ 1.29) ...... $2,500.00 money should be registered with the By a small entity (§ 1.27(a)) ...... 5,000.00 United States Postal Service. By other than a small or micro (b) Payments of money required for entity ...... 10,000.00 United States Patent and Trademark (p) Additional Fee for Overnight De- Office fees may also be made by credit livery: $40.00. card, except for replenishing a deposit account. Payment of a fee by credit (q) Additional Fee for Expedited card must specify the amount to be Service: $160.00. charged to the credit card and such [82 FR 52815, Nov. 14, 2017] other information as is necessary to

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process the charge, and is subject to charged against these accounts if suffi- collection of the fee. The Office will cient funds are on deposit to cover such not accept a general authorization to fees. A general authorization to charge charge fees to a credit card. If credit all fees, or only certain fees, set forth card information is provided on a form in §§ 1.16 through 1.18 to a deposit ac- or document other than a form pro- count containing sufficient funds may vided by the Office for the payment of be filed in an individual application, ei- fees by credit card, the Office will not ther for the entire pendency of the ap- be liable if the credit card number be- plication or with a particular paper comes public knowledge. filed. A general authorization to charge (c) A fee transmittal letter may be fees in an international design applica- signed by a juristic applicant or patent tion set forth in § 1.1031 will only be ef- owner. fective for the transmittal fee [65 FR 33455, May 24, 2000, as amended at 69 (§ 1.1031(a)). An authorization to charge FR 43752, July 22, 2004; 78 FR 62395, Oct. 21, fees under § 1.16 in an international ap- 2013] plication entering the national stage under 35 U.S.C. 371 will be treated as an § 1.24 [Reserved] authorization to charge fees under § 1.25 Deposit accounts. § 1.492. An authorization to charge fees set forth in § 1.18 to a deposit account (a) For the convenience of attorneys, is subject to the provisions of § 1.311(b). and the general public in paying any An authorization to charge to a deposit fees due, in ordering services offered by account the fee for a request for reex- the Office, copies of records, etc., de- amination pursuant to § 1.510 or 1.913 posit accounts may be established in and any other fees required in a reex- the Patent and Trademark Office upon amination proceeding in a patent may payment of the fee for establishing a also be filed with the request for reex- deposit account (§ 1.21(b)(1)). A min- amination, and an authorization to imum deposit of $1,000 is required for charge to a deposit account the fee for paying any fees due or in ordering any a request for supplemental examina- services offered by the Office. However, tion pursuant to § 1.610 and any other a minimum deposit of $300 may be paid fees required in a supplemental exam- to establish a restricted subscription ination proceeding in a patent may deposit account used exclusively for also be filed with the request for sup- subscription order of patent copies as plemental examination. An authoriza- issued. At the end of each month, a de- tion to charge a fee to a deposit ac- posit account statement will be ren- count will not be considered payment dered. A remittance must be made of the fee on the date the authorization promptly upon receipt of the statement to charge the fee is effective unless suf- to cover the value of items or services charged to the account and thus re- ficient funds are present in the account store the account to its established to cover the fee. normal deposit. An amount sufficient (c) A deposit account holder may re- to cover all fees, services, copies, etc., plenish the deposit account by submit- requested must always be on deposit. ting a payment to the United States Charges to accounts with insufficient Patent and Trademark Office. A pay- funds will not be accepted. A service ment to replenish a deposit account charge (§ 1.21(b)(2)) will be assessed for must be submitted by one of the meth- each month that the balance at the end ods set forth in paragraphs (c)(1), (c)(2), of the month is below $1,000. For re- (c)(3), or (c)(4) of this section. stricted subscription deposit accounts, (1) A payment to replenish a deposit a service charge (§ 1.21(b)(3)) will be as- account may be submitted by elec- sessed for each month that the balance tronic funds transfer through the Fed- at the end of the month is below $300. eral Reserve Fedwire System, which re- (b) Filing, issue, appeal, inter- quires that the following information national-type search report, inter- be provided to the deposit account national application processing, inter- holder’s bank or financial institution: national design application fees, peti- (i) Name of the Bank, which is Treas tion, and post-issuance fees may be NYC (Treasury New York City);

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(ii) Bank Routing Code, which is account by an amount other than an 021030004; amount specifically indicated in an au- (iii) United States Patent and Trade- thorization (§ 1.25(b)), any request for mark Office account number with the refund based upon such charge must be Department of the Treasury, which is filed within two years from the date of 13100001; and the deposit account statement indi- (iv) The deposit account holder’s cating such charge, and include a copy company name and deposit account of that deposit account statement. The number. time periods set forth in this paragraph (2) A payment to replenish a deposit are not extendable. account may be submitted by elec- (c) If the Director decides not to in- tronic funds transfer over the Office’s stitute a reexamination proceeding in Internet Web site (www.uspto.gov). response to a request for reexamina- (3) A payment to replenish a deposit tion or supplemental examination, fees account may be addressed to: Director paid with the request for reexamina- of the United States Patent and Trade- tion or supplemental examination will mark Office, Attn: Deposit Accounts, be refunded or returned in accordance 2051 Jamieson Avenue, Suite 300, Alex- with paragraphs (c)(1) through (c)(3) of andria, Virginia 22314. this section. The reexamination re- (35 U.S.C. 6, Pub. L. 97–247) quester or the patent owner who requested a supplemental examination [49 FR 553, Jan. 4, 1984, as amended at 50 FR 31826, Aug. 6, 1985; 65 FR 76772, Dec. 7, 2000; 67 proceeding, as appropriate, should indi- FR 523, Jan. 4, 2002; 68 FR 14336, Mar. 25, 2003; cate the form in which any refund 69 FR 43752, July 22, 2004; 70 FR 56127, Sept. should be made (e.g., by check, elec- 26, 2005; 73 FR 47541, Aug. 14, 2008; 78 FR 62395, tronic funds transfer, credit to a de- Oct. 21, 2013; 80 FR 17955, Apr. 2, 2015] posit account). Generally, refunds will be issued in the form that the original § 1.26 Refunds. payment was provided. (a) The Director may refund any fee (1) For an ex parte reexamination re- paid by mistake or in excess of that request, the ex parte reexamination filing quired. A change of purpose after the fee paid by the reexamination re- payment of a fee, such as when a party quester, less the fee set forth in desires to withdraw a patent filing for § 1.20(c)(7), will be refunded to the re- which the fee was paid, including an quester if the Director decides not to application, an appeal, or a request for institute an ex parte reexamination an oral hearing, will not entitle a party proceeding. to a refund of such fee. The Office will (2) For an inter partes reexamination not refund amounts of twenty-five dol- request, a refund of $7,970 will be made lars or less unless a refund is specifi- to the reexamination requester if the cally requested, and will not notify the Director decides not to institute an payor of such amounts. If a party pay- inter partes reexamination proceeding. ing a fee or requesting a refund does (3) For a supplemental examination not provide the banking information request, the fee for reexamination or- necessary for making refunds by elec- dered as a result of supplemental ex- tronic funds transfer (31 U.S.C. 3332 and amination, as set forth in § 1.20(k)(2), 31 CFR part 208), or instruct the Office will be returned to the patent owner that refunds are to be credited to a de- who requested the supplemental exam- posit account, the Director may re- ination proceeding if the Director de- quire such information, or use the cides not to institute a reexamination banking information on the payment proceeding. instrument to make a refund. Any re- (35 U.S.C. 6; 15 U.S.C. 1113, 1123) fund of a fee paid by credit card will be by a credit to the credit card account [47 FR 41274, Sept. 17, 1982, as amended at 50 to which the fee was charged. FR 31826, Aug. 6, 1985; 54 FR 6902, Feb. 15, (b) Any request for refund must be 1989; 56 FR 65153, Dec. 13, 1991; 57 FR 38195, Aug. 21, 1992; 62 FR 53183, Oct. 10, 1997; 65 FR filed within two years from the date 54659, Sept. 8, 2000; 65 FR 76773, Dec. 7, 2000; the fee was paid, except as otherwise 68 FR 48289, Aug. 13, 2003; 72 FR 46836, Aug. provided in this paragraph or in 21, 2007; 74 FR 52688, Oct. 14, 2009; 77 FR 48851, § 1.28(a). If the Office charges a deposit Aug. 14, 2012]

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§ 1.27 Definition of small entities and (i) Has not assigned, granted, con- establishing status as a small entity veyed, or licensed, and is under no obli- to permit payment of small entity gation under contract or law to assign, fees; when a determination of enti- grant, convey, or license, any rights in tlement to small entity status and the invention to any person, concern, notification of loss of entitlement to small entity status are required; or organization which would not qual- fraud on the Office. ify as a person, small business concern, or a nonprofit organization; and (a) Definition of small entities. A small (ii) Is either: entity as used in this chapter means (A) A university or other institution any party (person, small business con- of higher education located in any cern, or nonprofit organization) under country; paragraphs (a)(1) through (a)(3) of this (B) An organization of the type de- section. scribed in section 501(c)(3) of the Inter- (1) Person. A person, as used in para- nal Revenue Code of 1986 (26 U.S.C. graph (c) of this section, means any in- 501(c)(3)) and exempt from taxation ventor or other individual (e.g., an in- under section 501(a) of the Internal dividual to whom an inventor has Revenue Code (26 U.S.C. 501(a)); transferred some rights in the invention) who has not assigned, granted, (C) Any nonprofit scientific or edu- conveyed, or licensed, and is under no cational organization qualified under a obligation under contract or law to as- nonprofit organization statute of a sign, grant, convey, or license, any state of this country (35 U.S.C. 201(i)); rights in the invention. An inventor or or other individual who has transferred (D) Any nonprofit organization lo- some rights in the invention to one or cated in a foreign country which would more parties, or is under an obligation qualify as a nonprofit organization to transfer some rights in the inven- under paragraphs (a)(3)(ii)(B) of this tion to one or more parties, can also section or (a)(3)(ii)(C) of this section if qualify for small entity status if all the it were located in this country. parties who have had rights in the in- (4) License to a Federal agency. (i) For vention transferred to them also qual- persons under paragraph (a)(1) of this ify for small entity status either as a section, a license to the Government person, small business concern, or non- resulting from a rights determination profit organization under this section. under Executive Order 10096 does not (2) Small business concern. A small constitute a license so as to prohibit business concern, as used in paragraph claiming small entity status. (c) of this section, means any business (ii) For small business concerns and concern that: nonprofit organizations under para- (i) Has not assigned, granted, con- graphs (a)(2) and (a)(3) of this section, a veyed, or licensed, and is under no obli- license to a Federal agency resulting gation under contract or law to assign, from a funding agreement with that grant, convey, or license, any rights in agency pursuant to 35 U.S.C. 202(c)(4) the invention to any person, concern, does not constitute a license for the or organization which would not qual- purposes of paragraphs (a)(2)(i) and ify for small entity status as a person, (a)(3)(i) of this section. small business concern, or nonprofit (5) Security Interest. A security inter- organization; and est does not involve an obligation to (ii) Meets the size standards set forth transfer rights in the invention for the in 13 CFR 121.801 through 121.805 to be purposes of paragraphs (a)(1) through eligible for reduced patent fees. Ques- (a)(3) of this section unless the security tions related to standards for a small interest is defaulted upon. business concern may be directed to: (b) Establishment of small entity status Small Business Administration, Size permits payment of reduced fees. (1) A Standards Staff, 409 Third Street, SW., small entity, as defined in paragraph Washington, DC 20416. (a) of this section, who has properly as- (3) Nonprofit Organization. A non- serted entitlement to small entity sta- profit organization, as used in para- tus pursuant to paragraph (c) of this graph (c) of this section, means any section will be accorded small entity nonprofit organization that: status by the Office in the particular

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application or patent in which entitle- (3) Assertion by payment of the small ment to small entity status was as- entity basic filing, basic transmittal, basic serted. Establishment of small entity national fee, international search fee, or status allows the payment of certain individual designation fee in an inter- reduced patent fees pursuant to 35 national design application. The pay- U.S.C. 41(h)(1). ment, by any party, of the exact (2) Submission of an original utility amount of one of the small entity basic application in compliance with the Of- filing fees set forth in § 1.16(a), (b), (c), fice electronic filing system by an ap- (d), or (e), the small entity transmittal plicant who has properly asserted enti- fee set forth in § 1.445(a)(1), the small tlement to small entity status pursu- entity international search fee set ant to paragraph (c) of this section in forth in § 1.445(a)(2) to a Receiving Of- that application allows the payment of fice other than the United States Re- a reduced filing fee pursuant to 35 ceiving Office in the exact amount es- U.S.C. 41(h)(3). tablished for that Receiving Office pur- (c) Assertion of small entity status. Any suant to PCT Rule 16, or the small en- party (person, small business concern tity basic national fee set forth in or nonprofit organization) should make § 1.492(a), will be treated as a written a determination, pursuant to para- assertion of entitlement to small enti- graph (f) of this section, of entitlement ty status even if the type of basic fil- to be accorded small entity status ing, basic transmittal, or basic na- based on the definitions set forth in tional fee is inadvertently selected in paragraph (a) of this section, and must, error. The payment, by any party, of in order to establish small entity sta- the small entity first part of the indi- tus for the purpose of paying small en- vidual designation fee for the United tity fees, actually make an assertion of States to the International Bureau entitlement to small entity status, in (§ 1.1031) will be treated as a written as- the manner set forth in paragraphs sertion of entitlement to small entity (c)(1) or (c)(3) of this section, in the ap- status. plication or patent in which such small (i) If the Office accords small entity entity fees are to be paid. status based on payment of a small en- (1) Assertion by writing. Small entity status may be established by a written tity basic filing or basic national fee assertion of entitlement to small enti- under paragraph (c)(3) of this section ty status. A written assertion must: that is not applicable to that applica- (i) Be clearly identifiable; tion, any balance of the small entity (ii) Be signed (see paragraph (c)(2) of fee that is applicable to that applica- this section); and tion will be due along with the appro- (iii) Convey the concept of entitle- priate surcharge set forth in § 1.16(f), or ment to small entity status, such as by § 1.16(g). stating that applicant is a small enti- (ii) The payment of any small entity ty, or that small entity status is enti- fee other than those set forth in para- tled to be asserted for the application graph (c)(3) of this section (whether in or patent. While no specific words or the exact fee amount or not) will not wording are required to assert small be treated as a written assertion of en- entity status, the intent to assert titlement to small entity status and small entity status must be clearly in- will not be sufficient to establish small dicated in order to comply with the as- entity status in an application or a sertion requirement. patent. (2) Parties who can sign the written as- (4) Assertion required in related, con- sertion. The written assertion can be tinuing, and reissue applications. Status signed by: as a small entity must be specifically (i) The applicant (§ 1.42 or § 1.421); established by an assertion in each re- (ii) A patent practitioner of record or lated, continuing and reissue applica- a practitioner acting in a representation in which status is appropriate and tive capacity under § 1.34; desired. Status as a small entity in one (iii) The inventor or a joint inventor, application or patent does not affect if the inventor is the applicant; or the status of any other application or (iv) The assignee. patent, regardless of the relationship of

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the applications or patents. The re- as a small entity may thereafter be filing of an application under § 1.53 as a paid in that application or patent with- continuation, divisional, or continu- out regard to a change in status until ation-in-part application (including a the issue fee is due or any maintenance continued prosecution application fee is due. under § 1.53(d)), or the filing of a reissue (2) Notification of loss of entitlement to application, requires a new assertion as small entity status is required when issue to continued entitlement to small enti- and maintenance fees are due. Notifica- ty status for the continuing or reissue tion of a loss of entitlement to small application. entity status must be filed in the appli- (d) When small entity fees can be paid. cation or patent prior to paying, or at Any fee, other than the small entity the time of paying, the earliest of the basic filing fees and the small entity issue fee or any maintenance fee due national fees of paragraph (c)(3) of this after the date on which status as a section, can be paid in the small entity small entity as defined in paragraph (a) amount only if it is submitted with, or of this section is no longer appropriate. subsequent to, the submission of a The notification that small entity sta- written assertion of entitlement to tus is no longer appropriate must be small entity status, except when re- signed by a party identified in § 1.33(b). funds are permitted by § 1.28(a). Payment of a fee in other than the (e) Only one assertion required. (1) An small entity amount is not sufficient assertion of small entity status need notification that small entity status is only be filed once in an application or no longer appropriate. patent. Small entity status, once es- (h) Fraud attempted or practiced on the tablished, remains in effect until Office. (1) Any attempt to fraudulently changed pursuant to paragraph (g)(1) of establish status as a small entity, or this section. Where an assignment of pay fees as a small entity, shall be con- rights or an obligation to assign rights sidered as a fraud practiced or at- to other parties who are small entities tempted on the Office. occurs subsequent to an assertion of small entity status, a second assertion (2) Improperly, and with intent to de- is not required. ceive, establishing status as a small en- (2) Once small entity status is with- tity, or paying fees as a small entity, drawn pursuant to paragraph (g)(2) of shall be considered as a fraud practiced this section, a new written assertion is or attempted on the Office. required to again obtain small entity [65 FR 54659, Sept. 8, 2000, as amended at 69 status. FR 56538, Sept. 21, 2004; 70 FR 3889, Jan. 27, (f) Assertion requires a determination of 2005; 77 FR 48813, Aug. 14, 2012; 78 FR 4289, entitlement to pay small entity fees. Prior Jan. 18, 2013; 80 FR 17955, Apr. 2, 2015] to submitting an assertion of entitlement to small entity status in an ap- § 1.28 Refunds when small entity sta- plication, including a related, con- tus is later established; how errors in small entity status are excused. tinuing, or reissue application, a determination of such entitlement should be (a) Refunds based on later establish- made pursuant to the requirements of ment of small entity status. A refund pur- paragraph (a) of this section. It should suant to § 1.26, based on establishment be determined that all parties holding of small entity status, of a portion of rights in the invention qualify for fees timely paid in full prior to estab- small entity status. The Office will lishing status as a small entity may generally not question any assertion of only be obtained if an assertion under small entity status that is made in ac- § 1.27(c) and a request for a refund of cordance with the requirements of this the excess amount are filed within section, but note paragraph (h) of this three months of the date of the timely section. payment of the full fee. The three- (g)(1) New determination of entitlement month time period is not extendable to small entity status is needed when issue under § 1.136. Status as a small entity is and maintenance fees are due. Once sta- waived for any fee by the failure to es- tus as a small entity has been estab- tablish the status prior to paying, at lished in an application or patent, fees the time of paying, or within three

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months of the date of payment of, the paid in error and the time the defi- full fee. ciency is paid in full, the deficiency (b) Date of payment. (1) The three- owed is equal to the amount (pre- month period for requesting a refund, viously) paid in error; pursuant to paragraph (a) of this sec- (ii) Itemization of the deficiency pay- tion, starts on the date that a full fee ment. An itemization of the total defi- has been paid; ciency payment is required. The (2) The date when a deficiency pay- itemization must include the following ment is paid in full determines the information: amount of deficiency that is due, pur- (A) Each particular type of fee that suant to paragraph (c) of this section. was erroneously paid as a small entity, (c) How errors in small entity status are (e.g., basic statutory filing fee, two- excused. If status as a small entity is month extension of time fee) along established in good faith, and fees as a with the current fee amount for a non- small entity are paid in good faith, in small entity; any application or patent, and it is (B) The small entity fee actually later discovered that such status as a paid, and when. This will permit the small entity was established in error, Office to differentiate, for example, be- or that through error the Office was tween two one-month extension of time not notified of a loss of entitlement to fees erroneously paid as a small entity small entity status as required by but on different dates; § 1.27(g)(2), the error will be excused (C) The deficiency owed amount (for upon: compliance with the separate each fee erroneously paid); and submission and itemization require- (D) The total deficiency payment ments of paragraphs (c)(1) and (c)(2) of owed, which is the sum or total of the this section, and the deficiency pay- individual deficiency owed amounts set ment requirement of paragraph (c)(2) of forth in paragraph (c)(2)(ii)(C) of this this section: section. (1) Separate submission required for (3) Failure to comply with requirements. each application or patent. Any paper If the requirements of paragraphs (c)(1) submitted under this paragraph must and (c)(2) of this section are not com- be limited to the deficiency payment plied with, such failure will either: be (all fees paid in error), required by treated as an authorization for the Of- paragraph (c)(2) of this section, for one fice to process the deficiency payment application or one patent. Where more and charge the processing fee set forth than one application or patent is in- in § 1.17(i), or result in a requirement volved, separate submissions of defi- for compliance within a one-month ciency payments (e.g., checks) and non-extendable time period under itemizations are required for each ap- § 1.136(a) to avoid the return of the fee plication or patent. See § 1.4(b). deficiency paper, at the option of the (2) Payment of deficiency owed. The de- Office. (d) ficiency owed, resulting from the pre- Payment of deficiency operates as Any defi- vious erroneous payment of small enti- notification of loss of status. ciency payment (based on a previous ty fees, must be paid. erroneous payment of a small entity (i) Calculation of the deficiency owed. fee) submitted under paragraph (c) of The deficiency owed for each previous this section will be treated under fee erroneously paid as a small entity § 1.27(g)(2) as a notification of a loss of is the difference between the current entitlement to small entity status. fee amount (for other than a small entity) on the date the deficiency is paid [65 FR 54661, Sept. 8, 2000] in full and the amount of the previous erroneous (small entity) fee payment. § 1.29 Micro entity status. The total deficiency payment owed is (a) To establish micro entity status the sum of the individual deficiency under this paragraph, the applicant owed amounts for each fee amount pre- must certify that: viously erroneously paid as a small en- (1) The applicant qualifies as a small tity. Where a fee paid in error as a entity as defined in § 1.27; small entity was subject to a fee de- (2) Neither the applicant nor the increase between the time the fee was ventor nor a joint inventor has been

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named as the inventor or a joint inven- (d) To establish micro entity status tor on more than four previously filed under this paragraph, the applicant patent applications, other than appli- must certify that: cations filed in another country, provi- (1) The applicant qualifies as a small sional applications under 35 U.S.C. entity as defined in § 1.27; and 111(b), or international applications for (2)(i) The applicant’s employer, from which the basic national fee under 35 which the applicant obtains the major- U.S.C. 41(a) was not paid; ity of the applicant’s income, is an in- (3) Neither the applicant nor the institution of higher education as defined ventor nor a joint inventor, in the cal- in section 101(a) of the Higher Edu- endar year preceding the calendar year cation Act of 1965 (20 U.S.C. 1001(a)); or in which the applicable fee is being (ii) The applicant has assigned, paid, had a gross income, as defined in granted, conveyed, or is under an obli- section 61(a) of the Internal Revenue gation by contract or law, to assign, Code of 1986 (26 U.S.C. 61(a)), exceeding grant, or convey, a license or other three times the median household in- ownership interest in the particular ap- come for that preceding calendar year, plication to such an institution of as most recently reported by the Bu- higher education. reau of the Census; and (e) Micro entity status is established (4) Neither the applicant nor the in- in an application by filing a micro en- ventor nor a joint inventor has as- tity certification in writing complying signed, granted, or conveyed, nor is with the requirements of either paragraph (a) or (d) of this section and under an obligation by contract or law signed either in compliance with to assign, grant, or convey, a license or § 1.33(b), in an international application other ownership interest in the appli- filed in a Receiving Office other than cation concerned to an entity that, in the United States Receiving Office by a the calendar year preceding the cal- person authorized to represent the ap- endar year in which the applicable fee plicant under § 1.455, or in an inter- is being paid, had a gross income, as national design application by a person defined in section 61(a) of the Internal authorized to represent the applicant Revenue Code of 1986, exceeding three under § 1.1041 before the International times the median household income for Bureau where the micro entity certifi- that preceding calendar year, as most cation is filed with the International recently reported by the Bureau of the Bureau. Status as a micro entity must Census. be specifically established in each re- (b) An applicant, inventor, or joint lated, continuing and reissue applica- inventor is not considered to be named tion in which status is appropriate and on a previously filed application for desired. Status as a micro entity in one purposes of paragraph (a)(2) of this sec- application or patent does not affect tion if the applicant, inventor, or joint the status of any other application or inventor has assigned, or is under an patent, regardless of the relationship of obligation by contract or law to assign, the applications or patents. The re- all ownership rights in the application filing of an application under § 1.53 as a as the result of the applicant’s, inven- continuation, divisional, or continu- tor’s, or joint inventor’s previous em- ation-in-part application (including a ployment. continued prosecution application (c) If an applicant’s, inventor’s, joint under § 1.53(d)), or the filing of a reissue inventor’s, or entity’s gross income in application, requires a new certifi- the preceding calendar year is not in cation of entitlement to micro entity United States dollars, the average cur- status for the continuing or reissue ap- rency exchange rate, as reported by the plication. Internal Revenue Service, during that (f) A fee may be paid in the micro en- calendar year shall be used to deter- tity amount only if it is submitted mine whether the applicant’s, inven- with, or subsequent to, the submission tor’s, joint inventor’s, or entity’s gross of a certification of entitlement to income exceeds the threshold specified micro entity status. in paragraph (a)(3) or (4) of this sec- (g) A certification of entitlement to tion. micro entity status need only be filed

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once in an application or patent. Micro (j) Any attempt to fraudulently es- entity status, once established, re- tablish status as a micro entity, or pay mains in effect until changed pursuant fees as a micro entity, shall be consid- to paragraph (i) of this section. How- ered as a fraud practiced or attempted ever, a fee may be paid in the micro en- on the Office. Improperly, and with in- tity amount only if status as a micro tent to deceive, establishing status as a entity as defined in paragraph (a) or (d) micro entity, or paying fees as a micro of this section is appropriate on the entity, shall be considered as a fraud date the fee is being paid. Where an as- practiced or attempted on the Office. signment of rights or an obligation to (k) If status as a micro entity is es- assign rights to other parties who are tablished in good faith in an applica- micro entities occurs subsequent to the tion or patent, and fees as a micro enti- filing of a certification of entitlement ty are paid in good faith in the applica- to micro entity status, a second certifi- tion or patent, and it is later discov- cation of entitlement to micro entity ered that such micro entity status ei- status is not required. ther was established in error, or that (h) Prior to submitting a certifi- the Office was not notified of a loss of cation of entitlement to micro entity entitlement to micro entity status as status in an application, including a re- required by paragraph (i) of this sec- lated, continuing, or reissue application through error, the error will be ex- tion, a determination of such entitle- cused upon compliance with the sepa- ment should be made pursuant to the rate submission and itemization re- requirements of this section. It should quirements of paragraph (k)(1) of this be determined that each applicant section and the deficiency payment re- qualifies for micro entity status under quirement of paragraph (k)(2) of this paragraph (a) or (d) of this section, and section. that any other party holding rights in (1) Any paper submitted under this the invention qualifies for small entity paragraph must be limited to the defi- status under § 1.27. The Office will gen- ciency payment (all fees paid in error) erally not question certification of en- required for a single application or pat- titlement to micro entity status that ent. Where more than one application is made in accordance with the require- or patent is involved, separate submis- ments of this section. sions of deficiency payments are re- (i) Notification of a loss of entitle- quired for each application or patent ment to micro entity status must be (see § 1.4(b)). The paper must contain an filed in the application or patent prior itemization of the total deficiency pay- to paying, or at the time of paying, any ment for the single application or pat- fee after the date on which status as a ent and include the following informa- micro entity as defined in paragraph tion: (a) or (d) of this section is no longer ap- (i) Each particular type of fee that propriate. The notification that micro was erroneously paid as a micro entity, entity status is no longer appropriate (e.g., basic statutory filing fee, two- must be signed by a party identified in month extension of time fee) along § 1.33(b). Payment of a fee in other than with the current fee amount for a the micro entity amount is not suffi- small or non-small entity, as applica- cient notification that micro entity ble; status is no longer appropriate. A noti- (ii) The micro entity fee actually fication that micro entity status is no paid, and the date on which it was paid; longer appropriate will not be treated (iii) The deficiency owed amount (for as a notification that small entity sta- each fee erroneously paid); and tus is also no longer appropriate unless (iv) The total deficiency payment it also contains a notification of loss of owed, which is the sum or total of the entitlement to small entity status individual deficiency owed amounts as under § 1.27(f)(2). Once a notification of set forth in paragraph (k)(2) of this sec- a loss of entitlement to micro entity tion. status is filed in the application or pat- (2) The deficiency owed, resulting ent, a new certification of entitlement from the previous erroneous payment to micro entity status is required to of micro entity fees, must be paid. The again obtain micro entity status. deficiency owed for each previous fee

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erroneously paid as a micro entity is § 1.32 Power of attorney. the difference between the current fee (a) Definitions. (1) Patent practitioner amount for a small entity or non-small means a registered patent attorney or entity, as applicable, on the date the registered patent agent under § 11.6. deficiency is paid in full and the (2) Power of attorney means a written amount of the previous erroneous document by which a principal author- micro entity fee payment. The total izes one or more patent practitioners deficiency payment owed is the sum of or joint inventors to act on the prin- the individual deficiency owed cipal’s behalf. amounts for each fee amount pre- (3) Principal means the applicant viously and erroneously paid as a (§ 1.42) for an application for patent and micro entity. the patent owner for a patent, includ- (3) If the requirements of paragraphs ing a patent in a supplemental exam- (k)(1) and (2) of this section are not ination or reexamination proceeding. complied with, such failure will either The principal executes a power of at- be treated at the option of the Office as torney designating one or more patent an authorization for the Office to proc- practitioners or joint inventors to act ess the deficiency payment and charge on the principal’s behalf. the processing fee set forth in § 1.17(i), (4) Revocation means the cancellation or result in a requirement for compli- by the principal of the authority pre- ance within a one-month time period viously given to a patent practitioner that is not extendable under § 1.136(a) or joint inventor to act on the prin- to avoid the return of the fee defi- cipal’s behalf. ciency payment. (5) Customer Number means a number (4) Any deficiency payment (based on that may be used to: a previous erroneous payment of a (i) Designate the correspondence ad- micro entity fee) submitted under this dress of a patent application or patent paragraph will be treated as a notifica- such that the correspondence address for the patent application, patent or tion of a loss of entitlement to micro other patent proceeding would be the entity status under paragraph (i) of address associated with the Customer this section. Number; [77 FR 75033, Dec. 19, 2012, as amended at 78 (ii) Designate the fee address (§ 1.363) FR 62396, Oct. 21, 2013; 80 FR 17955, Apr. 2, of a patent such that the fee address 2015] for the patent would be the address associated with the Customer Number; Subpart B—National Processing and Provisions (iii) Submit a list of patent practitioners such that those patent practi- PROSECUTION OF APPLICATION AND tioners associated with the Customer APPOINTMENT OF ATTORNEY OR AGENT Number would have power of attorney. (6) Patent practitioner of record means § 1.31 Applicant may be represented a patent practitioner who has been by one or more patent practitioners granted a power of attorney in an ap- or joint inventors. plication, patent, or other proceeding An applicant for patent may file and in compliance with paragraph (b) of prosecute the applicant’s own case, or this section. The phrases practitioner the applicant may give power of attor- of record and attorney or agent of ney so as to be represented by one or record also mean a patent practitioner more patent practitioners or joint in- who has been granted a power of attor- ventors, except that a juristic entity ney in an application, patent, or other proceeding in compliance with para- (e.g., organizational assignee) must be graph (b) of this section. represented by a patent practitioner (b) A power of attorney must: even if the juristic entity is the appli- (1) Be in writing; cant. The Office cannot aid in the se- (2) Name one or more representatives lection of a patent practitioner. in compliance with paragraph (c) of [77 FR 48813, Aug. 14, 2012] this section;

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(3) Give the representative power to preclude a practitioner from acting act on behalf of the principal; and pursuant to § 1.34, if applicable. (4) Be signed by the applicant for pat- [69 FR 29877, May 26, 2004, as amended at 70 ent (§ 1.42) or the patent owner. A pat- FR 56127, Sept. 26, 2005; 77 FR 48813, Aug. 14, ent owner who was not the applicant 2012; 80 FR 17956, Apr. 2, 2015] under § 1.46 must appoint any power of attorney in compliance with §§ 3.71 and § 1.33 Correspondence respecting pat- 3.73 of this chapter. ent applications, patent reexamination proceedings, and other pro- (c) A power of attorney may only ceedings. name as representative: (a) Correspondence address and daytime (1) One or more joint inventors telephone number. When filing an appli- (§ 1.45); cation, a correspondence address must (2) Those registered patent practi- be set forth in either an application tioners associated with a Customer data sheet (§ 1.76), or elsewhere, in a Number; clearly identifiable manner, in any (3) Ten or fewer patent practitioners, paper submitted with an application stating the name and registration filing. If no correspondence address is number of each patent practitioner. specified, the Office may treat the Except as provided in paragraph (c)(1) mailing address of the first named in- or (c)(2) of this section, the Office will ventor (if provided, see §§ 1.76(b)(1) and not recognize more than ten patent 1.63(b)(2)) as the correspondence ad- practitioners as being of record in an dress. The Office will direct, or other- application or patent. If a power of at- wise make available, all notices, offi- torney names more than ten patent cial letters, and other communications practitioners, such power of attorney relating to the application to the per- must be accompanied by a separate son associated with the correspondence paper indicating which ten patent prac- address. For correspondence submitted titioners named in the power of attor- via the Office’s electronic filing system, however, an electronic acknowl- ney are to be recognized by the Office edgment receipt will be sent to the sub- as being of record in the application or mitter. The Office will generally not patent to which the power of attorney engage in double correspondence with is directed. an applicant and a patent practitioner, (d) A power of attorney from a prior or with more than one patent practi- national application for which benefit tioner except as deemed necessary by is claimed under 35 U.S.C. 120, 121, the Director. If more than one cor- 365(c), or 386(c) in a continuing applica- respondence address is specified, the tion may have effect in the continuing Office will select one of the specified application if a copy of the power of at- addresses for use as the correspondence torney from the prior application is address and, if given, may select the filed in the continuing application un- address associated with a Customer less: Number over a typed correspondence (1) The power of attorney was grant- address. For the party to whom cor- ed by the inventor; and respondence is to be addressed, a day- (2) The continuing application names time telephone number should be sup- an inventor who was not named as an plied in a clearly identifiable manner inventor in the prior application. and may be changed by any party who (e) If the power of attorney was may change the correspondence address. The correspondence address may granted by the originally named inven- be changed by the parties set forth in tive entity, and an added inventor pur- paragraph (b)(1) or (b)(3) of this sec- suant to § 1.48 does not provide a power tion. Prior to the appointment of any of attorney consistent with the power power of attorney under § 1.32(b), the of attorney granted by the originally correspondence address may also be named inventive entity, the addition of changed by any patent practitioner the inventor results in the loss of that named in the application transmittal power of attorney upon grant of the papers who acts in a representative ca- § 1.48 request. This provision does not pacity under the provisions of § 1.34.

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(b) Amendments and other papers. wise, the Office may not recognize the Amendments and other papers, except change of correspondence address ef- for written assertions pursuant to fected during the prosecution of the § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the prior application. application must be signed by: (g) A patent practitioner acting in a (1) A patent practitioner of record; representative capacity whose cor- (2) A patent practitioner not of respondence address is the correspond- record who acts in a representative ca- ence address of record in an application pacity under the provisions of § 1.34; or may change the correspondence ad- (3) The applicant (§ 1.42). Unless oth- dress after the patent has issued, pro- erwise specified, all papers submitted vided that the change of correspond- on behalf of a juristic entity must be ence address is accompanied by a state- signed by a patent practitioner. ment that notice has been given to the (c) All notices, official letters, and patentee or owner. other communications for the patent owner or owners in a reexamination or [36 FR 12617, July 2, 1971, as amended at 46 supplemental examination proceeding FR 29181, May 29, 1981; 49 FR 34724, Aug. 31, will be directed to the correspondence 1984; 50 FR 5171, Feb. 6, 1985; 62 FR 53184, Oct. 10, 1997; 65 FR 54661, Sept. 8, 2000; 69 FR 29877, address in the patent file. Amendments May 26, 2004; 69 FR 35452, June 24, 2004; 70 FR filed in a reexamination proceeding, 3889, Jan. 27, 2005; 70 FR 56127, Sept. 26, 2005; and other papers filed in a reexamina- 72 FR 2776, Jan. 23, 2007; 72 FR 18904, Apr. 16, tion or supplemental examination pro- 2007; 77 FR 48814, Aug. 14, 2012; 78 FR 62396, ceeding, on behalf of the patent owner Oct. 21, 2013] must be signed by the patent owner, or if there is more than one owner by all § 1.34 Acting in a representative ca- the owners, or by an attorney or agent pacity. of record in the patent file, or by a reg- When a patent practitioner acting in istered attorney or agent not of record a representative capacity appears in who acts in a representative capacity person or signs a paper in practice be- under the provisions of § 1.34. Double fore the United States Patent and correspondence with the patent owner Trademark Office in a patent case, his or owners and the patent owner’s attor- or her personal appearance or signa- ney or agent, or with more than one at- ture shall constitute a representation torney or agent, will not be under- to the United States Patent and Trade- taken. mark Office that under the provisions (d) A ‘‘correspondence address’’ or of this subchapter and the law, he or change thereto may be filed with the she is authorized to represent the par- Patent and Trademark Office during ticular party on whose behalf he or she the enforceable life of the patent. The acts. In filing such a paper, the patent ‘‘correspondence address’’ will be used practitioner must set forth his or her in any correspondence relating to registration number, his or her name maintenance fees unless a separate and signature. Further proof of author- ‘‘fee address’’ has been specified. See ity to act in a representative capacity § 1.363 for ‘‘fee address’’ used solely for may be required. maintenance fee purposes. (e) A change of address filed in a pat- [70 FR 56127, Sept. 26, 2005] ent application or patent does not change the address for a patent practi- § 1.36 Revocation of power of attorney; tioner in the roster of patent attorneys withdrawal of patent attorney or and agents. See § 11.11 of this title. agent. (f) Where application papers from a (a) A power of attorney, pursuant to prior application are used in a con- § 1.32(b), may be revoked at any stage tinuing application and the correspond- in the proceedings of a case by the ap- ence address was changed during the plicant or patent owner. A power of at- prosecution of the prior application, an torney to the patent practitioners as- application data sheet or separate sociated with a Customer Number will paper identifying the correspondence be treated as a request to revoke any address to be used for the continuing powers of attorney previously given. application must be submitted. Other- Fewer than all of the applicants (or

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fewer than all patent owners in a sup- inventor for any invention claimed in plemental examination or reexamina- the application. tion proceeding) may revoke the power (b) The inventorship of a nonprovi- of attorney only upon a showing of suf- sional application under 35 U.S.C. ficient cause, and payment of the peti- 111(a) is the inventor or joint inventors tion fee set forth in § 1.17(f). A patent set forth in the application data sheet practitioner will be notified of the rev- in accordance with § 1.76 filed before or ocation of the power of attorney. concurrently with the inventor’s oath Where power of attorney is given to the or declaration. If an application data patent practitioners associated with a sheet is not filed before or concur- Customer Number (§ 1.32(c)(2)), the rently with the inventor’s oath or dec- practitioners so appointed will also be laration, the inventorship is the inven- notified of the revocation of the power tor or joint inventors set forth in the of attorney when the power of attorney inventor’s oath or declaration, except to all of the practitioners associated as provided for in §§ 1.53(d)(4) and with the Customer Number is revoked. 1.63(d). Once an application data sheet The notice of revocation will be mailed or the inventor’s oath or declaration is to the correspondence address for the filed in a nonprovisional application, application (§ 1.33) in effect before the any correction of inventorship must be revocation. An assignment will not of pursuant to § 1.48. If neither an applica- itself operate as a revocation of a tion data sheet nor the inventor’s oath power previously given, but the as- or declaration is filed during the pend- signee may become the applicant under ency of a nonprovisional application, § 1.46(c) and revoke any previous power the inventorship is the inventor or of attorney and grant a power of attor- joint inventors set forth in the applica- ney as provided in § 1.32(b). tion papers filed pursuant to § 1.53(b), (b) A registered patent attorney or unless the applicant files a paper, in- patent agent who has been given a cluding the processing fee set forth in power of attorney pursuant to § 1.32(b) § 1.17(i), supplying the name or names may withdraw as attorney or agent of of the inventor or joint inventors. record upon application to and ap- (c) The inventorship of a provisional proval by the Director. The applicant application is the inventor or joint in- or patent owner will be notified of the ventors set forth in the cover sheet as withdrawal of the registered patent at- prescribed by § 1.51(c)(1). Once a cover torney or patent agent. Where power of sheet as prescribed by § 1.51(c)(1) is filed attorney is given to the patent practi- in a provisional application, any cor- tioners associated with a Customer rection of inventorship must be pursu- Number, a request to delete all of the ant to § 1.48. If a cover sheet as pre- patent practitioners associated with scribed by § 1.51(c)(1) is not filed during the Customer Number may not be the pendency of a provisional applica- granted if an applicant has given power tion, the inventorship is the inventor of attorney to the patent practitioners or joint inventors set forth in the ap- associated with the Customer Number plication papers filed pursuant to in an application that has an Office ac- § 1.53(c), unless applicant files a paper tion to which a reply is due, but insuf- including the processing fee set forth ficient time remains for the applicant in § 1.17(q), supplying the name or to file a reply. See § 41.5 of this title for names of the inventor or joint inven- withdrawal during proceedings before tors. the Patent Trial and Appeal Board. (d) In a nonprovisional application [69 FR 49997, Aug. 12, 2004, as amended at 70 under 35 U.S.C. 111(a) filed without an FR 56128, Sept. 26, 2005; 77 FR 46624, Aug. 6, application data sheet or the inventor’s 2012; 77 FR 48814, Aug. 14, 2012] oath or declaration, or in a provisional application filed without a cover sheet WHO MAY APPLY FOR A PATENT as prescribed by § 1.51(c)(1), the name and residence of each person believed § 1.41 Inventorship. to be an actual inventor should be pro- (a) An application must include, or vided when the application papers pur- be amended to include, the name of the suant to § 1.53(b) or § 1.53(c) are filed.

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(e) The inventorship of an inter- (e) The Office may require additional national application entering the na- information where there is a question tional stage under 35 U.S.C. 371 is the concerning ownership or interest in an inventor or joint inventors set forth in application, and a showing may be re- the application data sheet in accord- quired from the person filing the appli- ance with § 1.76 filed with the initial cation that the filing was authorized submission under 35 U.S.C. 371. Unless where such authorization comes into the initial submission under 35 U.S.C. question. 371 is accompanied by an application [77 FR 48815, Aug. 14, 2012] data sheet in accordance with § 1.76 setting forth the inventor or joint inven- § 1.43 Application for patent by a legal tors, the inventorship is the inventor representative of a deceased or le- or joint inventors set forth in the gally incapacitated inventor. international application, which in- If an inventor is deceased or under cludes any change effected under PCT legal incapacity, the legal representa- Rule 92 bis. tive of the inventor may make an ap- (f) The inventorship of an inter- plication for patent on behalf of the in- national design application designating ventor. If an inventor dies during the the United States is the creator or cre- time intervening between the filing of ators set forth in the publication of the the application and the granting of a international registration under Hague patent thereon, the letters patent may Agreement Article 10(3). Any correc- be issued to the legal representative tion of inventorship must be pursuant upon proper intervention. See § 1.64 con- to § 1.48. cerning the execution of a substitute [77 FR 48814, Aug. 14, 2012, as amended at 80 statement by a legal representative in FR 17956, Apr. 2, 2015] lieu of an oath or declaration.

§ 1.42 Applicant for patent. [77 FR 48815, Aug. 14, 2012] (a) The word ‘‘applicant’’ when used § 1.44 [Reserved] in this title refers to the inventor or all of the joint inventors, or to the per- § 1.45 Application for patent by joint son applying for a patent as provided in inventors. §§ 1.43, 1.45, or 1.46. (a) Joint inventors must apply for a (b) If a person is applying for a pat- patent jointly, and each must make an ent as provided in § 1.46, the word ‘‘ap- inventor’s oath or declaration as re- plicant’’ refers to the assignee, the per- quired by § 1.63, except as provided for son to whom the inventor is under an in § 1.64. If a joint inventor refuses to obligation to assign the invention, or join in an application for patent or the person who otherwise shows suffi- cannot be found or reached after dili- cient proprietary interest in the mat- gent effort, the other joint inventor or ter, who is applying for a patent under inventors may make the application § 1.46 and not the inventor. for patent on behalf of themselves and (c) If fewer than all joint inventors the omitted inventor. See § 1.64 con- are applying for a patent as provided in cerning the execution of a substitute § 1.45, the phrase ‘‘the applicant’’ statement by the other joint inventor means the joint inventors who are ap- or inventors in lieu of an oath or dec- plying for the patent without the omit- laration. ted inventor(s). (b) Inventors may apply for a patent (d) Any person having authority may jointly even though: deliver an application and fees to the (1) They did not physically work to- Office on behalf of the applicant. How- gether or at the same time; ever, an oath or declaration, or sub- (2) Each inventor did not make the stitute statement in lieu of an oath or same type or amount of contribution; declaration, may be executed only in or accordance with § 1.63 or 1.64, a cor- (3) Each inventor did not make a con- respondence address may be provided tribution to the subject matter of only in accordance with § 1.33(a), and every claim of the application. amendments and other papers must be (c) If multiple inventors are named in signed in accordance with § 1.33(b). a nonprovisional application, each

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named inventor must have made a con- (1) If the applicant is the assignee or tribution, individually or jointly, to a person to whom the inventor is under the subject matter of at least one an obligation to assign the invention, claim of the application and the appli- documentary evidence of ownership cation will be considered to be a joint (e.g., assignment for an assignee, em- application under 35 U.S.C. 116. If mul- ployment agreement for a person to tiple inventors are named in a provi- whom the inventor is under an obliga- sional application, each named invention to assign the invention) should be tor must have made a contribution, in- recorded as provided for in part 3 of dividually or jointly, to the subject this chapter no later than the date the matter disclosed in the provisional ap- issue fee is paid in the application. plication and the provisional applica- (2) If the applicant is a person who tion will be considered to be a joint ap- otherwise shows sufficient proprietary plication under 35 U.S.C. 116. interest in the matter, such applicant [77 FR 48815, Aug. 14, 2012] must submit a petition including: (i) The fee set forth in § 1.17(g); § 1.46 Application for patent by an as- (ii) A showing that such person has signee, obligated assignee, or a per- sufficient proprietary interest in the son who otherwise shows sufficient matter; and proprietary interest in the matter. (iii) A statement that making the ap- (a) A person to whom the inventor plication for patent by a person who has assigned or is under an obligation otherwise shows sufficient proprietary to assign the invention may make an interest in the matter on behalf of and application for patent. A person who as agent for the inventor is appropriate otherwise shows sufficient proprietary to preserve the rights of the parties. interest in the matter may make an (c)(1) Correction or update in the name application for patent on behalf of and of the applicant. Any request to correct as agent for the inventor on proof of or update the name of the applicant the pertinent facts and a showing that under this section must include an ap- such action is appropriate to preserve plication data sheet under § 1.76 speci- the rights of the parties. fying the correct or updated name of (b) If an application under 35 U.S.C. the applicant in the applicant informa- 111 is made by a person other than the tion section (§ 1.76(b)(7)) in accordance inventor under paragraph (a) of this with § 1.76(c)(2). A change in the name section, the application must contain of the applicant recorded pursuant to an application data sheet under § 1.76 Hague Agreement Article 16(1)(ii) will specifying in the applicant information be effective to change the name of the section (§ 1.76(b)(7)) the assignee, person applicant in a nonprovisional inter- to whom the inventor is under an obli- national design application. gation to assign the invention, or person who otherwise shows sufficient pro- (2) Change in the applicant. Any re- prietary interest in the matter. If an quest to change the applicant under application entering the national stage this section after an original applicant under 35 U.S.C. 371, or a nonprovisional has been specified must include an ap- international design application, is application data sheet under § 1.76 speci- plied for by a person other than the in- fying the applicant in the applicant inventor under paragraph (a) of this sec- formation section (§ 1.76(b)(7)) in action, the assignee, person to whom the cordance with § 1.76(c)(2) and comply inventor is under an obligation to as- with §§ 3.71 and 3.73 of this title. sign the invention, or person who oth- (d) Even if the whole or a part inter- erwise shows sufficient proprietary in- est in the invention or in the patent to terest in the matter must have been be issued is assigned or obligated to be identified as the applicant for the assigned, an oath or declaration must United States in the international be executed by the actual inventor or stage of the international application each actual joint inventor, except as or as the applicant in the publication provided for in § 1.64. See § 1.64 con- of the international registration under cerning the execution of a substitute Hague Agreement Article 10(3). statement by an assignee, person to

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whom the inventor is under an obliga- or change the inventorship is due sole- tion to assign the invention, or a per- ly to the cancelation of claims in the son who otherwise shows sufficient pro- application. prietary interest in the matter. (d) Provisional application. Once a (e) If a patent is granted on an appli- cover sheet as prescribed by § 1.51(c)(1) cation filed under this section by a per- is filed in a provisional application, son other than the inventor, the patent any request to correct or change the shall be granted to the real party in in- inventorship must include: terest. Otherwise, the patent may be (1) A request, signed by a party set issued to the assignee or jointly to the forth in § 1.33(b), to correct the inventor and the assignee as provided inventorship that identifies each inven- in § 3.81. Where a real party in interest tor by his or her legal name; and has filed an application under § 1.46, the (2) The processing fee set forth in applicant shall notify the Office of any § 1.17(q). change in the real party in interest no (e) Additional information may be re- later than payment of the issue fee. quired. The Office may require such The Office will treat the absence of other information as may be deemed such a notice as an indication that appropriate under the particular cir- there has been no change in the real cumstances surrounding the correction party in interest. of inventorship. (f) The Office may publish notice of (f) Correcting or updating the name of the filing of the application by a person an inventor: Any request to correct or who otherwise shows sufficient propri- update the name of the inventor or a etary interest in the Official Gazette. joint inventor, or the order of the names of joint inventors, in a non- [77 FR 48815, Aug. 14, 2012, as amended at 80 provisional application must include: FR 17956, Apr. 2, 2015] (1) An application data sheet in accordance with § 1.76 that identifies each § 1.47 [Reserved] inventor by his or her legal name in § 1.48 Correction of inventorship pur- the desired order; and suant to 35 U.S.C. 116 or correction (2) The processing fee set forth in of the name or order of names in a § 1.17(i). patent application, other than a re- (g) Reissue applications not covered. issue application. The provisions of this section do not (a) Nonprovisional application: Any re- apply to reissue applications. See quest to correct or change the §§ 1.171 and 1.175 for correction of inventorship once the inventorship has inventorship in a patent via a reissue been established under § 1.41 must in- application. clude: (h) Correction of inventorship in patent. (1) An application data sheet in ac- See § 1.324 for correction of inventorship cordance with § 1.76 that identifies each in a patent. inventor by his or her legal name; and (i) Correction of inventorship in an in- (2) The processing fee set forth in terference or contested case before the § 1.17(i). Patent Trial and Appeal Board. In an in- (b) Inventor’s oath or declaration for terference under part 41, subpart D, of added inventor: An oath or declaration this title, a request for correction of as required by § 1.63, or a substitute inventorship in an application must be statement in compliance with § 1.64, in the form of a motion under will be required for any actual inventor § 41.121(a)(2) of this title. In a contested who has not yet executed such an oath case under part 42, subpart D, of this or declaration. title, a request for correction of (c) Any request to correct or change inventorship in an application must be the inventorship under paragraph (a) of in the form of a motion under § 42.22 of this section filed after the Office action this title. The motion under on the merits has been given or mailed § 41.121(a)(2) or 42.22 of this title must in the application must also be accom- comply with the requirements of para- panied by the fee set forth in § 1.17(d), graph (a) of this section. unless the request is accompanied by a [77 FR 48816, Aug. 14, 2012, as amended at 78 statement that the request to correct FR 4289, Jan. 18, 2013]

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THE APPLICATION statement may be filed in a provisional application. § 1.51 General requisites of an application. [62 FR 53185, Oct. 10, 1997, as amended at 65 FR 54664, Sept. 8, 2000; 68 FR 14336, Mar. 25, (a) Applications for patents must be 2003; 70 FR 3889, Jan. 27, 2005; 77 FR 46624, made to the Director of the United Aug. 6, 2012; 77 FR 48816, Aug. 14, 2012; 78 FR States Patent and Trademark Office. 62396, Oct. 21, 2013] An application transmittal letter limited to the transmittal of the docu- § 1.52 Language, paper, writing, mar- ments and fees comprising a patent ap- gins, compact disc specifications. plication under this section may be (a) Papers that are to become a part of signed by a juristic applicant or patent the permanent United States Patent and owner. Trademark Office records in the file of a (b) A complete application filed patent application, or a reexamination or under § 1.53(b) or § 1.53(d) comprises: supplemental examination proceeding. (1) (1) A specification as prescribed by 35 All papers, other than drawings, that U.S.C. 112, including a claim or claims, are submitted on paper or by facsimile see §§ 1.71 to 1.77; transmission, and are to become a part (2) The inventor’s oath or declara- of the permanent United States Patent tion, see §§ 1.63 and 1.64; and Trademark Office records in the (3) Drawings, when necessary, see file of a patent application or reexam- §§ 1.81 to 1.85; and ination or supplemental examination (4) The prescribed filing fee, search proceeding, must be on sheets of paper fee, examination fee, and application that are the same size, not perma- size fee, see § 1.16. nently bound together, and: (c) A complete provisional applica- (i) Flexible, strong, smooth, non- tion filed under § 1.53(c) comprises: shiny, durable, and white; (ii) Either 21.0 cm by 29.7 cm (DIN (1) A cover sheet identifying: size A4) or 21.6 cm by 27.9 cm (81⁄2 by 11 (i) The application as a provisional inches), with each sheet including a top application, margin of at least 2.0 cm (3⁄4 inch), a (ii) The name or names of the inven- left side margin of at least 2.5 cm (1 tor or inventors, (see § 1.41(a)(2)), inch), a right side margin of at least 2.0 (iii) The residence of each named in- cm (3⁄4 inch), and a bottom margin of at ventor, least 2.0 cm (3⁄4 inch); (iv) The title of the invention, (iii) Written on only one side in por- (v) The name and registration num- trait orientation; ber of the attorney or agent (if applica- (iv) Plainly and legibly written ei- ble), ther by a typewriter or machine print- (vi) The docket number used by the er in permanent dark ink or its equiva- person filing the application to iden- lent; and tify the application (if applicable), (v) Presented in a form having suffi- (vii) The correspondence address, and cient clarity and contrast between the (viii) The name of the U.S. Govern- paper and the writing thereon to per- ment agency and Government contract mit the direct reproduction of readily number (if the invention was made by legible copies in any number by use of an agency of the U.S. Government or photographic, electrostatic, photo-off- under a contract with an agency of the set, and microfilming processes and U.S. Government); electronic capture by use of digital im- (2) A specification as prescribed by 35 aging and optical character recogni- U.S.C. 112(a), see § 1.71; tion. (3) Drawings, when necessary, see (2) All papers that are submitted on §§ 1.81 to 1.85; and paper or by facsimile transmission and (4) The prescribed filing fee and ap- are to become a part of the permanent plication size fee, see § 1.16. records of the United States Patent (d) Applicants are encouraged to file and Trademark Office should have no an information disclosure statement in holes in the sheets as submitted. nonprovisional applications. See § 1.97 (3) The provisions of this paragraph and § 1.98. No information disclosure and paragraph (b) of this section do not

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apply to the pre-printed information on (3) The claim or claims must com- paper forms provided by the Office, or mence on a separate physical sheet or to the copy of the patent submitted on electronic page (§ 1.75(h)). paper in double column format as the (4) The abstract must commence on a specification in a reissue application or separate physical sheet or electronic request for reexamination. page or be submitted as the first page (4) See § 1.58 for chemical and mathe- of the patent in a reissue application or matical formulae and tables, and § 1.84 reexamination or supplemental exam- for drawings. ination proceeding (§ 1.72(b)). (5) Papers that are submitted elec- (5) Other than in a reissue applica- tronically to the Office must be for- tion or a reexamination or supple- matted and transmitted in compliance mental examination proceeding, the with the Office’s electronic filing sys- pages of the specification including tem requirements. claims and abstract must be numbered (b) The application (specification, in- consecutively, starting with 1, the cluding the claims, drawings, and the in- numbers being centrally located above ventor’s oath or declaration) or reexam- or preferably, below, the text. ination or supplemental examination pro- (6) Other than in a reissue applica- ceeding, any amendments to the application or reexamination or supplemental tion or reexamination proceeding, or any examination proceeding, the para- corrections to the application, or reexam- graphs of the specification, other than ination or supplemental examination pro- in the claims or abstract, may be num- ceeding. (1) The application or pro- bered at the time the application is ceeding and any amendments or correc- filed, and should be individually and tions to the application (including any consecutively numbered using Arabic translation submitted pursuant to numerals, so as to unambiguously iden- paragraph (d) of this section) or pro- tify each paragraph. The number ceeding, except as provided for in § 1.69 should consist of at least four numerals and paragraph (d) of this section, must: enclosed in square brackets, including (i) Comply with the requirements of leading zeros (e.g., [0001]). The numbers paragraph (a) of this section; and and enclosing brackets should appear (ii) Be in the English language or be to the right of the left margin as the accompanied by a translation of the first item in each paragraph, before the application and a translation of any first word of the paragraph, and should corrections or amendments into the be highlighted in bold. A gap, equiva- English language together with a lent to approximately four spaces, statement that the translation is accu- should follow the number. Nontext ele- rate. ments (e.g., tables, mathematical or (2) The specification (including the chemical formulae, chemical struc- abstract and claims) for other than re- tures, and sequence data) are consid- issue applications and reexamination ered part of the numbered paragraph or supplemental examination pro- around or above the elements, and ceedings, and any amendments for ap- should not be independently numbered. plications (including reissue applica- If a nontext element extends to the left tions) and reexamination proceedings margin, it should not be numbered as a to the specification, except as provided separate and independent paragraph. A for in §§ 1.821 through 1.825, must have: list is also treated as part of the para- (i) Lines that are 11⁄2 or double graph around or above the list, and spaced; should not be independently numbered. (ii) Text written in a nonscript type Paragraph or section headers (titles), font (e.g., Arial, Times Roman, or Cou- whether abutting the left margin or rier, preferably a font size of 12) let- centered on the page, are not consid- tering style having capital letters ered paragraphs and should not be which should be at least 0.3175 cm. numbered. (0.125 inch) high, but may be no smaller (c) Interlineation, erasure, cancella- than 0.21 cm. (0.08 inch) high (e.g., a tion, or other alteration of the applica- font size of 6); and tion papers may be made before or (iii) Only a single column of text. after the signing of the inventor’s oath

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or declaration referring to those appli- Memory (CD–ROM) or a Compact Disc- cation papers, provided that the state- Recordable (CD–R) in compliance with ments in the inventor’s oath or dec- this paragraph. A CD–ROM is a ‘‘read- laration pursuant to § 1.63 remain ap- only’’ medium on which the data is plicable to those application papers. A pressed into the disc so that it cannot substitute specification (§ 1.125) may be be changed or erased. A CD–R is a required if the application papers do ‘‘write once’’ medium on which once not comply with paragraphs (a) and (b) the data is recorded, it is permanent of this section. and cannot be changed or erased. (d) A nonprovisional or provisional (3)(i) Each compact disc must con- application under 35 U.S.C. 111 may be form to the International Organization in a language other than English. for Standardization (ISO) 9660 stand- (1) Nonprovisional application. If a ard, and the contents of each compact nonprovisional application under 35 disc must be in compliance with the U.S.C. 111(a) is filed in a language American Standard Code for Informa- other than English, an English lan- tion Interchange (ASCII). guage translation of the non-English (ii) Each compact disc must be en- language application, a statement that closed in a hard compact disc case the translation is accurate, and the within an unsealed padded and protec- processing fee set forth in § 1.17(i) are tive mailing envelope and accompanied required. If these items are not filed by a transmittal letter on paper in ac- with the application, the applicant will cordance with paragraph (a) of this sec- be notified and given a period of time tion. The transmittal letter must list within which they must be filed in for each compact disc the machine for- order to avoid abandonment. mat (e.g., IBM–PC, Macintosh), the op- (2) Provisional application. If a provi- erating system compatibility (e.g., MS– sional application under 35 U.S.C. DOS, MS-Windows, Macintosh, Unix), a 111(b) is filed in a language other than list of files contained on the compact English, an English language trans- disc including their names, sizes in lation of the non-English language pro- bytes, and dates of creation, plus any visional application will not be re- other special information that is nec- quired in the provisional application. essary to identify, maintain, and inter- See § 1.78(a) for the requirements for pret (e.g., tables in landscape orienta- claiming the benefit of such provi- tion should be identified as landscape sional application in a nonprovisional orientation or be identified when in- application. quired about) the information on the (e) Electronic documents that are to be- compact disc. Compact discs submitted come part of the permanent United States to the Office will not be returned to the Patent and Trademark Office records in applicant. the file of a patent application, or reexam- (4) Any compact disc must be sub- ination or supplemental examination pro- mitted in duplicate unless it contains ceeding. (1) The following documents only the ‘‘Sequence Listing’’ in com- may be submitted to the Office on a puter readable form required by compact disc in compliance with this § 1.821(e). The compact disc and dupli- paragraph: cate copy must be labeled ‘‘Copy 1’’ and (i) A computer program listing (see ‘‘Copy 2,’’ respectively. The trans- § 1.96); mittal letter which accompanies the (ii) A ‘‘Sequence Listing’’ (submitted compact disc must include a statement under § 1.821(c)); or that the two compact discs are iden- (iii) Any individual table (see § 1.58) if tical. In the event that the two com- the table is more than 50 pages in pact discs are not identical, the Office length, or if the total number of pages will use the compact disc labeled of all the tables in an application ex- ‘‘Copy 1’’ for further processing. Any ceeds 100 pages in length, where a table amendment to the information on a page is a page printed on paper in con- compact disc must be by way of a re- formance with paragraph (b) of this placement compact disc in compliance section and § 1.58(c). with this paragraph containing the (2) A compact disc as used in this substitute information, and must be part means a Compact Disc-Read Only accompanied by a statement that the

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replacement compact disc contains no § 1.821(c) or (e), and any computer pro- new matter. The compact disc and copy gram listing filed in an electronic me- must be labeled ‘‘COPY 1 REPLACE- dium in compliance with §§ 1.52(e) and MENT MM/DD/YYYY’’ (with the 1.96, are submitted in whole or in part month, day and year of creation indi- on an electronic medium other than cated), and ‘‘COPY 2 REPLACEMENT the Office electronic filing system, MM/DD/YYYY,’’ respectively. each three kilobytes of content sub- (5) The specification must contain an mitted on an electronic medium shall incorporation-by-reference of the ma- be counted as a sheet of paper. terial on the compact disc in a separate (2) Except as otherwise provided in paragraph (§ 1.77(b)(5)), identifying each this paragraph, the paper size equiva- compact disc by the names of the files lent of the specification and drawings contained on each of the compact discs, of an application submitted via the Of- their date of creation and their sizes in fice electronic filing system will be bytes. The Office may require appli- considered to be seventy-five percent of cant to amend the specification to in- the number of sheets of paper present clude in the paper portion any part of in the specification and drawings of the the specification previously submitted application when entered into the Of- on compact disc. fice file wrapper after being rendered (6) A compact disc must also be la- by the Office electronic filing system beled with the following information: for purposes of determining the appli- (i) The name of each inventor (if cation size fee required by § 1.16(s). Any known); sequence listing in compliance with (ii) Title of the invention; § 1.821(c) or (e), and any computer pro- (iii) The docket number, or applica- gram listing in compliance with § 1.96, tion number if known, used by the per- submitted via the Office electronic fil- son filing the application to identify ing system will be excluded when de- the application; termining the application size fee re- (iv) A creation date of the compact quired by § 1.16(s) if the listing is sub- disc; mitted in ASCII text as part of an asso- (v) If multiple compact discs are sub- ciated file. mitted, the label shall indicate their (Pub. L. 94–131, 89 Stat. 685; 35 U.S.C. 6, Pub. order (e.g., ‘‘1 of X’’); and L. 97–247; 15 U.S.C. 1113, 1123) (vi) An indication that the disc is [43 FR 20462, May 11, 1978] ‘‘Copy 1’’ or ‘‘Copy 2’’ of the submission. See paragraph (b)(4) of this sec- EDITORIAL NOTE: For FEDERAL REGISTER citations affecting § 1.52, see the List of CFR tion. Sections Affected, which appears in the (7) If a file is unreadable on both cop- Finding Aids section of the printed volume ies of the disc, the unreadable file will and at www.govinfo.gov. be treated as not having been submitted. A file is unreadable if, for ex- § 1.53 Application number, filing date, ample, it is of a format that does not and completion of application. comply with the requirements of para- (a) Application number. Any papers re- graph (e)(3) of this section, it is cor- ceived in the Patent and Trademark rupted by a computer virus, or it is Office which purport to be an applica- written onto a defective compact disc. tion for a patent will be assigned an ap- (f)(1) Any sequence listing in an elec- plication number for identification tronic medium in compliance with purposes. §§ 1.52(e) and 1.821(c) or (e), and any (b) Application filing requirements— computer program listing filed in an Nonprovisional application. The filing electronic medium in compliance with date of an application for patent filed §§ 1.52(e) and 1.96, will be excluded when under this section, other than an appli- determining the application size fee re- cation for a design patent or a provi- quired by § 1.16(s) or § 1.492(j). For pur- sional application under paragraph (c) poses of determining the application of this section, is the date on which a size fee required by § 1.16(s) or § 1.492(j), specification, with or without claims, for an application the specification and is received in the Office. The filing date drawings of which, excluding any se- of an application for a design patent quence listing in compliance with filed under this section, except for a

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continued prosecution application sion must be accompanied by the proc- under paragraph (d) of this section, is essing fee set forth in § 1.17(q) and be the date on which the specification as filed prior to the earliest of: prescribed by 35 U.S.C. 112, including at (i) Abandonment of the application least one claim, and any required draw- filed under paragraph (b) of this sec- ings are received in the Office. No new tion; matter may be introduced into an ap- (ii) Payment of the issue fee on the plication after its filing date. A con- application filed under paragraph (b) of tinuing application, which may be a this section; or continuation, divisional, or continu- (iii) Expiration of twelve months ation-in-part application, may be filed after the filing date of the application under the conditions specified in 35 filed under paragraph (b) of this sec- U.S.C. 120, 121, 365(c), or 386(c) and tion. § 1.78. (3) A provisional application filed (1) A continuation or divisional appli- under paragraph (c) of this section may cation that names as inventors the be converted to a nonprovisional appli- same or fewer than all of the inventors cation filed under paragraph (b) of this named in the prior application may be section and accorded the original filing filed under this paragraph or paragraph date of the provisional application. The (d) of this section. conversion of a provisional application (2) A continuation-in-part applica- to a nonprovisional application will tion (which may disclose and claim not result in either the refund of any subject matter not disclosed in the fee properly paid in the provisional ap- prior application) or a continuation or plication or the application of any such divisional application naming an in- fee to the filing fee, or any other fee, ventor not named in the prior applica- for the nonprovisional application. tion must be filed under this para- Conversion of a provisional application graph. to a nonprovisional application under (c) Application filing requirements— this paragraph will result in the term Provisional application. The filing date of any patent to issue from the applica- of a provisional application is the date tion being measured from at least the on which a specification, with or with- filing date of the provisional applica- out claims, is received in the Office. No tion for which conversion is requested. amendment, other than to make the Thus, applicants should consider avoid- provisional application comply with ing this adverse patent term impact by the patent statute and all applicable filing a nonprovisional application regulations, may be made to the provi- claiming the benefit of the provisional sional application after the filing date application under 35 U.S.C. 119(e), rath- of the provisional application. er than converting the provisional ap- (1) A provisional application must plication into a nonprovisional applica- also include the cover sheet required tion pursuant to this paragraph. A re- by § 1.51(c)(1), which may be an applica- quest to convert a provisional application data sheet (§ 1.76), or a cover letter tion to a nonprovisional application identifying the application as a provi- must be accompanied by the fee set sional application. Otherwise, the ap- forth in § 1.17(i) and an amendment in- plication will be treated as an applica- cluding at least one claim as prescribed tion filed under paragraph (b) of this by 35 U.S.C. 112(b), unless the provi- section. sional application under paragraph (c) (2) An application for patent filed of this section otherwise contains at under paragraph (b) of this section may least one claim as prescribed by 35 be converted to a provisional applica- U.S.C. 112(b). The nonprovisional appli- tion and be accorded the original filing cation resulting from conversion of a date of the application filed under provisional application must also in- paragraph (b) of this section. The grant clude the filing fee, search fee, and ex- of such a request for conversion will amination fee for a nonprovisional ap- not entitle applicant to a refund of the plication, and the surcharge required fees that were properly paid in the ap- by § 1.16(f) if either the basic filing fee plication filed under paragraph (b) of for a nonprovisional application or the this section. Such a request for conver- inventor’s oath or declaration was not

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present on the filing date accorded the (2) The filing date of a continued resulting nonprovisional application prosecution application is the date on (i.e., the filing date of the original pro- which a request on a separate paper for visional application). A request to con- an application under this paragraph is vert a provisional application to a non- filed. An application filed under this provisional application must also be paragraph: filed prior to the earliest of: (i) Must identify the prior applica- (i) Abandonment of the provisional tion; application filed under paragraph (c) of (ii) Discloses and claims only subject this section; or matter disclosed in the prior applica- (ii) Expiration of twelve months after tion; the filing date of the provisional appli- (iii) Names as inventors the same in- cation filed under paragraph (c) of this ventors named in the prior application section. on the date the application under this (4) A provisional application is not paragraph was filed, except as provided entitled to the right of priority under in paragraph (d)(4) of this section; 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, (iv) Includes the request for an appli- or to the benefit of an earlier filing cation under this paragraph, will uti- date under 35 U.S.C. 120, 121, 365(c), or lize the file jacket and contents of the 386(c) or § 1.78 of any other application. prior application, including the speci- No claim for priority under 35 U.S.C. fication, drawings and the inventor’s 119(e) or § 1.78(a) may be made in a de- oath or declaration from the prior ap- sign application based on a provisional plication, to constitute the new appli- application. The requirements of cation, and will be assigned the appli- §§ 1.821 through 1.825 regarding applica- cation number of the prior application tion disclosures containing nucleotide for identification purposes; and and/or amino acid sequences are not (v) Is a request to expressly abandon mandatory for provisional applica- the prior application as of the filing tions. date of the request for an application (d) Application filing requirements— under this paragraph. Continued prosecution (nonprovisional) (3) The filing fee, search fee, and ex- application. (1) A continuation or divi- amination fee for a continued prosecu- sional application (but not a continu- tion application filed under this para- ation-in-part) of a prior nonprovisional graph are the basic filing fee as set application may be filed as a continued forth in § 1.16(b), the search fee as set prosecution application under this forth in § 1.16(l), and the examination paragraph, provided that: fee as set forth in § 1.16(p). (i) The application is for a design pat- (4) An application filed under this ent; paragraph may be filed by fewer than (ii) The prior nonprovisional applica- all the inventors named in the prior ap- tion is a design application, but not an plication, provided that the request for international design application, that an application under this paragraph is complete as defined by § 1.51(b), ex- when filed is accompanied by a state- cept for the inventor’s oath or declara- ment requesting deletion of the name tion if the application is filed on or or names of the person or persons who after September 16, 2012, and the prior are not inventors of the invention nonprovisional application contains an being claimed in the new application. application data sheet meeting the No person may be named as an inven- conditions specified in § 1.53(f)(3)(i); and tor in an application filed under this (iii) The application under this para- paragraph who was not named as an in- graph is filed before the earliest of: ventor in the prior application on the (A) Payment of the issue fee on the date the application under this para- prior application, unless a petition graph was filed, except by way of cor- under § 1.313(c) is granted in the prior rection of inventorship under § 1.48. application; (5) Any new change must be made in (B) Abandonment of the prior appli- the form of an amendment to the prior cation; or application as it existed prior to the (C) Termination of proceedings on filing of an application under this para- the prior application. graph. No amendment in an application

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under this paragraph (a continued pros- tion in which the request was filed is ecution application) may introduce not a design application, and if the ap- new matter or matter that would have plication in which the request was filed been new matter in the prior applica- was itself filed on or after June 8, 1995, tion. Any new specification filed with the request for an application under the request for an application under paragraph (d) of this section will be this paragraph will not be considered treated as a request for continued ex- part of the original application papers, amination under § 1.114. but will be treated as a substitute spec- (2) Any request for review of a notifi- ification in accordance with § 1.125. cation pursuant to paragraph (e)(1) of (6) The filing of a continued prosecu- this section, or a notification that the tion application under this paragraph original application papers lack a por- will be construed to include a waiver of confidentiality by the applicant under tion of the specification or drawing(s), 35 U.S.C. 122 to the extent that any must be by way of a petition pursuant member of the public, who is entitled to this paragraph accompanied by the under the provisions of § 1.14 to access fee set forth in § 1.17(f). In the absence to, copies of, or information concerning of a timely (§ 1.181(f)) petition pursuant either the prior application or any con- to this paragraph, the filing date of an tinuing application filed under the pro- application in which the applicant was visions of this paragraph, may be given notified of a filing error pursuant to similar access to, copies of, or similar paragraph (e)(1) of this section will be information concerning the other ap- the date the filing error is corrected. plication or applications in the file (3) If an applicant is notified of a fil- jacket. ing error pursuant to paragraph (e)(1) (7) A request for an application under of this section, but fails to correct the this paragraph is the specific reference filing error within the given time pe- required by 35 U.S.C. 120 to every appli- riod or otherwise timely (§ 1.181(f)) take cation assigned the application number action pursuant to this paragraph, pro- identified in such request. No amend- ceedings in the application will be con- ment in an application under this para- sidered terminated. Where proceedings graph may delete this specific ref- in an application are terminated pursu- erence to any prior application. ant to this paragraph, the application (8) In addition to identifying the ap- may be disposed of, and any filing fees, plication number of the prior applica- less the handling fee set forth in tion, applicant should furnish in the request for an application under this § 1.21(n), will be refunded. paragraph the following information (f) Completion of application subsequent relating to the prior application to the to filing—Nonprovisional (including con- best of his or her ability: tinued prosecution or reissue) application. (i) Title of invention; (1) If an application which has been ac- (ii) Name of applicant(s); and corded a filing date pursuant to para- (iii) Correspondence address. graph (b) or (d) of this section does not (9) See § 1.103(b) for requesting a lim- include the basic filing fee, search fee, ited suspension of action in an applica- or examination fee, or if an application tion filed under this paragraph. which has been accorded a filing date (e) Failure to meet filing date require- pursuant to paragraph (b) of this sec- ments. (1) If an application deposited tion does not include at least one claim under paragraph (b), (c), or (d) of this or the inventor’s oath or declaration section does not meet the requirements (§§ 1.63, 1.64, 1.162, or 1.175), and the ap- of such paragraph to be entitled to a plicant has provided a correspondence filing date, applicant will be so noti- address (§ 1.33(a)), the applicant will be fied, if a correspondence address has notified and given a period of time been provided, and given a period of within which to file a claim or claims, time within which to correct the filing pay the basic filing fee, search fee, and error. If, however, a request for an ap- examination fee, and pay the surcharge plication under paragraph (d) of this if required by § 1.16(f), to avoid aban- section does not meet the requirements of that paragraph because the applica- donment.

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(2) If an application which has been ance with § 1.63, or substitute state- accorded a filing date pursuant to para- ment in compliance with § 1.64, has graph (b) of this section does not in- been filed before the application is in clude the basic filing fee, search fee, condition for allowance. examination fee, at least one claim, or (4) If the excess claims fees required the inventor’s oath or declaration, and by § 1.16(h) and (i) and multiple depend- the applicant has not provided a cor- ent claim fee required by § 1.16(j) are respondence address (§ 1.33(a)), the ap- not paid on filing or on later presen- plicant has three months from the fil- tation of the claims for which the ex- ing date of the application within cess claims or multiple dependent which to file a claim or claims, pay the claim fees are due, the fees required by basic filing fee, search fee, and exam- § 1.16(h), (i), and (j) must be paid or the ination fee, and pay the surcharge re- claims canceled by amendment prior to quired by § 1.16(f), to avoid abandon- the expiration of the time period set ment. for reply by the Office in any notice of (3) The inventor’s oath or declaration fee deficiency. If the application size in an application under § 1.53(b) must fee required by § 1.16(s) (if any) is not also be filed within the period specified paid on filing or on later presentation in paragraph (f)(1) or (f)(2) of this sec- of the amendment necessitating a fee tion, except that the filing of the in- or additional fee under § 1.16(s), the fee ventor’s oath or declaration may be required by § 1.16(s) must be paid prior postponed until the application is oth- to the expiration of the time period set erwise in condition for allowance under for reply by the Office in any notice of the conditions specified in paragraphs fee deficiency in order to avoid aban- (f)(3)(i) and (f)(3)(ii) of this section. donment. (i) The application must be an origi- (5) This paragraph applies to continu- nal (non-reissue) application that con- ation or divisional applications under tains an application data sheet in ac- paragraphs (b) or (d) of this section and cordance with § 1.76 identifying: to continuation-in-part applications (A) Each inventor by his or her legal under paragraph (b) of this section. See name; § 1.63(d) concerning the submission of a (B) A mailing address where the in- copy of the inventor’s oath or declara- ventor customarily receives mail, and tion from the prior application for a residence, if an inventor lives at a loca- continuing application under para- tion which is different from where the graph (b) of this section. inventor customarily receives mail, for (6) If applicant does not pay the basic each inventor. filing fee during the pendency of the (ii) The applicant must file each re- application, the Office may dispose of quired oath or declaration in compli- the application. ance with § 1.63, or substitute state- (g) Completion of application subse- ment in compliance with § 1.64, no later quent to filing—Provisional application. than the date on which the issue fee for (1) If a provisional application which the patent is paid. If the applicant is has been accorded a filing date pursu- notified in a notice of allowability that ant to paragraph (c) of this section an oath or declaration in compliance does not include the cover sheet re- with § 1.63, or substitute statement in quired by § 1.51(c)(1) or the basic filing compliance with § 1.64, executed by or fee (§ 1.16(d)), and applicant has pro- with respect to each named inventor vided a correspondence address has not been filed, the applicant must (§ 1.33(a)), applicant will be notified and file each required oath or declaration given a period of time within which to in compliance with § 1.63, or substitute pay the basic filing fee, file a cover statement in compliance with § 1.64, no sheet (§ 1.51(c)(1)), and pay the sur- later than the date on which the issue charge required by § 1.16(g) to avoid fee is paid to avoid abandonment. This abandonment. time period is not extendable under (2) If a provisional application which § 1.136 (see § 1.136(c)). The Office may has been accorded a filing date pursu- dispense with the notice provided for in ant to paragraph (c) of this section paragraph (f)(1) of this section if each does not include the cover sheet re- required oath or declaration in compli- quired by § 1.51(c)(1) or the basic filing

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fee (§ 1.16(d)), and applicant has not must accompany each part, accurately provided a correspondence address and clearly connecting it with the (§ 1.33(a)), applicant has two months other parts of the application. See § 1.53 from the filing date of the application (f) and (g) with regard to completion of within which to pay the basic filing an application. fee, file a cover sheet (§ 1.51(c)(1)), and (b) Applicant will be informed of the pay the surcharge required by § 1.16(g) application number and filing date by a to avoid abandonment. filing receipt, unless the application is (3) If the application size fee required an application filed under § 1.53(d). A by § 1.16(s) (if any) is not paid on filing, letter limited to a request for a filing the fee required by § 1.16(s) must be receipt may be signed by a juristic ap- paid prior to the expiration of the time plicant or patent owner. period set for reply by the Office in any notice of fee deficiency in order to [62 FR 53188, Oct. 10, 1997, as amended at 78 avoid abandonment. FR 62399, Oct. 21, 2013] (4) If applicant does not pay the basic § 1.55 Claim for foreign priority. filing fee during the pendency of the application, the Office may dispose of (a) In general. An applicant in a non- the application. provisional application may claim pri- (h) Subsequent treatment of applica- ority to one or more prior foreign ap- tion—Nonprovisional (including contin- plications under the conditions speci- ued prosecution) application. An applica- fied in 35 U.S.C. 119(a) through (d) and tion for a patent filed under paragraphs (f), 172, 365(a) and (b), and 386(a) and (b) (b) or (d) of this section will not be and this section. placed on the files for examination (b) Time for filing subsequent applica- until all its required parts, complying tion. The nonprovisional application with the rules relating thereto, are re- must be: ceived, except that the inventor’s oath (1) Filed not later than twelve or declaration may be filed when the months (six months in the case of a de- application is otherwise in condition sign application) after the date on for allowance pursuant to paragraph which the foreign application was filed, (f)(3) of this section and minor infor- subject to paragraph (c) of this section malities may be waived subject to sub- (a subsequent application); or sequent correction whenever required. (2) Entitled to claim the benefit (i) Subsequent treatment of applica- under 35 U.S.C. 120, 121, 365(c), or 386(c) tion—Provisional application. A provi- of a subsequent application that was sional application for a patent filed filed within the period set forth in under paragraph (c) of this section will paragraph (b)(1) of this section. not be placed on the files for examina- (c) Delayed filing of subsequent appli- tion and will become abandoned no cation. If the subsequent application later than twelve months after its fil- has a filing date which is after the ex- ing date pursuant to 35 U.S.C. 111(b)(1). piration of the period set forth in para- [62 FR 53186, Oct. 10, 1997, as amended at 63 graph (b)(1) of this section, but within FR 5734, Feb. 4, 1998; 65 FR 14871, Mar. 20, two months from the expiration of the 2000; 65 FR 50104, Aug. 16, 2000; 65 FR 54665, period set forth in paragraph (b)(1) of Sept. 8, 2000; 65 FR 78960, Dec. 18, 2000; 68 FR this section, the right of priority in the 14336, Mar. 25, 2003; 68 FR 32380, May 30, 2003; subsequent application may be restored 69 FR 29878, May 26, 2004; 69 FR 56539, Sept. under PCT Rule 26bis.3 for an inter- 21, 2004; 70 FR 3890, Jan. 27, 2005; 70 FR 30365, national application, or upon petition May 26, 2005; 72 FR 46836, Aug. 21, 2007; 74 FR 52688, Oct. 14, 2009; 77 FR 48817, Aug. 14, 2012; pursuant to this paragraph, if the delay 78 FR 11053, Feb. 14, 2013; 78 FR 62398, Oct. 21, in filing the subsequent application 2013; 79 FR 12386, Mar. 5, 2014; 80 FR 17956, within the period set forth in para- Apr. 2, 2015] graph (b)(1) of this section was unintentional. A petition to restore the § 1.54 Parts of application to be filed right of priority under this paragraph together; filing receipt. filed on or after May 13, 2015, must be (a) It is desirable that all parts of the filed in the subsequent application, or complete application be deposited in in the earliest nonprovisional applica- the Office together; otherwise, a letter tion claiming benefit under 35 U.S.C.

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120, 121, 365(c), or 386(c) to the subse- claim for priority under 35 U.S.C. 119(a) quent application, if such subsequent through (d) or (f), 365(a) or (b), or 386(a) application is not a nonprovisional ap- or 386(b) not presented in the manner plication. Any petition to restore the required by paragraph (d) or (m) of this right of priority under this paragraph section during pendency and within the must include: time period provided by paragraph (d) (1) The priority claim under 35 U.S.C. of this section (if applicable) is consid- 119(a) through (d) or (f), 365(a) or (b), or ered to have been waived. If a claim for 386(a) or (b) in an application data priority is considered to have been sheet (§ 1.76(b)(6)), identifying the for- waived under this section, the claim eign application to which priority is may be accepted if the priority claim claimed, by specifying the application was unintentionally delayed. A peti- number, country (or intellectual prop- tion to accept a delayed claim for pri- erty authority), day, month, and year ority under 35 U.S.C. 119(a) through (d) of its filing, unless previously sub- or (f), 365(a) or (b), or 386(a) or 386(b) mitted; must be accompanied by: (2) The petition fee as set forth in § 1.17(m); and (1) The priority claim under 35 U.S.C. (3) A statement that the delay in fil- 119(a) through (d) or (f), 365(a) or (b), or ing the subsequent application within 386(a) or 386(b) in an application data the period set forth in paragraph (b)(1) sheet (§ 1.76(b)(6)), identifying the for- of this section was unintentional. The eign application to which priority is Director may require additional infor- claimed, by specifying the application mation where there is a question number, country (or intellectual prop- whether the delay was unintentional. erty authority), day, month, and year (d) Time for filing priority claim—(1) of its filing, unless previously sub- Application under 35 U.S.C. 111(a). The mitted; claim for priority must be filed within (2) A certified copy of the foreign ap- the later of four months from the ac- plication, unless previously submitted tual filing date of the application or or an exception in paragraph (h), (i), or sixteen months from the filing date of (j) of this section applies; the prior foreign application in an (3) The petition fee as set forth in original application filed under 35 § 1.17(m); and U.S.C. 111(a), except as provided in (4) A statement that the entire delay paragraph (e) of this section. The claim between the date the priority claim for priority must be presented in an ap- was due under this section and the date plication data sheet (§ 1.76(b)(6)) and the priority claim was filed was unin- must identify the foreign application tentional. The Director may require to which priority is claimed by speci- additional information where there is a fying the application number, country question whether the delay was unin- (or intellectual property authority), tentional. day, month, and year of its filing. The time periods in this paragraph do not (f) Time for filing certified copy of for- apply if the later-filed application is: eign application—(1) Application under 35 (i) An application for a design patent; U.S.C. 111(a). A certified copy of the or foreign application must be filed with- (ii) An application filed under 35 in the later of four months from the ac- U.S.C. 111(a) before November 29, 2000. tual filing date of the application, or (2) Application under 35 U.S.C. 371. The sixteen months from the filing date of claim for priority must be made within the prior foreign application, in an the time limit set forth in the PCT and original application under 35 U.S.C. the Regulations under the PCT in an 111(a) filed on or after March 16, 2013, international application entering the except as provided in paragraphs (h), national stage under 35 U.S.C. 371, ex- (i), and (j) of this section. The time pe- cept as provided in paragraph (e) of riod in this paragraph does not apply in this section. a design application. (e) Delayed priority claim. Unless such (2) Application under 35 U.S.C. 371. A claim is accepted in accordance with certified copy of the foreign applica- the provisions of this paragraph, any tion must be filed within the time

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limit set forth in the PCT and the Reg- copy of the foreign application be filed ulations under the PCT in an inter- earlier than otherwise provided in this national application entering the na- section: tional stage under 35 U.S.C. 371. If a (i) When the application is involved certified copy of the foreign applica- in an interference (see § 41.202 of this tion is not filed during the inter- chapter) or derivation (see part 42 of national stage in an international ap- this chapter) proceeding; plication in which the national stage (ii) When necessary to overcome the commenced on or after December 18, date of a reference relied upon by the 2013, a certified copy of the foreign ap- examiner; or plication must be filed within the later (iii) When deemed necessary by the of four months from the date on which examiner. the national stage commenced under 35 (3) An English language translation U.S.C. 371(b) or (f) (§ 1.491(a)), four of a non-English language foreign ap- months from the date of the initial plication is not required except: submission under 35 U.S.C. 371 to enter (i) When the application is involved the national stage, or sixteen months in an interference (see § 41.202 of this from the filing date of the prior foreign chapter) or derivation (see part 42 of application, except as provided in para- this chapter) proceeding; graphs (h), (i), and (j) of this section. (ii) When necessary to overcome the (3) If a certified copy of the foreign date of a reference relied upon by the application is not filed within the time examiner; or period specified paragraph (f)(1) of this (iii) When specifically required by section in an application under 35 the examiner. U.S.C. 111(a) or within the period speci- (4) If an English language translation fied in paragraph (f)(2) of this section of a non-English language foreign ap- in an international application enter- plication is required, it must be filed ing the national stage under 35 U.S.C. together with a statement that the 371, and an exception in paragraph (h), translation of the certified copy is ac- (i), or (j) of this section is not applica- curate. ble, the certified copy of the foreign (h) Certified copy in another U.S. pat- application must be accompanied by a ent or application. The requirement in petition including a showing of good paragraphs (f) and (g) of this section and sufficient cause for the delay and for a certified copy of the foreign appli- the petition fee set forth in § 1.17(g). cation will be considered satisfied in a (g) Requirement for filing priority claim, reissue application if the patent for certified copy of foreign application, and which reissue is sought satisfies the re- translation in any application. (1) The quirement of this section for a certified claim for priority and the certified copy of the foreign application and copy of the foreign application speci- such patent is identified as containing fied in 35 U.S.C. 119(b) or PCT Rule 17 a certified copy of the foreign applica- must, in any event, be filed within the tion. The requirement in paragraphs (f) pendency of the application, unless and (g) of this section for a certified filed with a petition under paragraph copy of the foreign application will (e) or (f) of this section, or with a peti- also be considered satisfied in an appli- tion accompanied by the fee set forth cation if a prior-filed nonprovisional in § 1.17(g) which includes a showing of application for which a benefit is good and sufficient cause for the delay claimed under 35 U.S.C. 120, 121, 365(c), in filing the certified copy of the for- or 386(c) contains a certified copy of eign application in a design applica- the foreign application and such prior- tion. If the claim for priority or the filed nonprovisional application is certified copy of the foreign applica- identified as containing a certified tion is filed after the date the issue fee copy of the foreign application. is paid, the patent will not include the (i) Foreign intellectual property office priority claim unless corrected by a participating in a priority document ex- certificate of correction under 35 U.S.C. change agreement. The requirement in 255 and § 1.323. paragraphs (f) and (g) of this section (2) The Office may require that the for a certified copy of the foreign appli- claim for priority and the certified cation to be filed within the time limit

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set forth therein will be considered sat- months from the date of the initial isfied if: submission under 35 U.S.C. 371 to enter (1) The foreign application was filed the national stage, or the request must in a foreign intellectual property office be accompanied by a petition under participating with the Office in a bilat- paragraph (e) or (f) of this section. eral or multilateral priority document (j) Interim copy. The requirement in exchange agreement (participating for- paragraph (f) of this section for a cer- eign intellectual property office), or a tified copy of the foreign application to copy of the foreign application was be filed within the time limit set forth filed in an application subsequently therein will be considered satisfied if: filed in a participating foreign intellec- (1) A copy of the original foreign ap- tual property office that permits the plication clearly labeled as ‘‘Interim Office to obtain such a copy; Copy,’’ including the specification, and (2) The claim for priority is presented any drawings or claims upon which it in an application data sheet is based, is filed in the Office together (§ 1.76(b)(6)), identifying the foreign ap- with a separate cover sheet identifying plication for which priority is claimed, the foreign application by specifying by specifying the application number, the application number, country (or in- country (or intellectual property au- tellectual property authority), day, thority), day, month, and year of its month, and year of its filing, and stat- filing, and the applicant provides the ing that the copy filed in the Office is information necessary for the partici- a true copy of the original application pating foreign intellectual property of- as filed in the foreign country (or intel- fice to provide the Office with access to lectual property authority); the foreign application; (2) The copy of the foreign applica- (3) The copy of the foreign application and separate cover sheet are filed tion is received by the Office from the within the later of sixteen months participating foreign intellectual prop- from the filing date of the prior foreign erty office, or a certified copy of the application, four months from the ac- foreign application is filed, within the tual filing date of an application under period specified in paragraph (g)(1) of 35 U.S.C. 111(a), four months from the this section; and date on which the national stage com- (4) The applicant files in a separate menced under 35 U.S.C. 371(b) or (f) document a request that the Office ob- (§ 1.491(a)), four months from the date tain a copy of the foreign application of the initial submission under 35 from a participating intellectual prop- U.S.C. 371 to enter the national stage, erty office that permits the Office to or with a petition under paragraph (e) obtain such a copy where, although the or (f) of this section; and foreign application was not filed in a (3) A certified copy of the foreign ap- participating foreign intellectual prop- plication is filed within the period erty office, a copy of the foreign appli- specified in paragraph (g)(1) of this sec- cation was filed in an application sub- tion. sequently filed in a participating for- (k) Requirements for certain applica- eign intellectual property office that tions filed on or after March 16, 2013. If a permits the Office to obtain such a nonprovisional application filed on or copy. The request must identify the after March 16, 2013, other than a non- participating intellectual property of- provisional international design appli- fice and the subsequent application by cation, claims priority to a foreign ap- the application number, day, month, plication filed prior to March 16, 2013, and year of its filing in which a copy of and also contains, or contained at any the foreign application was filed. The time, a claim to a claimed invention request must be filed within the later that has an effective filing date as de- of sixteen months from the filing date fined in § 1.109 that is on or after March of the prior foreign application, four 16, 2013, the applicant must provide a months from the actual filing date of statement to that effect within the an application under 35 U.S.C. 111(a), later of four months from the actual four months from the date on which filing date of the nonprovisional appli- the national stage commenced under 35 cation, four months from the date of U.S.C. 371(b) or (f) (§ 1.491(a)), or four entry into the national stage as set

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forth in § 1.491 in an international ap- tion number, country (or intellectual plication, sixteen months from the fil- property authority), day, month, and ing date of the prior foreign applica- year of its filing. In a nonprovisional tion, or the date that a first claim to a international design application, the claimed invention that has an effective priority claim and certified copy must filing date on or after March 16, 2013, is be furnished in accordance with the presented in the nonprovisional appli- time period and other conditions set cation. An applicant is not required to forth in paragraph (g) of this section. provide such a statement if the appli- (n) Applications filed before September cant reasonably believes on the basis of 16, 2012. Notwithstanding the require- information already known to the indi- ment in paragraphs (d)(1), (e)(1), and viduals designated in § 1.56(c) that the (i)(2) of this section that any priority nonprovisional application does not, claim be presented in an application and did not at any time, contain a data sheet (§ 1.76), this requirement in claim to a claimed invention that has paragraphs (d)(1), (e)(1), and (i)(2) of an effective filing date on or after this section will be satisfied by the March 16, 2013. presentation of such priority claim in (l) Inventor’s certificates. An applicant the oath or declaration under § 1.63 in a in a nonprovisional application may nonprovisional application filed under under certain circumstances claim pri- 35 U.S.C. 111(a) before September 16, ority on the basis of one or more appli- 2012, or resulting from an international cations for an inventor’s certificate in application filed under 35 U.S.C. 363 be- a country granting both inventor’s cer- fore September 16, 2012. The provisions tificates and patents. To claim the of this paragraph do not apply to any right of priority on the basis of an ap- priority claim submitted for a petition plication for an inventor’s certificate under paragraph (c) of this section to in such a country under 35 U.S.C. restore the right of priority to a for- 119(d), the applicant, when submitting eign application. a claim for such right as specified in (o) Priority under 35 U.S.C. 386(a) or this section, must include an affidavit (b). The right of priority under 35 or declaration. The affidavit or dec- U.S.C. 386(a) or (b) with respect to an laration must include a specific state- international design application is ap- ment that, upon an investigation, he or plicable only to nonprovisional appli- she is satisfied that to the best of his cations, international applications, and or her knowledge, the applicant, when international design applications filed filing the application for the inventor’s on or after May 13, 2015, and patents certificate, had the option to file an ap- issuing thereon. plication for either a patent or an in- (p) Time periods in this section. The ventor’s certificate as to the subject time periods set forth in this section matter of the identified claim or are not extendable, but are subject to claims forming the basis for the claim 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule of priority. 80.5, and Hague Agreement Rule 4(4). (m) Time for filing priority claim and [80 FR 17956, Apr. 2, 2015] certified copy of foreign application in an international design application desig- § 1.56 Duty to disclose information ma- nating the United States. In an inter- terial to patentability. national design application designating (a) A patent by its very nature is af- the United States, the claim for pri- fected with a public interest. The pub- ority may be made in accordance with lic interest is best served, and the most the Hague Agreement and the Hague effective patent examination occurs Agreement Regulations. In a nonprovi- when, at the time an application is sional international design application, being examined, the Office is aware of the priority claim, unless made in ac- and evaluates the teachings of all in- cordance with the Hague Agreement formation material to patentability. and the Hague Agreement Regulations, Each individual associated with the fil- must be presented in an application ing and prosecution of a patent appli- data sheet (§ 1.76(b)(6)), identifying the cation has a duty of candor and good foreign application for which priority faith in dealing with the Office, which is claimed, by specifying the applica- includes a duty to disclose to the Office

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all information known to that indi- A prima facie case of unpatentability vidual to be material to patentability is established when the information as defined in this section. The duty to compels a conclusion that a claim is disclose information exists with re- unpatentable under the preponderance spect to each pending claim until the of evidence, burden-of-proof standard, claim is cancelled or withdrawn from giving each term in the claim its consideration, or the application be- broadest reasonable construction con- comes abandoned. Information mate- sistent with the specification, and be- rial to the patentability of a claim that fore any consideration is given to evi- is cancelled or withdrawn from consid- dence which may be submitted in an eration need not be submitted if the in- attempt to establish a contrary conclu- formation is not material to the pat- sion of patentability. entability of any claim remaining (c) Individuals associated with the under consideration in the application. filing or prosecution of a patent appli- There is no duty to submit information cation within the meaning of this sec- which is not material to the patent- tion are: ability of any existing claim. The duty (1) Each inventor named in the appli- to disclose all information known to be cation; material to patentability is deemed to (2) Each attorney or agent who pre- be satisfied if all information known to pares or prosecutes the application; be material to patentability of any and (3) Every other person who is sub- claim issued in a patent was cited by stantively involved in the preparation the Office or submitted to the Office in or prosecution of the application and the manner prescribed by §§ 1.97(b)–(d) who is associated with the inventor, and 1.98. However, no patent will be the applicant, an assignee, or anyone granted on an application in connec- to whom there is an obligation to as- tion with which fraud on the Office was sign the application. practiced or attempted or the duty of (d) Individuals other than the attor- disclosure was violated through bad ney, agent or inventor may comply faith or intentional misconduct. The with this section by disclosing infor- Office encourages applicants to care- mation to the attorney, agent, or in- fully examine: ventor. (1) Prior art cited in search reports of (e) In any continuation-in-part appli- a foreign patent office in a counterpart cation, the duty under this section in- application, and cludes the duty to disclose to the Office (2) The closest information over all information known to the person to which individuals associated with the be material to patentability, as defined filing or prosecution of a patent appli- in paragraph (b) of this section, which cation believe any pending claim became available between the filing patentably defines, to make sure that date of the prior application and the any material information contained national or PCT international filing therein is disclosed to the Office. date of the continuation-in-part appli- (b) Under this section, information is cation. material to patentability when it is [57 FR 2034, Jan. 17, 1992, as amended at 65 not cumulative to information already FR 54666, Sept. 8, 2000; 77 FR 48818, Aug. 14, of record or being made of record in the 2012] application, and (1) It establishes, by itself or in com- § 1.57 Incorporation by reference. bination with other information, a (a) Subject to the conditions and re- prima facie case of unpatentability of a quirements of this paragraph, a ref- claim; or erence made in the English language in (2) It refutes, or is inconsistent with, an application data sheet in accordance a position the applicant takes in: with § 1.76 upon the filing of an applica- (i) Opposing an argument of tion under 35 U.S.C. 111(a) to a pre- unpatentability relied on by the Office, viously filed application, indicating or that the specification and any draw- (ii) Asserting an argument of patent- ings of the application under 35 U.S.C. ability. 111(a) are replaced by the reference to

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the previously filed application, and viously filed application, or be accom- specifying the previously filed applica- panied by a petition including a show- tion by application number, filing date, ing of good and sufficient cause for the and the intellectual property authority delay and the petition fee set forth in or country in which the previously § 1.17(g). filed application was filed, shall con- (b) Subject to the conditions and re- stitute the specification and any draw- quirements of this paragraph, if all or ings of the application under 35 U.S.C. a portion of the specification or draw- 111(a) for purposes of a filing date ing(s) is inadvertently omitted from an under § 1.53(b). application, but the application con- (1) If the applicant has provided a tains a claim under § 1.55 for priority of correspondence address (§ 1.33(a)), the a prior-filed foreign application or a applicant will be notified and given a claim under § 1.78 for the benefit of a period of time within which to file a prior-filed provisional, nonprovisional, copy of the specification and drawings international application, or inter- from the previously filed application, national design application, that was an English language translation of the present on the filing date of the appli- previously filed application, and the cation, and the inadvertently omitted fee required by § 1.17(i) if it is in a lan- portion of the specification or draw- guage other than English, and pay the ing(s) is completely contained in the surcharge required by § 1.16(f), to avoid prior-filed application, the claim under abandonment. Such a notice may be § 1.55 or 1.78 shall also be considered an combined with a notice under § 1.53(f). incorporation by reference of the prior- (2) If the applicant has not provided a filed application as to the inadvert- correspondence address (§ 1.33(a)), the ently omitted portion of the specifica- applicant has three months from the tion or drawing(s). filing date of the application to file a (1) The application must be amended copy of the specification and drawings to include the inadvertently omitted from the previously filed application, portion of the specification or draw- an English language translation of the ing(s) within any time period set by previously filed application, and the the Office, but in no case later than the fee required by § 1.17(i) if it is in a lan- close of prosecution as defined by guage other than English, and pay the § 1.114(b), or abandonment of the appli- surcharge required by § 1.16(f), to avoid cation, whichever occurs earlier. The abandonment. applicant is also required to: (3) An application abandoned under (i) Supply a copy of the prior-filed paragraph (a)(1) or (a)(2) of this section application, except where the prior- shall be treated as having never been filed application is an application filed filed, unless: under 35 U.S.C. 111; (i) The application is revived under (ii) Supply an English language § 1.137; and translation of any prior-filed applica- (ii) A copy of the specification and tion that is in a language other than any drawings of the previously filed ap- English; and plication are filed in the Office. (iii) Identify where the inadvertently (4) A certified copy of the previously omitted portion of the specification or filed application must be filed in the drawings can be found in the prior-filed Office, unless the previously filed ap- application. plication is an application filed under (2) Any amendment to an inter- 35 U.S.C. 111 or 363, or the previously national application pursuant to para- filed application is a foreign priority graph (b)(1) of this section shall be ef- application and the conditions set fective only as to the United States, forth in § 1.55(i) are satisfied with re- and shall have no effect on the inter- spect to such foreign priority applica- national filing date of the application. tion. The certified copy of the pre- In addition, no request under this sec- viously filed application, if required by tion to add the inadvertently omitted this paragraph, must be filed within portion of the specification or drawings the later of four months from the filing in an international application desig- date of the application or sixteen nating the United States will be acted months from the filing date of the pre- upon by the Office prior to the entry

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and commencement of the national (2) Describe the claimed invention in stage (§ 1.491) or the filing of an appli- terms that particularly point out and cation under 35 U.S.C. 111(a) which distinctly claim the invention as re- claims benefit of the international ap- quired by 35 U.S.C. 112(b); or plication. Any omitted portion of the (3) Describe the structure, material, international application which appli- or acts that correspond to a claimed cant desires to be effective as to all means or step for performing a speci- designated States, subject to PCT Rule fied function as required by 35 U.S.C. 20.8(b), must be submitted in accord- 112(f). ance with PCT Rule 20. (e) Other material (‘‘Nonessential (3) If an application is not otherwise material’’) may be incorporated by ref- entitled to a filing date under § 1.53(b), erence to U.S. patents, U.S. patent ap- the amendment must be by way of a plication publications, foreign patents, petition pursuant to § 1.53(e) accom- foreign published applications, prior panied by the fee set forth in § 1.17(f). and concurrently filed commonly (4) Any amendment to an inter- owned U.S. applications, or non-patent national design application pursuant to publications. An incorporation by ref- paragraph (b)(1) of this section shall be erence by hyperlink or other form of effective only as to the United States browser executable code is not per- and shall have no effect on the filing mitted. date of the application. In addition, no (f) The examiner may require the ap- request under this section to add the plicant to supply a copy of the mate- inadvertently omitted portion of the rial incorporated by reference. If the specification or drawings in an inter- Office requires the applicant to supply national design application will be a copy of material incorporated by ref- acted upon by the Office prior to the erence, the material must be accom- international design application be- panied by a statement that the copy coming a nonprovisional application. supplied consists of the same material (c) Except as provided in paragraph incorporated by reference in the ref- (a) or (b) of this section, an incorpora- erencing application. tion by reference must be set forth in (g) Any insertion of material incor- the specification and must: porated by reference into the specifica- (1) Express a clear intent to incor- tion or drawings of an application must porate by reference by using the root be by way of an amendment to the words ‘‘incorporat(e)’’ and ‘‘reference’’ specification or drawings. Such an (e.g., ‘‘incorporate by reference’’); and amendment must be accompanied by a (2) Clearly identify the referenced statement that the material being in- patent, application, or publication. serted is the material previously incor- (d) ‘‘Essential material’’ may be in- porated by reference and that the corporated by reference, but only by amendment contains no new matter. way of an incorporation by reference to (h) An incorporation of material by a U.S. patent or U.S. patent applica- reference that does not comply with tion publication, which patent or pat- paragraphs (c), (d), or (e) of this section ent application publication does not is not effective to incorporate such ma- itself incorporate such essential mate- terial unless corrected within any time rial by reference. ‘‘Essential material’’ period set by the Office, but in no case is material that is necessary to: later than the close of prosecution as (1) Provide a written description of defined by § 1.114(b), or abandonment of the claimed invention, and of the man- the application, whichever occurs ear- ner and process of making and using it, lier. In addition: in such full, clear, concise, and exact (1) A correction to comply with para- terms as to enable any person skilled graph (c)(1) of this section is permitted in the art to which it pertains, or with only if the application as filed clearly which it is most nearly connected, to conveys an intent to incorporate the make and use the same, and set forth material by reference. A mere ref- the best mode contemplated by the in- erence to material does not convey an ventor of carrying out the invention as intent to incorporate the material by required by 35 U.S.C. 112(a); reference.

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(2) A correction to comply with para- tween complex formulae and tables and graph (c)(2) of this section is only per- the text. Tables should have the lines mitted for material that was suffi- and columns of data closely spaced to ciently described to uniquely identify conserve space, consistent with a high the document. degree of legibility. (i) An application transmittal letter [69 FR 56540, Sept. 21, 2004, as amended at 78 limited to the transmittal of a copy of FR 62401, Oct. 21, 2013] the specification and drawings from a previously filed application submitted § 1.59 Expungement of information or under paragraph (a) or (b) of this sec- copy of papers in application file. tion may be signed by a juristic appli- (a) (1) Information in an application cant or patent owner. will not be expunged, except as pro- [78 FR 62401, Oct. 21, 2013, as amended at 80 vided in paragraph (b) of this section or FR 17959, Apr. 2, 2015] § 41.7(a) or § 42.7(a) of this title. (2) Information forming part of the § 1.58 Chemical and mathematical for- original disclosure (i.e., written speci- mulae and tables. fication including the claims, draw- (a) The specification, including the ings, and any preliminary amendment claims, may contain chemical and present on the filing date of the appli- mathematical formulae, but shall not cation) will not be expunged from the contain drawings or flow diagrams. The application file. description portion of the specification (b) An applicant may request that may contain tables, but the same ta- the Office expunge information, other bles should not be included in both the than what is excluded by paragraph drawings and description portion of the (a)(2) of this section, by filing a peti- specification. Claims may contain tation under this paragraph. Any peti- bles either if necessary to conform to tion to expunge information from an 35 U.S.C. 112 or if otherwise found to be application must include the fee set desirable. forth in § 1.17(g) and establish to the (b) Tables that are submitted in elec- satisfaction of the Director that the tronic form (§§ 1.96(c) and 1.821(c)) must expungement of the information is ap- maintain the spatial relationships propriate in which case a notice grant- (e.g., alignment of columns and rows) ing the petition for expungement will of the table elements when displayed so be provided. as to visually preserve the relational (c) Upon request by an applicant and information they convey. Chemical and payment of the fee specified in § 1.19(b), mathematical formulae must be en- the Office will furnish copies of an ap- coded to maintain the proper posi- plication, unless the application has tioning of their characters when dis- been disposed of (see §§ 1.53(e), (f) and played in order to preserve their in- (g)). The Office cannot provide or cer- tended meaning. tify copies of an application that has (c) Chemical and mathematical for- been disposed of. mulae and tables must be presented in compliance with § 1.52(a) and (b), except [68 FR 38628, June 30, 2003, as amended at 69 that chemical and mathematical for- FR 49999, Aug. 12, 2004; 69 FR 56540, Sept. 21, 2004; 77 FR 46624, Aug. 6, 2012; 77 FR 48818, mulae or tables may be placed in a Aug. 14, 2012] landscape orientation if they cannot be presented satisfactorily in a portrait §§ 1.60–1.62 [Reserved] orientation. Typewritten characters used in such formulae and tables must OATH OR DECLARATION be chosen from a block (nonscript) type font or lettering style having capital § 1.63 Inventor’s oath or declaration. letters which should be at least 0.422 (a) The inventor, or each individual cm. (0.166 inch) high (e.g., preferably who is a joint inventor of a claimed in- Arial, Times Roman, or Courier with a vention, in an application for patent font size of 12), but may be no smaller must execute an oath or declaration di- than 0.21 cm. (0.08 inch) high (e.g., a rected to the application, except as font size of 6). A space at least 0.64 cm. provided for in § 1.64. An oath or dec- (1/4 inch) high should be provided be- laration under this section must:

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(1) Identify the inventor or joint ining the signature or an indication ventor executing the oath or declara- thereon that it was executed, is sub- tion by his or her legal name; mitted in the continuing application. (2) Identify the application to which (2) The inventorship of a continuing it is directed; application filed under 35 U.S.C. 111(a) (3) Include a statement that the per- is the inventor or joint inventors speci- son executing the oath or declaration fied in the application data sheet filed believes the named inventor or joint before or concurrently with the copy of inventor to be the original inventor or the inventor’s oath or declaration from an original joint inventor of a claimed the earlier-filed application. If an ap- invention in the application for which plication data sheet is not filed before the oath or declaration is being sub- or concurrently with the copy of the mitted; and inventor’s oath or declaration from the (4) State that the application was earlier-filed application, the made or was authorized to be made by inventorship is the inventorship set the person executing the oath or dec- forth in the copy of the inventor’s oath laration. or declaration from the earlier-filed ap- (b) Unless the following information plication, unless it is accompanied by a is supplied in an application data sheet statement signed pursuant to § 1.33(b) in accordance with § 1.76, the oath or stating the name of each inventor in declaration must also identify: the continuing application. (1) Each inventor by his or her legal (3) Any new joint inventor named in name; and the continuing application must pro- (2) A mailing address where the in- vide an oath or declaration in compli- ventor customarily receives mail, and ance with this section, except as pro- residence, if an inventor lives at a loca- vided for in § 1.64. tion which is different from where the (e)(1) An assignment may also serve inventor customarily receives mail, for as an oath or declaration required by each inventor. this section if the assignment as exe- (c) A person may not execute an oath cuted: or declaration for an application unless (i) Includes the information and that person has reviewed and under- statements required under paragraphs stands the contents of the application, (a) and (b) of this section; and including the claims, and is aware of (ii) A copy of the assignment is re- the duty to disclose to the Office all in- corded as provided for in part 3 of this formation known to the person to be chapter. material to patentability as defined in (2) Any reference to an oath or dec- § 1.56. There is no minimum age for a laration under this section includes an person to be qualified to execute an assignment as provided for in this oath or declaration, but the person paragraph. must be competent to execute, i.e., un- (f) With respect to an application derstand, the document that the person naming only one inventor, any ref- is executing. erence to the inventor’s oath or dec- (d)(1) A newly executed oath or declaration in this chapter includes a sub- laration under § 1.63, or substitute stitute statement executed under § 1.64. statement under § 1.64, is not required With respect to an application naming under §§ 1.51(b)(2) and 1.53(f), or under more than one inventor, any reference §§ 1.497 and 1.1021(d), for an inventor in to the inventor’s oath or declaration in a continuing application that claims this chapter means the oaths, declara- the benefit under 35 U.S.C. 120, 121, tions, or substitute statements that 365(c), or 386(c) in compliance with have been collectively executed by or § 1.78 of an earlier-filed application, with respect to all of the joint inven- provided that an oath or declaration in tors, unless otherwise clear from the compliance with this section, or sub- context. stitute statement under § 1.64, was exe- (g) An oath or declaration under this cuted by or with respect to such inven- section, including the statement pro- tor and was filed in the earlier-filed ap- vided for in paragraph (e) of this sec- plication, and a copy of such oath, dec- tion, must be executed (i.e., signed) in laration, or substitute statement show- accordance either with § 1.66 or with an

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acknowledgment that any willful false (i) Each inventor by his or her legal statement made in such declaration or name; and statement is punishable under 18 U.S.C. (ii) The last known mailing address 1001 by fine or imprisonment of not where the inventor customarily re- more than five (5) years, or both. ceives mail, and last known residence, (h) An oath or declaration filed at if an inventor lives at a location which any time pursuant to 35 U.S.C. 115(h)(1) is different from where the inventor will be placed in the file record of the customarily receives mail, for each in- application or patent, but may not nec- ventor who is not deceased or under a essarily be reviewed by the Office. Any legal incapacity. request for correction of the named (c) A person may not execute a sub- inventorship must comply with § 1.48 in stitute statement provided for in this an application and § 1.324 in a patent. section for an application unless that person has reviewed and understands [77 FR 48818, Aug. 14, 2012, as amended at 80 the contents of the application, includ- FR 17959, Apr. 2, 2015] ing the claims, and is aware of the duty to disclose to the Office all information § 1.64 Substitute statement in lieu of known to the person to be material to an oath or declaration. patentability as defined in § 1.56. (a) An applicant under § 1.43, 1.45 or (d) Any reference to an inventor’s 1.46 may execute a substitute state- oath or declaration includes a sub- ment in lieu of an oath or declaration stitute statement provided for in this under § 1.63 if the inventor is deceased, section. is under a legal incapacity, has refused (e) A substitute statement under this to execute the oath or declaration section must contain an acknowledg- under § 1.63, or cannot be found or ment that any willful false statement reached after diligent effort. made in such statement is punishable (b) A substitute statement under this under section 1001 of title 18 by fine or section must: imprisonment of not more than 5 (1) Comply with the requirements of years, or both. § 1.63(a), identifying the inventor or (f) A nonsigning inventor or legal joint inventor with respect to whom a representative may subsequently join substitute statement in lieu of an oath in the application by submitting an or declaration is executed, and stating oath or declaration under § 1.63. The upon information and belief the facts submission of an oath or declaration by which such inventor is required to a nonsigning inventor or legal rep- state; resentative in an application filed (2) Identify the person executing the under § 1.43, 1.45 or 1.46 will not permit substitute statement and the relation- the nonsigning inventor or legal rep- ship of such person to the inventor or resentative to revoke or grant a power joint inventor with respect to whom of attorney. the substitute statement is executed, [77 FR 48819, Aug. 14, 2012] and unless such information is supplied in an application data sheet in accord- § 1.66 Statements under oath. ance with § 1.76, the residence and mail- An oath or affirmation may be made ing address of the person signing the before any person within the United substitute statement; States authorized by law to administer (3) Identify the circumstances per- oaths. An oath made in a foreign coun- mitting the person to execute the sub- try may be made before any diplomatic stitute statement in lieu of an oath or or consular officer of the United States declaration under § 1.63, namely wheth- authorized to administer oaths, or be- er the inventor is deceased, is under a fore any officer having an official seal legal incapacity, cannot be found or and authorized to administer oaths in reached after a diligent effort was the foreign country in which the appli- made, or has refused to execute the cant may be, whose authority shall be oath or declaration under § 1.63; and proved by a certificate of a diplomatic (4) Unless the following information or consular officer of the United is supplied in an application data sheet States, or by an apostille of an official in accordance with § 1.76, also identify: designated by a foreign country which,

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by treaty or convention, accords like required by any law, rule, or other reg- effect to apostilles of designated offi- ulation to be under oath may be sub- cials in the United States. The oath scribed to by a written declaration. shall be attested in all cases in this and Such declaration may be used in lieu of other countries, by the proper official the oath otherwise required, if, and seal of the officer before whom the only if, the declarant is on the same oath or affirmation is made. Such oath document, warned that willful false or affirmation shall be valid as to exe- statements and the like are punishable cution if it complies with the laws of by fine or imprisonment, or both (18 the State or country where made. U.S.C. 1001) and may jeopardize the va- When the person before whom the oath lidity of the application or any patent or affirmation is made in this country issuing thereon. The declarant must is not provided with a seal, his official set forth in the body of the declaration character shall be established by com- that all statements made of the declar- petent evidence, as by a certificate ant’s own knowledge are true and that from a clerk of a court of record or all statements made on information other proper officer having a seal. and belief are believed to be true. [77 FR 48819, Aug. 14, 2012] [49 FR 48452, Dec. 12, 1984]

§ 1.67 Supplemental oath or declara- § 1.69 Foreign language oaths and dec- tion. larations. (a) The applicant may submit an in- (a) Whenever an individual making ventor’s oath or declaration meeting an oath or declaration cannot under- the requirements of § 1.63, § 1.64, or stand English, the oath or declaration § 1.162 to correct any deficiencies or in- must be in a language that such indi- accuracies present in an earlier-filed vidual can understand and shall state inventor’s oath or declaration. Defi- that such individual understands the ciencies or inaccuracies due to the fail- content of any documents to which the ure to meet the requirements of oath or declaration relates. § 1.63(b) in an oath or declaration may (b) Unless the text of any oath or be corrected with an application data declaration in a language other than sheet in accordance with § 1.76, except English is in a form provided by the that any correction of inventorship Patent and Trademark Office or in ac- must be pursuant to § 1.48. cordance with PCT Rule 4.17(iv), it (b) A supplemental inventor’s oath or must be accompanied by an English declaration under this section must be translation together with a statement executed by the person whose inven- that the translation is accurate, except tor’s oath or declaration is being with- that in the case of an oath or declara- drawn, replaced, or otherwise cor- tion filed under § 1.63, the translation rected. may be filed in the Office no later than (c) The Office will not require a per- two months from the date applicant is son who has executed an oath or dec- notified to file the translation. laration in compliance with 35 U.S.C. (35 U.S.C. 6, Pub. L. 97–247) 115 and § 1.63 or 1.162 for an application to provide an additional inventor’s [42 FR 5594, Jan. 28, 1977, as amended at 48 FR 2711, Jan. 20, 1983; 62 FR 53189, Oct. 10, oath or declaration for the application. 1997; 69 FR 56540, Sept. 21, 2004; 70 FR 3890, (d) No new matter may be introduced Jan. 27, 2005] into a nonprovisional application after its filing date even if an inventor’s § 1.70 [Reserved] oath or declaration is filed to correct deficiencies or inaccuracies present in SPECIFICATION the earlier-filed inventor’s oath or declaration. AUTHORITY: Secs. 1.71 to 1.79 also issued under 35 U.S.C. 112. [77 FR 48819, Aug. 14, 2012] § 1.71 Detailed description and speci- § 1.68 Declaration in lieu of oath. fication of the invention. Any document to be filed in the Pat- (a) The specification must include a ent and Trademark Office and which is written description of the invention or

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discovery and of the manner and proc- to (copyright or mask work) protection. The ess of making and using the same, and (copyright or mask work) owner has no ob- is required to be in such full, clear, jection to the facsimile reproduction by any- concise, and exact terms as to enable one of the patent document or the patent any person skilled in the art or science disclosure, as it appears in the Patent and to which the invention or discovery ap- Trademark Office patent file or records, but pertains, or with which it is most near- otherwise reserves all (copyright or mask work) rights whatsoever. ly connected, to make and use the same. (f) The specification must commence (b) The specification must set forth on a separate sheet. Each sheet includ- the precise invention for which a pating part of the specification may not ent is solicited, in such manner as to include other parts of the application distinguish it from other inventions or other information. The claim(s), ab- and from what is old. It must describe stract and sequence listing (if any) completely a specific embodiment of should not be included on a sheet in- the process, machine, manufacture, cluding any other part of the applica- composition of matter or improvement tion. invented, and must explain the mode of (g)(1) The specification may disclose operation or principle whenever applicable. The best mode contemplated by or be amended to disclose the names of the inventor of carrying out his inven- the parties to a joint research agree- tion must be set forth. ment as defined in § 1.9(e). (c) In the case of an improvement, (2) An amendment under paragraph the specification must particularly (g)(1) of this section must be accom- point out the part or parts of the proc- panied by the processing fee set forth ess, machine, manufacture, or composi- in § 1.17(i) if not filed within one of the tion of matter to which the improve- following time periods: ment relates, and the description (i) Within three months of the filing should be confined to the specific im- date of a national application; provement and to such parts as nec- (ii) Within three months of the date essarily cooperate with it or as may be of entry of the national stage as set necessary to a complete understanding forth in § 1.491 in an international ap- or description of it. plication; (d) A copyright or mask work notice (iii) Before the mailing of a first Of- may be placed in a design or utility fice action on the merits; or patent application adjacent to copy- (iv) Before the mailing of a first Of- right and mask work material con- fice action after the filing of a request tained therein. The notice may appear for continued examination under at any appropriate portion of the pat- § 1.114. ent application disclosure. For notices in drawings, see § 1.84(s). The content of (3) If an amendment under paragraph the notice must be limited to only (g)(1) of this section is filed after the those elements provided for by law. For date the issue fee is paid, the patent as example, ‘‘© 1983 John Doe’’ (17 U.S.C. issued may not necessarily include the 401) and ‘‘ *M* John Doe’’ (17 U.S.C. 909) names of the parties to the joint re- would be properly limited and, under search agreement. If the patent as current statutes, legally sufficient no- issued does not include the names of tices of copyright and mask work, re- the parties to the joint research agree- spectively. Inclusion of a copyright or ment, the patent must be corrected to mask work notice will be permitted include the names of the parties to the only if the authorization language set joint research agreement by a certifi- forth in paragraph (e) of this section is cate of correction under 35 U.S.C. 255 included at the beginning (preferably and § 1.323 for the amendment to be ef- as the first paragraph) of the specifica- fective. tion. (e) The authorization shall read as [24 FR 10332, Dec. 22, 1959, as amended at 53 follows: FR 47808, Nov. 28, 1988; 58 FR 38723, July 20, 1993; 68 FR 38628, June 30, 2003; 70 FR 1823, A portion of the disclosure of this patent Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 78 FR document contains material which is subject 11055, Feb. 14, 2013]

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§ 1.72 Title and abstract. and distinctly claiming the subject (a) The title of the invention may not matter which the applicant regards as exceed 500 characters in length and his invention or discovery. must be as short and specific as pos- (b) More than one claim may be pre- sible. Characters that cannot be cap- sented provided they differ substan- tured and recorded in the Office’s auto- tially from each other and are not un- mated information systems may not be duly multiplied. reflected in the Office’s records in such (c) One or more claims may be pre- systems or in documents created by sented in dependent form, referring the Office. Unless the title is supplied back to and further limiting another in an application data sheet (§ 1.76), the claim or claims in the same applica- title of the invention should appear as tion. Any dependent claim which refers a heading on the first page of the speci- to more than one other claim (‘‘mul- fication. tiple dependent claim’’) shall refer to (b) A brief abstract of the technical such other claims in the alternative disclosure in the specification must only. A multiple dependent claim shall commence on a separate sheet, pref- not serve as a basis for any other mul- erably following the claims, under the tiple dependent claim. For fee calcula- heading ‘‘Abstract’’ or ‘‘Abstract of the tion purposes under § 1.16, a multiple Disclosure.’’ The sheet or sheets pre- dependent claim will be considered to senting the abstract may not include be that number of claims to which di- other parts of the application or other rect reference is made therein. For fee material. The abstract must be as con- calculation purposes also, any claim cise as the disclosure permits, pref- depending from a multiple dependent erably not exceeding 150 words in claim will be considered to be that length. The purpose of the abstract is number of claims to which direct ref- to enable the Office and the public gen- erence is made in that multiple de- erally to determine quickly from a cur- pendent claim. In addition to the other sory inspection the nature and gist of filing fees, any original application the technical disclosure. which is filed with, or is amended to in- [65 FR 54667, Sept. 8, 2000, as amended at 65 clude, multiple dependent claims must FR 57054, Sept. 20, 2000; 68 FR 38628, June 30, have paid therein the fee set forth in 2003; 78 FR 62402, Oct. 21, 2013] § 1.16(j). Claims in dependent form shall be construed to include all the limita- § 1.73 Summary of the invention. tions of the claim incorporated by ref- A brief summary of the invention in- erence into the dependent claim. A dicating its nature and substance, multiple dependent claim shall be con- which may include a statement of the strued to incorporate by reference all object of the invention, should precede the limitations of each of the par- the detailed description. Such sum- ticular claims in relation to which it is mary should, when set forth, be com- being considered. mensurate with the invention as (d)(1) The claim or claims must con- claimed and any object recited should form to the invention as set forth in be that of the invention as claimed. the remainder of the specification and the terms and phrases used in the § 1.74 Reference to drawings. claims must find clear support or ante- When there are drawings, there shall cedent basis in the description so that be a brief description of the several the meaning of the terms in the claims views of the drawings and the detailed may be ascertainable by reference to description of the invention shall refer the description. (See § 1.58(a).) to the different views by specifying the (2) See §§ 1.141 to 1.146 as to claiming numbers of the figures and to the dif- different inventions in one application. ferent parts by use of reference letters (e) Where the nature of the case ad- or numerals (preferably the latter). mits, as in the case of an improvement, any independent claim should contain § 1.75 Claim(s). in the following order: (a) The specification must conclude (1) A preamble comprising a general with a claim particularly pointing out description of all the elements or steps

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of the claimed combination which are data sheet is part of the application for conventional or known, which it has been submitted. (2) A phrase such as ‘‘wherein the im- (b) Bibliographic data. Bibliographic provement comprises,’’ and data as used in paragraph (a) of this (3) Those elements, steps and/or rela- section includes: tionships which constitute that portion (1) Inventor information. This informa- of the claimed combination which the tion includes the legal name, residence, applicant considers as the new or im- and mailing address of the inventor or proved portion. each joint inventor. (f) If there are several claims, they (2) Correspondence information. This shall be numbered consecutively in Ar- information includes the correspond- abic numerals. ence address, which may be indicated (g) The least restrictive claim should by reference to a customer number, to be presented as claim number 1, and all which correspondence is to be directed dependent claims should be grouped to- (see § 1.33(a)). gether with the claim or claims to (3) Application information. This infor- which they refer to the extent prac- mation includes the title of the inven- ticable. tion, the total number of drawing (h) The claim or claims must com- sheets, a suggested drawing figure for mence on a separate physical sheet or publication (in a nonprovisional appli- electronic page. Any sheet including a cation), any docket number assigned to claim or portion of a claim may not the application, the type of application contain any other parts of the applica- (e.g., utility, plant, design, reissue, pro- tion or other material. visional), whether the application dis- (i) Where a claim sets forth a plu- closes any significant part of the sub- rality of elements or steps, each ele- ject matter of an application under a ment or step of the claim should be secrecy order pursuant to § 5.2 of this separated by a line indentation. chapter (see § 5.2(c)), and, for plant applications, the Latin name of the genus (35 U.S.C. 6; 15 U.S.C. 1113, 1126) and species of the plant claimed, as [31 FR 12922, Oct. 4, 1966, as amended at 36 FR well as the variety denomination. 12690, July 3, 1971; 37 FR 21995, Oct. 18, 1972; When information concerning the pre- 43 FR 4015, Jan. 31, 1978; 47 FR 41276, Sept. 17, viously filed application is required 1982; 61 FR 42803, Aug. 19, 1996; 68 FR 38628, under § 1.57(a), application information June 30, 2003; 70 FR 3891, Jan. 27, 2005; 72 FR also includes the reference to the pre- 46836, Aug. 21, 2007; 74 FR 52688, Oct. 14, 2009] viously filed application, indicating that the specification and any draw- § 1.76 Application data sheet. ings of the application are replaced by (a) Application data sheet. An applica- the reference to the previously filed ap- tion data sheet is a sheet or sheets that plication, and specifying the previously may be submitted in a provisional ap- filed application by application num- plication under 35 U.S.C. 111(b), a non- ber, filing date, and the intellectual provisional application under 35 U.S.C. property authority or country in which 111(a), a nonprovisional international the previously filed application was design application, or a national stage filed. application under 35 U.S.C. 371 and (4) Representative information. This in- must be submitted when required by formation includes the registration § 1.55 or 1.78 to claim priority to or the number of each practitioner having a benefit of a prior-filed application power of attorney in the application under 35 U.S.C. 119, 120, 121, 365, or 386. (preferably by reference to a customer An application data sheet must be ti- number). Providing this information in tled ‘‘Application Data Sheet.’’ An ap- the application data sheet does not plication data sheet must contain all of constitute a power of attorney in the the section headings listed in para- application (see § 1.32). graph (b) of this section, except as pro- (5) Domestic benefit information. This vided in paragraph (c)(2) of this sec- information includes the application tion, with any appropriate data for number, the filing date, the status (in- each section heading. If an application cluding patent number if available), data sheet is provided, the application and relationship of each application for

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which a benefit is claimed under 35 except that identification of informa- U.S.C. 119(e), 120, 121, 365(c), or 386(c). tion being changed is not required for Providing this information in the ap- an application data sheet included with plication data sheet constitutes the an initial submission under 35 U.S.C. specific reference required by 35 U.S.C. 371. 119(e) or 120 and § 1.78. (d) Inconsistencies between application (6) Foreign priority information. This data sheet and other documents. For in- information includes the application consistencies between information that number, country (or intellectual prop- is supplied by both an application data erty authority), and filing date of each sheet under this section and other doc- foreign application for which priority uments: is claimed. Providing this information (1) The most recent submission will in the application data sheet con- govern with respect to inconsistencies stitutes the claim for priority as re- as between the information provided in quired by 35 U.S.C. 119(b) and § 1.55. (7) Applicant information: This infor- an application data sheet, a designa- mation includes the name (either nat- tion of a correspondence address, or by ural person or juristic entity) and ad- the inventor’s oath or declaration, ex- dress of the legal representative, as- cept that: signee, person to whom the inventor is (i) The most recent application data under an obligation to assign the in- sheet will govern with respect to for- vention, or person who otherwise shows eign priority (§ 1.55) or domestic benefit sufficient proprietary interest in the (§ 1.78) claims; and matter who is the applicant under § 1.43 (ii) The naming of the inventorship is or § 1.46. Providing assignment infor- governed by § 1.41 and changes to mation in the application data sheet inventorship or the names of the inven- does not substitute for compliance tors is governed by § 1.48. with any requirement of part 3 of this (2) The information in the applica- chapter to have an assignment re- tion data sheet will govern when incon- corded by the Office. sistent with the information supplied (c) Correcting and updating an applica- at the same time by a designation of tion data sheet. (1) Information in a pre- correspondence address or the inven- viously submitted application data tor’s oath or declaration. The informa- sheet, inventor’s oath or declaration tion in the application data sheet will under § 1.63, § 1.64 or § 1.67, or otherwise govern when inconsistent with the in- of record, may be corrected or updated formation supplied at any time in a until payment of the issue fee by a new Patent Cooperation Treaty Request application data sheet providing cor- Form, Patent Law Treaty Model Inter- rected or updated information, except national Request Form, Patent Law that inventorship changes must com- Treaty Model International Request ply with the requirements of § 1.48, foreign priority and domestic benefit infor Recordation of Change in Name or formation changes must comply with Address Form, or Patent Law Treaty §§ 1.55 and 1.78, and correspondence ad- Model International Request for Rec- dress changes are governed by § 1.33(a). ordation of Change in Applicant or (2) An application data sheet pro- Owner Form. viding corrected or updated informa- (3) The Office will capture biblio- tion may include all of the sections graphic information from the applica- listed in paragraph (b) of this section tion data sheet. The Office will gen- or only those sections containing erally not review the inventor’s oath or changed or updated information. The declaration to determine if the biblio- application data sheet must include graphic information contained therein the section headings listed in para- is consistent with the bibliographic in- graph (b) of this section for each sec- formation provided in an application tion included in the application data data sheet. Incorrect bibliographic in- sheet, and must identify the informa- formation contained in an application tion that is being changed, with under- data sheet may be corrected as pro- lining for insertions, and strike- vided in paragraph (c)(1) of this sec- through or brackets for text removed, tion.

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(e) Signature requirement. An applica- Treaty Request Form. If a Patent Co- tion data sheet must be signed in com- operation Treaty Request Form is sub- pliance with § 1.33(b). An unsigned ap- mitted in an application under 35 plication data sheet will be treated U.S.C. 111, the Patent Cooperation only as a transmittal letter. Treaty Request Form must be accom- (f) Patent Law Treaty Model Inter- panied by a clear indication that treat- national Forms. The requirement in ment of the application as an applica- § 1.55 or § 1.78 for the presentation of a tion under 35 U.S.C. 111 is desired. priority or benefit claim under 35 [65 FR 54668, Sept. 8, 2000, as amended at 65 U.S.C. 119, 120, 121, or 365 in an applica- FR 57054, Sept. 20, 2000; 69 FR 56540, Sept. 21, tion data sheet will be satisfied by the 2004; 70 FR 54266, Sept. 14, 2005;; 72 FR 46837, presentation of such priority or benefit Aug. 21, 2007; 74 FR 52689, Oct. 14, 2009; 77 FR claim in the Patent Law Treaty Model 48820, Aug. 14, 2012; 78 FR 11055, Feb. 14, 2013; International Request Form, and the 78 FR 62402, Oct. 21, 2013; 80 FR 17959, Apr. 2, requirement in § 1.57(a) for a reference 2015] to the previously filed application in § 1.77 Arrangement of application ele- an application data sheet will be satis- ments. fied by the presentation of such ref- (a) The elements of the application, erence to the previously filed applica- if applicable, should appear in the fol- tion in the Patent Law Treaty Model lowing order: International Request Form. The re- (1) Utility application transmittal quirement in § 1.46 for the presentation form. of the name of the applicant under 35 (2) Fee transmittal form. U.S.C. 118 in an application data sheet (3) Application data sheet (see § 1.76). will be satisfied by the presentation of (4) Specification. the name of the applicant in the Pat- (5) Drawings. ent Law Treaty Model International (6) The inventor’s oath or declara- Request Form, Patent Law Treaty tion. Model International Request for Rec- (b) The specification should include ordation of Change in Name or Address the following sections in order: Form, or Patent Law Treaty Model (1) Title of the invention, which may International Request for Recordation be accompanied by an introductory of Change in Applicant or Owner Form, portion stating the name, citizenship, as applicable. and residence of the applicant (unless (g) Patent Cooperation Treaty Request included in the application data sheet). Form. The requirement in § 1.78 for the (2) Cross-reference to related applica- presentation of a benefit claim under 35 tions. U.S.C. 119, 120, 121, or 365 in an applica- (3) Statement regarding federally tion data sheet will be satisfied in a na- sponsored research or development. tional stage application under 35 U.S.C. (4) The names of the parties to a 371 by the presentation of such benefit joint research agreement. claim in the Patent Cooperation Trea- (5) Reference to a ‘‘Sequence List- ty Request Form contained in the ing,’’ a table, or a computer program international application or the pres- listing appendix submitted on a com- ence of such benefit claim on the front pact disc and an incorporation-by-ref- page of the publication of the inter- erence of the material on the compact national application under PCT Article disc (see § 1.52(e)(5)). The total number 21(2). The requirement in § 1.55 or § 1.78 of compact discs including duplicates for the presentation of a priority or and the files on each compact disc shall benefit claim under 35 U.S.C. 119, 120, be specified. 121, or 365 in an application data sheet (6) Statement regarding prior disclo- and the requirement in § 1.46 for the sures by the inventor or a joint inven- presentation of the name of the appli- tor. cant under 35 U.S.C. 118 in an applica- (7) Background of the invention. tion data sheet will be satisfied in an (8) Brief summary of the invention. application under 35 U.S.C. 111 by the (9) Brief description of the several presentation of such priority or benefit views of the drawing. claim and presentation of the name of (10) Detailed description of the inven- the applicant in a Patent Cooperation tion.

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(11) A claim or claims. sional application number (consisting (12) Abstract of the disclosure. of series code and serial number). If the (13) ‘‘Sequence Listing,’’ if on paper later-filed application is a nonprovi- (see §§ 1.821 through 1.825). sional application, the reference re- (c) The text of the specification sec- quired by this paragraph must be in- tions defined in paragraphs (b)(1) cluded in an application data sheet through (b)(12) of this section, if appli- (§ 1.76(b)(5)). cable, should be preceded by a section (4) The reference required by para- heading in uppercase and without un- graph (a)(3) of this section must be sub- derlining or bold type. mitted during the pendency of the [65 FR 54668, Sept. 8, 2000, as amended at 70 later-filed application. If the later-filed FR 1823, Jan. 11, 2005; 77 FR 48820, Aug. 14, application is an application filed 2012; 78 FR 11055, Feb. 14, 2013] under 35 U.S.C. 111(a), this reference must also be submitted within the § 1.78 Claiming benefit of earlier filing later of four months from the actual date and cross-references to other filing date of the later-filed application applications. or sixteen months from the filing date (a) Claims under 35 U.S.C. 119(e) for the of the prior-filed provisional applica- benefit of a prior-filed provisional appli- tion. If the later-filed application is a cation. An applicant in a nonprovi- nonprovisional application entering sional application, other than for a de- the national stage from an inter- sign patent, or an international appli- national application under 35 U.S.C. cation designating the United States 371, this reference must also be sub- may claim the benefit of one or more mitted within the later of four months prior-filed provisional applications from the date on which the national under the conditions set forth in 35 stage commenced under 35 U.S.C. 371(b) U.S.C. 119(e) and this section. or (f) (§ 1.491(a)), four months from the (1) The nonprovisional application or date of the initial submission under 35 international application designating U.S.C. 371 to enter the national stage, the United States must be: or sixteen months from the filing date (i) Filed not later than twelve of the prior-filed provisional applica- months after the date on which the tion. Except as provided in paragraph provisional application was filed, sub- (c) of this section, failure to timely ject to paragraph (b) of this section (a submit the reference is considered a subsequent application); or waiver of any benefit under 35 U.S.C. (ii) Entitled to claim the benefit 119(e) of the prior-filed provisional ap- under 35 U.S.C. 120, 121, or 365(c) of a plication. The time periods in this subsequent application that was filed paragraph do not apply if the later- within the period set forth in para- filed application is: graph (a)(1)(i) of this section. (i) An application filed under 35 (2) Each prior-filed provisional appli- U.S.C. 111(a) before November 29, 2000; cation must name the inventor or a or joint inventor named in the later-filed (ii) An international application filed application as the inventor or a joint under 35 U.S.C. 363 before November 29, inventor. In addition, each prior-filed 2000. provisional application must be enti- (5) If the prior-filed provisional appli- tled to a filing date as set forth in cation was filed in a language other § 1.53(c), and the basic filing fee set than English and both an English-lan- forth in § 1.16(d) must have been paid guage translation of the prior-filed pro- for such provisional application within visional application and a statement the time period set forth in § 1.53(g). that the translation is accurate were (3) Any nonprovisional application or not previously filed in the prior-filed international application designating provisional application, the applicant the United States that claims the ben- will be notified and given a period of efit of one or more prior-filed provi- time within which to file, in the prior- sional applications must contain, or be filed provisional application, the trans- amended to contain, a reference to lation and the statement. If the notice each such prior-filed provisional appli- is mailed in a pending nonprovisional cation, identifying it by the provi- application, a timely reply to such a

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notice must include the filing in the under PCT Rule 26bis.3 for an inter- nonprovisional application of either a national application, or upon petition confirmation that the translation and pursuant to this paragraph, if the delay statement were filed in the provisional in filing the subsequent nonprovisional application, or an application data application or international applica- sheet (§ 1.76(b)(5)) eliminating the ref- tion designating the United States erence under paragraph (a)(3) of this within the period set forth in para- section to the prior-filed provisional graph (a)(1)(i) of this section was unin- application, or the nonprovisional ap- tentional. plication will be abandoned. The trans- (1) A petition to restore the benefit of lation and statement may be filed in a provisional application under this the provisional application, even if the paragraph filed on or after May 13, 2015, provisional application has become must be filed in the subsequent appli- abandoned. cation, and any petition to restore the (6) If a nonprovisional application benefit of a provisional application filed on or after March 16, 2013, claims under this paragraph must include: the benefit of the filing date of a provi- (i) The reference required by 35 sional application filed prior to March U.S.C. 119(e) to the prior-filed provi- 16, 2013, and also contains, or contained sional application in an application at any time, a claim to a claimed in- data sheet (§ 1.76(b)(5)) identifying it by vention that has an effective filing provisional application number (con- date as defined in § 1.109 that is on or sisting of series code and serial num- after March 16, 2013, the applicant must ber), unless previously submitted; provide a statement to that effect (ii) The petition fee as set forth in within the later of four months from § 1.17(m); and the actual filing date of the nonprovi- (iii) A statement that the delay in sional application, four months from filing the subsequent nonprovisional the date of entry into the national application or international applica- stage as set forth in § 1.491 in an inter- tion designating the United States national application, sixteen months within the twelve-month period set from the filing date of the prior-filed forth in paragraph (a)(1)(i) of this sec- provisional application, or the date tion was unintentional. The Director that a first claim to a claimed inven- may require additional information tion that has an effective filing date on where there is a question whether the or after March 16, 2013, is presented in delay was unintentional. the nonprovisional application. An ap- (2) The restoration of the right of pri- plicant is not required to provide such ority under PCT Rule 26bis.3 to a provi- a statement if the applicant reasonably sional application does not affect the believes on the basis of information al- requirement to include the reference ready known to the individuals des- required by paragraph (a)(3) of this sec- ignated in § 1.56(c) that the nonprovi- tion to the provisional application in a sional application does not, and did not national stage application under 35 at any time, contain a claim to a U.S.C. 371 within the time period pro- claimed invention that has an effective vided by paragraph (a)(4) of this section filing date on or after March 16, 2013. to avoid the benefit claim being consid- (b) Delayed filing of the subsequent ered waived. nonprovisional application or inter- (c) Delayed claims under 35 U.S.C. national application designating the 119(e) for the benefit of a prior-filed provi- United States. If the subsequent non- sional application. If the reference re- provisional application or inter- quired by 35 U.S.C. 119(e) and para- national application designating the graph (a)(3) of this section is presented United States has a filing date which is in an application after the time period after the expiration of the twelve- provided by paragraph (a)(4) of this sec- month period set forth in paragraph tion, the claim under 35 U.S.C. 119(e) (a)(1)(i) of this section but within two for the benefit of a prior-filed provi- months from the expiration of the pe- sional application may be accepted if riod set forth in paragraph (a)(1)(i) of the reference identifying the prior-filed this section, the benefit of the provi- application by provisional application sional application may be restored number was unintentionally delayed. A

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petition to accept an unintentionally forth in § 1.16 has been paid within the delayed claim under 35 U.S.C. 119(e) for pendency of the application. the benefit of a prior-filed provisional (2) Except for a continued prosecu- application must be accompanied by: tion application filed under § 1.53(d), (1) The reference required by 35 any nonprovisional application, inter- U.S.C. 119(e) and paragraph (a)(3) of national application designating the this section to the prior-filed provi- United States, or international design sional application, unless previously application designating the United submitted; States that claims the benefit of one or (2) The petition fee as set forth in more prior-filed nonprovisional appli- § 1.17(m); and cations, international applications des- (3) A statement that the entire delay ignating the United States, or inter- between the date the benefit claim was national design applications desig- due under paragraph (a)(4) of this sec- nating the United States must contain tion and the date the benefit claim was or be amended to contain a reference to filed was unintentional. The Director each such prior-filed application, iden- may require additional information tifying it by application number (con- where there is a question whether the sisting of the series code and serial delay was unintentional. number), international application (d) Claims under 35 U.S.C. 120, 121, number and international filing date, 365(c), or 386(c) for the benefit of a prior- or international registration number filed nonprovisional application, inter- and filing date under § 1.1023. If the national application, or international de- later-filed application is a nonprovi- sign application. An applicant in a non- sional application, the reference re- provisional application (including a quired by this paragraph must be in- nonprovisional application resulting cluded in an application data sheet from an international application or (§ 1.76(b)(5)). The reference also must international design application), an identify the relationship of the applica- international application designating tions, namely, whether the later-filed the United States, or an international application is a continuation, divi- design application designating the sional, or continuation-in-part of the United States may claim the benefit of prior-filed nonprovisional application, one or more prior-filed copending non- international application, or inter- provisional applications, international national design application. applications designating the United (3)(i) The reference required by 35 States, or international design applica- U.S.C. 120 and paragraph (d)(2) of this tions designating the United States section must be submitted during the under the conditions set forth in 35 pendency of the later-filed application. U.S.C. 120, 121, 365(c), or 386(c) and this (ii) If the later-filed application is an section. application filed under 35 U.S.C. 111(a), (1) Each prior-filed application must this reference must also be submitted name the inventor or a joint inventor within the later of four months from named in the later-filed application as the actual filing date of the later-filed the inventor or a joint inventor. In ad- application or sixteen months from the dition, each prior-filed application filing date of the prior-filed applica- must either be: tion. If the later-filed application is a (i) An international application enti- nonprovisional application entering tled to a filing date in accordance with the national stage from an inter- PCT Article 11 and designating the national application under 35 U.S.C. United States; 371, this reference must also be sub- (ii) An international design applica- mitted within the later of four months tion entitled to a filing date in accord- from the date on which the national ance with § 1.1023 and designating the stage commenced under 35 U.S.C. 371(b) United States; or or (f) (§ 1.491(a)), four months from the (iii) A nonprovisional application date of the initial submission under 35 under 35 U.S.C. 111(a) that is entitled U.S.C. 371 to enter the national stage, to a filing date as set forth in § 1.53(b) or sixteen months from the filing date or (d) for which the basic filing fee set of the prior-filed application. The time

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periods in this paragraph do not apply after March 16, 2013, is presented in the if the later-filed application is: later-filed application. An applicant is (A) An application for a design pat- not required to provide such a state- ent; ment if either: (B) An application filed under 35 (i) The application claims the benefit U.S.C. 111(a) before November 29, 2000; of a nonprovisional application in or which a statement under § 1.55(k), para- (C) An international application filed graph (a)(6) of this section, or this under 35 U.S.C. 363 before November 29, paragraph that the application con- 2000. tains, or contained at any time, a (iii) Except as provided in paragraph claim to a claimed invention that has (e) of this section, failure to timely an effective filing date on or after submit the reference required by 35 March 16, 2013 has been filed; or U.S.C. 120 and paragraph (d)(2) of this (ii) The applicant reasonably believes section is considered a waiver of any on the basis of information already benefit under 35 U.S.C. 120, 121, 365(c), known to the individuals designated in or 386(c) to the prior-filed application. § 1.56(c) that the later filed application (4) The request for a continued pros- does not, and did not at any time, con- ecution application under § 1.53(d) is tain a claim to a claimed invention the specific reference required by 35 that has an effective filing date on or U.S.C. 120 to the prior-filed application. after March 16, 2013. The identification of an application by (7) Where benefit is claimed under 35 application number under this section U.S.C. 120, 121, 365(c), or 386(c) to an is the identification of every applica- international application or an inter- tion assigned that application number national design application which des- necessary for a specific reference re- ignates but did not originate in the quired by 35 U.S.C. 120 to every such United States, the Office may require a application assigned that application certified copy of such application to- number. gether with an English translation (5) Cross-references to other related applications may be made when appro- thereof if filed in another language. priate (see § 1.14), but cross-references (e) Delayed claims under 35 U.S.C. 120, to applications for which a benefit is 121, 365(c), or 386(c) for the benefit of a not claimed under title 35, United prior-filed nonprovisional application, States Code, must not be included in international application, or international an application data sheet (§ 1.76(b)(5)). design application. If the reference re- (6) If a nonprovisional application quired by 35 U.S.C. 120 and paragraph filed on or after March 16, 2013, other (d)(2) of this section is presented after than a nonprovisional international de- the time period provided by paragraph sign application, claims the benefit of (d)(3) of this section, the claim under 35 the filing date of a nonprovisional ap- U.S.C. 120, 121, 365(c), or 386(c) for the plication or an international applica- benefit of a prior-filed copending non- tion designating the United States provisional application, international filed prior to March 16, 2013, and also application designating the United contains, or contained at any time, a States, or international design applica- claim to a claimed invention that has tion designating the United States may an effective filing date as defined in be accepted if the reference required by § 1.109 that is on or after March 16, 2013, paragraph (d)(2) of this section was un- the applicant must provide a statement intentionally delayed. A petition to ac- to that effect within the later of four cept an unintentionally delayed claim months from the actual filing date of under 35 U.S.C. 120, 121, 365(c), or 386(c) the later-filed application, four months for the benefit of a prior-filed applica- from the date of entry into the nation must be accompanied by: tional stage as set forth in § 1.491 in an (1) The reference required by 35 international application, sixteen U.S.C. 120 and paragraph (d)(2) of this months from the filing date of the section to the prior-filed application, prior-filed application, or the date that unless previously submitted; a first claim to a claimed invention (2) The petition fee as set forth in that has an effective filing date on or § 1.17(m); and

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(3) A statement that the entire delay (a)(3) and (d)(2) of this section will be between the date the benefit claim was satisfied by the presentation of such due under paragraph (d)(3) of this sec- specific reference in the first sen- tion and the date the benefit claim was tence(s) of the specification following filed was unintentional. The Director the title in a nonprovisional applica- may require additional information tion filed under 35 U.S.C. 111(a) before where there is a question whether the September 16, 2012, or resulting from delay was unintentional. an international application filed (f) Applications containing patentably under 35 U.S.C. 363 before September indistinct claims. Where two or more ap- 16, 2012. The provisions of this para- plications filed by the same applicant graph do not apply to any specific ref- or assignee contain patentably indis- erence submitted for a petition under tinct claims, elimination of such paragraph (b) of this section to restore claims from all but one application the benefit of a provisional application. may be required in the absence of good (i) Petitions required in international and sufficient reason for their reten- applications. If a petition under para- tion during pendency in more than one graph (b), (c), or (e) of this section is application. required in an international applica- (g) Applications or patents under reex- tion that was not filed with the United amination naming different inventors and States Receiving Office and is not a containing patentably indistinct claims. If nonprovisional application, then such an application or a patent under reex- petition may be filed in the earliest amination and at least one other appli- nonprovisional application that claims cation naming different inventors are benefit under 35 U.S.C. 120, 121, 365(c), owned by the same person and contain or 386(c) to the international applica- patentably indistinct claims, and there tion and will be treated as having been is no statement of record indicating filed in the international application. that the claimed inventions were com- (j) Benefit under 35 U.S.C. 386(c). Ben- monly owned or subject to an obliga- efit under 35 U.S.C. 386(c) with respect tion of assignment to the same person to an international design application on the effective filing date (as defined is applicable only to nonprovisional ap- in § 1.109), or on the date of the inven- plications, international applications, tion, as applicable, of the later claimed and international design applications invention, the Office may require the filed on or after May 13, 2015, and pat- applicant or assignee to state whether ents issuing thereon. the claimed inventions were commonly owned or subject to an obligation of as- (k) Time periods in this section. The signment to the same person on such time periods set forth in this section date, and if not, indicate which named are not extendable, but are subject to inventor is the prior inventor, as appli- 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule cable. Even if the claimed inventions 80.5, and Hague Agreement Rule 4(4). were commonly owned, or subject to an [80 FR 17959, Apr. 2, 2015] obligation of assignment to the same person on the effective filing date (as § 1.79 [Reserved] defined in § 1.109), or on the date of the invention, as applicable, of the later THE DRAWINGS claimed invention, the patentably indistinct claims may be rejected under AUTHORITY: Secs. 1.81 to 1.88 also issued the doctrine of double patenting in under 35 U.S.C. 113. view of such commonly owned or assigned applications or patents under § 1.81 Drawings required in patent ap- reexamination. plication. (h) Applications filed before September (a) The applicant for a patent is re- 16, 2012. Notwithstanding the require- quired to furnish a drawing of the in- ment in paragraphs (a)(3) and (d)(2) of vention where necessary for the under- this section that any specific reference standing of the subject matter sought to a prior-filed application be pre- to be patented. Since corrections are sented in an application data sheet the responsibility of the applicant, the (§ 1.76), this requirement in paragraph original drawing(s) should be retained

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by the applicant for any necessary fu- require such additional illustration ture correction. within a time period of not less than (b) Drawings may include illustra- two months from the date of the send- tions which facilitate an understanding ing of a notice thereof. Such correc- of the invention (for example, flow tions are subject to the requirements sheets in cases of processes, and dia- of § 1.81(d). grammatic views). [31 FR 12923, Oct. 4, 1966, as amended at 43 FR (c) Whenever the nature of the sub- 4015, Jan. 31, 1978; 60 FR 20226, Apr. 25, 1995; ject matter sought to be patented ad- 69 FR 56541, Sept. 21, 2004; 78 FR 62405, Oct. mits of illustration by a drawing with- 21, 2013] out its being necessary for the understanding of the subject matter and the § 1.84 Standards for drawings. applicant has not furnished such a (a) Drawings. There are two accept- drawing, the examiner will require its able categories for presenting drawings submission within a time period of not in utility and design patent applica- less than two months from the date of tions. the sending of a notice thereof. (1) Black ink. Black and white draw- (d) Drawings submitted after the fil- ings are normally required. India ink, ing date of the application may not be or its equivalent that secures solid used to overcome any insufficiency of black lines, must be used for drawings; the specification due to lack of an ena- or bling disclosure or otherwise inad- (2) Color. Color drawings are per- equate disclosure therein, or to supple- mitted in design applications. Where a ment the original disclosure thereof for design application contains color draw- the purpose of interpretation of the ings, the application must include the scope of any claim. number of sets of color drawings re- [43 FR 4015, Jan. 31, 1978, as amended at 53 quired by paragraph (a)(2)(ii) of this FR 47808, Nov. 28, 1988; 77 FR 48821, Aug. 14, section and the specification must con- 2012; 78 FR 62404, Oct. 21, 2013] tain the reference required by paragraph (a)(2)(iii) of this section. On rare § 1.83 Content of drawing. occasions, color drawings may be nec- (a) The drawing in a nonprovisional essary as the only practical medium by application must show every feature of which to disclose the subject matter the invention specified in the claims. sought to be patented in a utility pat- However, conventional features dis- ent application. The color drawings closed in the description and claims, must be of sufficient quality such that where their detailed illustration is not all details in the drawings are repro- essential for a proper understanding of ducible in black and white in the print- the invention, should be illustrated in ed patent. Color drawings are not per- the drawing in the form of a graphical mitted in international applications drawing symbol or a labeled represen- (see PCT Rule 11.13). The Office will ac- tation (e.g., a labeled rectangular box). cept color drawings in utility patent In addition, tables that are included in applications only after granting a peti- the specification and sequences that tion filed under this paragraph explain- are included in sequence listings should ing why the color drawings are nec- not be duplicated in the drawings. essary. Any such petition must include (b) When the invention consists of an the following: improvement on an old machine the (i) The fee set forth in § 1.17(h); drawing must when possible exhibit, in (ii) One (1) set of color drawings if one or more views, the improved por- submitted via the Office electronic fil- tion itself, disconnected from the old ing system or three (3) sets of color structure, and also in another view, so drawings if not submitted via the Of- much only of the old structure as will fice electronic filing system; and suffice to show the connection of the (iii) An amendment to the specifica- invention therewith. tion to insert (unless the specification (c) Where the drawings in a nonprovi- contains or has been previously amend- sional application do not comply with ed to contain) the following language the requirements of paragraphs (a) and as the first paragraph of the brief de- (b) of this section, the examiner shall scription of the drawings:

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The patent or application file contains at copy must be clearly labeled as ‘‘An- least one drawing executed in color. Copies notated Sheet’’ pursuant to § 1.121(d)(1). of this patent or patent application publica- (d) Graphic forms in drawings. Chem- tion with color drawing(s) will be provided ical or mathematical formulae, tables, by the Office upon request and payment of and waveforms may be submitted as the necessary fee. drawings, and are subject to the same (b) Photographs—(1) Black and white. requirements as drawings. Each chem- Photographs, including photocopies of ical or mathematical formula must be photographs, are not ordinarily per- labeled as a separate figure, using mitted in utility and design patent ap- brackets when necessary, to show that plications. The Office will accept pho- information is properly integrated. tographs in utility and design patent Each group of waveforms must be pre- applications, however, if photographs sented as a single figure, using a com- are the only practicable medium for il- mon vertical axis with time extending lustrating the claimed invention. For along the horizontal axis. Each indi- example, photographs or vidual waveform discussed in the speci- photomicrographs of: electrophoresis fication must be identified with a sepa- gels, blots (e.g., immunological, west- rate letter designation adjacent to the ern, Southern, and northern), vertical axis. autoradiographs, cell cultures (stained (e) Type of paper. Drawings submitted and unstained), histological tissue to the Office must be made on paper cross sections (stained and unstained), which is flexible, strong, white, animals, plants, in vivo imaging, thin smooth, non-shiny, and durable. All layer chromatography plates, crys- sheets must be reasonably free from talline structures, and, in a design pat- cracks, creases, and folds. Only one ent application, ornamental effects, side of the sheet may be used for the are acceptable. If the subject matter of drawing. Each sheet must be reason- the application admits of illustration ably free from erasures and must be free from alterations, overwritings, and by a drawing, the examiner may re- interlineations. Photographs must be quire a drawing in place of the photo- developed on paper meeting the sheet- graph. The photographs must be of suf- size requirements of paragraph (f) of ficient quality so that all details in the this section and the margin require- photographs are reproducible in the ments of paragraph (g) of this section. printed patent. See paragraph (b) of this section for (2) Color photographs. Color photo- other requirements for photographs. graphs will be accepted in utility and (f) Size of paper. All drawing sheets in design patent applications if the condi- an application must be the same size. tions for accepting color drawings and One of the shorter sides of the sheet is black and white photographs have been regarded as its top. The size of the satisfied. See paragraphs (a)(2) and sheets on which drawings are made (b)(1) of this section. must be: (c) Identification of drawings. Identi- (1) 21.0 cm. by 29.7 cm. (DIN size A4), fying indicia should be provided, and if or provided, should include the title of the (2) 21.6 cm. by 27.9 cm. (81⁄2 by 11 invention, inventor’s name, and appli- inches). cation number, or docket number (if (g) Margins. The sheets must not con- any) if an application number has not tain frames around the sight (i.e., the been assigned to the application. If this usable surface), but should have scan information is provided, it must be target points (i.e., cross-hairs) printed placed on the front of each sheet with- on two catercorner margin corners. in the top margin. Each drawing sheet Each sheet must include a top margin submitted after the filing date of an of at least 2.5 cm. (1 inch), a left side application must be identified as either margin of at least 2.5 cm. (1 inch), a ‘‘Replacement Sheet’’ or ‘‘New Sheet’’ right side margin of at least 1.5 cm. (5⁄8 pursuant to § 1.121(d). If a marked-up inch), and a bottom margin of at least copy of any amended drawing figure in- 1.0 cm. (3⁄8 inch), thereby leaving a cluding annotations indicating the sight no greater than 17.0 cm. by 26.2 changes made is filed, such marked-up cm. on 21.0 cm. by 29.7 cm. (DIN size

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A4) drawing sheets, and a sight no relationship between the different greater than 17.6 cm. by 24.4 cm. (615⁄16 parts must be clear and unambiguous. by 95⁄8 inches) on 21.6 cm. by 27.9 cm. (3) Sectional views. The plane upon (81⁄2 by 11 inch) drawing sheets. which a sectional view is taken should (h) Views. The drawing must contain be indicated on the view from which as many views as necessary to show the the section is cut by a broken line. The invention. The views may be plan, ele- ends of the broken line should be des- vation, section, or perspective views. ignated by Arabic or Roman numerals Detail views of portions of elements, on corresponding to the view number of a larger scale if necessary, may also be the sectional view, and should have ar- used. All views of the drawing must be rows to indicate the direction of sight. grouped together and arranged on the Hatching must be used to indicate sec- sheet(s) without wasting space, pref- tion portions of an object, and must be erably in an upright position, clearly made by regularly spaced oblique par- separated from one another, and must allel lines spaced sufficiently apart to not be included in the sheets con- enable the lines to be distinguished taining the specifications, claims, or without difficulty. Hatching should not abstract. Views must not be connected impede the clear reading of the ref- by projection lines and must not con- erence characters and lead lines. If it is tain center lines. Waveforms of elec- not possible to place reference char- trical signals may be connected by acters outside the hatched area, the dashed lines to show the relative tim- hatching may be broken off wherever ing of the waveforms. reference characters are inserted. (1) Exploded views. Exploded views, Hatching must be at a substantial angle to the surrounding axes or prin- with the separated parts embraced by a ° bracket, to show the relationship or cipal lines, preferably 45 . A cross sec- order of assembly of various parts are tion must be set out and drawn to show all of the materials as they are shown permissible. When an exploded view is in the view from which the cross sec- shown in a figure which is on the same tion was taken. The parts in cross sec- sheet as another figure, the exploded tion must show proper material(s) by view should be placed in brackets. hatching with regularly spaced parallel (2) Partial views. When necessary, a oblique strokes, the space between view of a large machine or device in its strokes being chosen on the basis of entirety may be broken into partial the total area to be hatched. The var- views on a single sheet, or extended ious parts of a cross section of the over several sheets if there is no loss in same item should be hatched in the facility of understanding the view. Par- same manner and should accurately tial views drawn on separate sheets and graphically indicate the nature of must always be capable of being linked the material(s) that is illustrated in edge to edge so that no partial view cross section. The hatching of jux- contains parts of another partial view. taposed different elements must be an- A smaller scale view should be included gled in a different way. In the case of showing the whole formed by the par- large areas, hatching may be confined tial views and indicating the positions to an edging drawn around the entire of the parts shown. When a portion of a inside of the outline of the area to be view is enlarged for magnification pur- hatched. Different types of hatching poses, the view and the enlarged view should have different conventional must each be labeled as separate views. meanings as regards the nature of a (i) Where views on two or more material seen in cross section. sheets form, in effect, a single com- (4) Alternate position. A moved posi- plete view, the views on the several tion may be shown by a broken line su- sheets must be so arranged that the perimposed upon a suitable view if this complete figure can be assembled with- can be done without crowding; other- out concealing any part of any of the wise, a separate view must be used for views appearing on the various sheets. this purpose. (ii) A very long view may be divided (5) Modified forms. Modified forms of into several parts placed one above the construction must be shown in sepa- other on a single sheet. However, the rate views.

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(i) Arrangement of views. One view the same drawing where different must not be placed upon another or thicknesses have a different meaning. within the outline of another. All views (m) Shading. The use of shading in on the same sheet should stand in the views is encouraged if it aids in under- same direction and, if possible, stand standing the invention and if it does so that they can be read with the sheet not reduce legibility. Shading is used held in an upright position. If views to indicate the surface or shape of wider than the width of the sheet are spherical, cylindrical, and conical ele- necessary for the clearest illustration ments of an object. Flat parts may also of the invention, the sheet may be be lightly shaded. Such shading is pre- turned on its side so that the top of the ferred in the case of parts shown in per- sheet, with the appropriate top margin spective, but not for cross sections. See to be used as the heading space, is on paragraph (h)(3) of this section. Spaced the right-hand side. Words must appear lines for shading are preferred. These in a horizontal, left-to-right fashion lines must be thin, as few in number as when the page is either upright or practicable, and they must contrast turned so that the top becomes the with the rest of the drawings. As a sub- right side, except for graphs utilizing stitute for shading, heavy lines on the standard scientific convention to de- shade side of objects can be used except note the axis of abscissas (of X) and the where they superimpose on each other axis of ordinates (of Y). or obscure reference characters. Light should come from the upper left corner (j) Front page view. The drawing must at an angle of 45°. Surface delineations contain as many views as necessary to should preferably be shown by proper show the invention. One of the views shading. Solid black shading areas are should be suitable for inclusion on the not permitted, except when used to front page of the patent application represent bar graphs or color. publication and patent as the illustra- (n) Symbols. Graphical drawing sym- tion of the invention. Views must not bols may be used for conventional ele- be connected by projection lines and ments when appropriate. The elements must not contain center lines. Appli- for which such symbols and labeled cant may suggest a single view (by fig- representations are used must be ade- ure number) for inclusion on the front quately identified in the specification. page of the patent application publica- Known devices should be illustrated by tion and patent. symbols which have a universally rec- (k) Scale. The scale to which a draw- ognized conventional meaning and are ing is made must be large enough to generally accepted in the art. Other show the mechanism without crowding symbols which are not universally rec- when the drawing is reduced in size to ognized may be used, subject to ap- two-thirds in reproduction. Indications proval by the Office, if they are not such as ‘‘actual size’’ or ‘‘scale 1⁄2’’ on likely to be confused with existing con- the drawings are not permitted since ventional symbols, and if they are these lose their meaning with repro- readily identifiable. duction in a different format. (o) Legends. Suitable descriptive leg- (l) Character of lines, numbers, and let- ends may be used subject to approval ters. All drawings must be made by a by the Office, or may be required by process which will give them satisfac- the examiner where necessary for un- tory reproduction characteristics. derstanding of the drawing. They Every line, number, and letter must be should contain as few words as pos- durable, clean, black (except for color sible. drawings), sufficiently dense and dark, (p) Numbers, letters, and reference char- and uniformly thick and well-defined. acters. (1) Reference characters (numer- The weight of all lines and letters must als are preferred), sheet numbers, and be heavy enough to permit adequate review numbers must be plain and leg- production. This requirement applies ible, and must not be used in associa- to all lines however fine, to shading, tion with brackets or inverted commas, and to lines representing cut surfaces or enclosed within outlines, e.g., encir- in sectional views. Lines and strokes of cled. They must be oriented in the different thicknesses may be used in same direction as the view so as to

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avoid having to rotate the sheet. Ref- (1) On a lead line, a freestanding erence characters should be arranged arrow to indicate the entire section to- to follow the profile of the object de- wards which it points; picted. (2) On a lead line, an arrow touching (2) The English alphabet must be a line to indicate the surface shown by used for letters, except where another the line looking along the direction of alphabet is customarily used, such as the arrow; or the Greek alphabet to indicate angles, (3) To show the direction of move- wavelengths, and mathematical for- ment. mulas. (s) Copyright or Mask Work Notice. A (3) Numbers, letters, and reference copyright or mask work notice may ap- characters must measure at least .32 pear in the drawing, but must be placed cm. (1⁄8 inch) in height. They should not within the sight of the drawing imme- be placed in the drawing so as to inter- diately below the figure representing fere with its comprehension. Therefore, the copyright or mask work material they should not cross or mingle with and be limited to letters having a print the lines. They should not be placed size of .32 cm. to .64 cm. (1⁄8 to 1⁄4 upon hatched or shaded surfaces. When inches) high. The content of the notice necessary, such as indicating a surface must be limited to only those elements or cross section, a reference character provided for by law. For example, © may be underlined and a blank space ‘‘ 1983 John Doe’’ (17 U.S.C. 401) and may be left in the hatching or shading ‘‘*M* John Doe’’ (17 U.S.C. 909) would where the character occurs so that it be properly limited and, under current appears distinct. statutes, legally sufficient notices of copyright and mask work, respectively. (4) The same part of an invention ap- Inclusion of a copyright or mask work pearing in more than one view of the notice will be permitted only if the au- drawing must always be designated by thorization language set forth in the same reference character, and the § 1.71(e) is included at the beginning same reference character must never (preferably as the first paragraph) of be used to designate different parts. the specification. (5) Reference characters not men- (t) Numbering of sheets of drawings. tioned in the description shall not ap- The sheets of drawings should be num- pear in the drawings. Reference char- bered in consecutive Arabic numerals, acters mentioned in the description starting with 1, within the sight as de- must appear in the drawings. fined in paragraph (g) of this section. (q) Lead lines. Lead lines are those These numbers, if present, must be lines between the reference characters placed in the middle of the top of the and the details referred to. Such lines sheet, but not in the margin. The num- may be straight or curved and should bers can be placed on the right-hand be as short as possible. They must side if the drawing extends too close to originate in the immediate proximity the middle of the top edge of the usable of the reference character and extend surface. The drawing sheet numbering to the feature indicated. Lead lines must be clear and larger than the num- must not cross each other. Lead lines bers used as reference characters to are required for each reference char- avoid confusion. The number of each acter except for those which indicate sheet should be shown by two Arabic the surface or cross section on which numerals placed on either side of an they are placed. Such a reference char- oblique line, with the first being the acter must be underlined to make it sheet number, and the second being the clear that a lead line has not been left total number of sheets of drawings, out by mistake. Lead lines must be ex- with no other marking. ecuted in the same way as lines in the (u) Numbering of views. (1) The dif- drawing. See paragraph (l) of this sec- ferent views must be numbered in con- tion. secutive Arabic numerals, starting (r) Arrows. Arrows may be used at the with 1, independent of the numbering ends of the lines, provided that their of the sheets and, if possible, in the meaning is clear, as follows: order in which they appear on the

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drawing sheet(s). Partial views in- plication meets the requirements of tended to form one complete view, on § 1.84(e), (f), and (g) and is suitable for one or several sheets, must be identi- reproduction, but is not otherwise in fied by the same number followed by a compliance with § 1.84, the drawing capital letter. View numbers must be may be admitted for examination. preceded by the abbreviation ‘‘FIG.’’ (b) The Office will not release draw- Where only a single view is used in an ings for purposes of correction. If cor- application to illustrate the claimed rections are necessary, new corrected invention, it must not be numbered drawings must be submitted within the and the abbreviation ‘‘FIG.’’ must not time set by the Office. appear. (c) If a corrected drawing is required (2) Numbers and letters identifying or if a drawing does not comply with the views must be simple and clear and § 1.84 or an amended drawing submitted must not be used in association with under § 1.121(d) in a nonprovisional brackets, circles, or inverted commas. international design application does The view numbers must be larger than not comply with § 1.1026 at the time an the numbers used for reference char- application is allowed, the Office may acters. notify the applicant in a notice of al- (v) Security markings. Authorized se- lowability and set a three-month pe- curity markings may be placed on the riod of time from the mail date of the drawings provided they are outside the notice of allowability within which the sight, preferably centered in the top applicant must file a corrected drawing margin. in compliance with § 1.84 or 1.1026, as (w) Corrections. Any corrections on applicable, to avoid abandonment. This drawings submitted to the Office must time period is not extendable under be durable and permanent. § 1.136 (see § 1.136(c)). (x) Holes. No holes should be made by [65 FR 54670, Sept. 8, 2000, as amended at 65 applicant in the drawing sheets. FR 57055, Sept. 20, 2000; 69 FR 56541, Sept. 21, (y) Types of drawings. See § 1.152 for 2004; 78 FR 62405, Oct. 21, 2013; 80 FR 17962, design drawings, § 1.1026 for inter- Apr. 2, 2015] national design reproductions, § 1.165 for plant drawings, and § 1.173(a)(2) for § 1.88 [Reserved] reissue drawings. MODELS, EXHIBITS, SPECIMENS [58 FR 38723, July 20, 1993; 58 FR 45841, 45842, Aug. 31, 1993, as amended at 61 FR 42804, Aug. 19, 1996; 62 FR 53190, Oct. 10, 1997; 65 FR 54669, AUTHORITY: Secs. 1.91 to 1.95 also issued Sept. 8, 2000; 65 FR 57055, Sept. 20, 2000; 69 FR under 35 U.S.C. 114. 56541, Sept. 21, 2004; 70 FR 3891, Jan. 27, 2005; 78 FR 11057, Feb. 14, 2013; 80 FR 17962, Apr. 2, § 1.91 Models or exhibits not generally 2015] admitted as part of application or patent. § 1.85 Corrections to drawings. (a) A model or exhibit will not be ad- (a) A utility or plant application will mitted as part of the record of an appli- not be placed on the files for examina- cation unless it: tion until objections to the drawings (1) Substantially conforms to the re- have been corrected. Except as pro- quirements of § 1.52 or § 1.84; vided in § 1.215(c), any patent applica- (2) Is specifically required by the Of- tion publication will not include draw- fice; or ings filed after the application has (3) Is filed with a petition under this been placed on the files for examina- section including: tion. Unless applicant is otherwise no- (i) The fee set forth in § 1.17(h); and tified in an Office action, objections to (ii) An explanation of why entry of the drawings in a utility or plant appli- the model or exhibit in the file record cation will not be held in abeyance, is necessary to demonstrate patent- and a request to hold objections to the ability. drawings in abeyance will not be con- (b) Notwithstanding the provisions of sidered a bona fide attempt to advance paragraph (a) of this section, a model, the application to final action working model, or other physical ex- (§ 1.135(c)). If a drawing in a design ap- hibit may be required by the Office if

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deemed necessary for any purpose in (c) Where applicant is notified, pur- examination of the application. suant to paragraph (a) of this section, (c) Unless the model or exhibit sub- of the need to arrange for return of a stantially conforms to the require- model, exhibit or specimen, applicant ments of § 1.52 or § 1.84 under paragraph must arrange for the return within the (a)(1) of this section, it must be accom- period set in such notice, to avoid dis- panied by photographs that show mul- posal of the model, exhibit or specimen tiple views of the material features of by the Office. Extensions of time are the model or exhibit and that substan- available under § 1.136, except in the tially conform to the requirements of case of perishables. Failure to establish § 1.84. that the return of the item has been ar- [62 FR 53190, Oct. 10, 1997, as amended at 65 ranged for within the period set or fail- FR 54670, Sept. 8, 2000; 69 FR 56541, Sept. 21, ure to have the item removed from Of- 2004] fice storage within a reasonable amount of time notwithstanding any § 1.92 [Reserved] arrangement for return, will permit the Office to dispose of the model, ex- § 1.93 Specimens. hibit or specimen. When the invention relates to a com- [69 FR 56542, Sept. 21, 2004] position of matter, the applicant may be required to furnish specimens of the § 1.95 Copies of exhibits. composition, or of its ingredients or intermediates, for the purpose of in- Copies of models or other physical spection or experiment. exhibits will not ordinarily be furnished by the Office, and any model or § 1.94 Return of models, exhibits or exhibit in an application or patent specimens. shall not be taken from the Office ex- (a) Models, exhibits, or specimens cept in the custody of an employee of may be returned to the applicant if no the Office specially authorized by the longer necessary for the conduct of Director. business before the Office. When applicant is notified that a model, exhibit, § 1.96 Submission of computer pro- or specimen is no longer necessary for gram listings. the conduct of business before the Of- (a) General. Descriptions of the oper- fice and will be returned, applicant ation and general content of computer must arrange for the return of the program listings should appear in the model, exhibit, or specimen at the ap- description portion of the specifica- plicant’s expense. The Office will dis- tion. A computer program listing for pose of perishables without notice to the purpose of this section is defined as applicant unless applicant notifies the a printout that lists in appropriate se- Office upon submission of the model, quence the instructions, routines, and exhibit or specimen that a return is de- other contents of a program for a com- sired and makes arrangements for its puter. The program listing may be ei- return promptly upon notification by ther in machine or machine-inde- the Office that the model, exhibit or pendent (object or source) language specimen is no longer necessary for the which will cause a computer to perform conduct of business before the Office. a desired procedure or task such as (b) Applicant is responsible for re- solve a problem, regulate the flow of taining the actual model, exhibit, or work in a computer, or control or mon- specimen for the enforceable life of any itor events. Computer program listings patent resulting from the application. may be submitted in patent applica- The provisions of this paragraph do not tions as set forth in paragraphs (b) and apply to a model or exhibit that sub- (c) of this section. stantially conforms to the require- (b) Material which will be printed in the ments of § 1.52 or § 1.84, where the model patent: If the computer program listing or exhibit has been described by photo- is contained in 300 lines or fewer, with graphs that substantially conform to each line of 72 characters or fewer, it § 1.84, or where the model, exhibit or may be submitted either as drawings or specimen is perishable. as part of the specification.

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(1) Drawings. If the listing is sub- codes which are not defined in the mitted as drawings, it must be sub- ASCII character set; and mitted in the manner and complying (v) Compression: uncompressed data. with the requirements for drawings as [61 FR 42804, Aug. 19, 1996, as amended at 65 provided in § 1.84. At least one figure FR 54670, Sept. 8, 2000; 70 FR 54266, Sept. 14, numeral is required on each sheet of 2005] drawing. (2) Specification. (i) If the listing is INFORMATION DISCLOSURE STATEMENT submitted as part of the specification, it must be submitted in accordance § 1.97 Filing of information disclosure statement. with the provisions of § 1.52. (ii) Any listing having more than 60 (a) In order for an applicant for a pat- lines of code that is submitted as part ent or for a reissue of a patent to have of the specification must be positioned an information disclosure statement in at the end of the description but before compliance with § 1.98 considered by the claims. Any amendment must be the Office during the pendency of the made by way of submission of a sub- application, the information disclosure stitute sheet. statement must satisfy one of para- (c) As an appendix which will not be graphs (b), (c), or (d) of this section. (b) An information disclosure state- printed: Any computer program listing ment shall be considered by the Office may, and any computer program list- if filed by the applicant within any one ing having over 300 lines (up to 72 char- of the following time periods: acters per line) must, be submitted on (1) Within three months of the filing a compact disc in compliance with date of a national application other § 1.52(e). A compact disc containing than a continued prosecution applica- such a computer program listing is to tion under § 1.53(d); be referred to as a ‘‘computer program (2) Within three months of the date listing appendix.’’ The ‘‘computer proof entry of the national stage as set gram listing appendix’’ will not be part forth in § 1.491 in an international ap- of the printed patent. The specification plication; must include a reference to the ‘‘com- (3) Before the mailing of a first Office puter program listing appendix’’ at the action on the merits; location indicated in § 1.77(b)(5). (4) Before the mailing of a first Office (1) Multiple computer program list- action after the filing of a request for ings for a single application may be continued examination under § 1.114; or placed on a single compact disc. Mul- (5) Within three months of the date tiple compact discs may be submitted of publication of the international reg- for a single application if necessary. A istration under Hague Agreement Arti- separate compact disc is required for cle 10(3) in an international design ap- each application containing a com- plication. puter program listing that must be (c) An information disclosure state- submitted on a ‘‘computer program ment shall be considered by the Office listing appendix.’’ if filed after the period specified in (2) The ‘‘computer program listing paragraph (b) of this section, provided appendix’’ must be submitted on a that the information disclosure state- compact disc that complies with ment is filed before the mailing date of § 1.52(e) and the following specifications any of a final action under § 1.113, a no- (no other format shall be allowed): tice of allowance under § 1.311, or an ac- (i) Computer Compatibility: IBM PC/ tion that otherwise closes prosecution XT/AT, or compatibles, or Apple Mac- in the application, and it is accom- intosh; panied by one of: (ii) Operating System Compatibility: (1) The statement specified in para- MS-DOS, MS-Windows, Unix, or Mac- graph (e) of this section; or intosh; (2) The fee set forth in § 1.17(p). (iii) Line Terminator: ASCII Carriage (d) An information disclosure state- Return plus ASCII Line Feed; ment shall be considered by the Office (iv) Control Codes: the data must not if filed by the applicant after the pe- be dependent on control characters or riod specified in paragraph (c) of this

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section, provided that the information § 1.98 Content of information disclo- disclosure statement is filed on or be- sure statement. fore payment of the issue fee and is ac- (a) Any information disclosure state- companied by: ment filed under § 1.97 shall include the (1) The statement specified in para- items listed in paragraphs (a)(1), (a)(2) graph (e) of this section; and and (a)(3) of this section. (2) The fee set forth in § 1.17(p). (1) A list of all patents, publications, (e) A statement under this section applications, or other information sub- must state either: mitted for consideration by the Office. (1) That each item of information U.S. patents and U.S. patent applica- contained in the information disclo- tion publications must be listed in a sure statement was first cited in any section separately from citations of communication from a foreign patent other documents. Each page of the list office in a counterpart foreign applica- must include: tion not more than three months prior (i) The application number of the ap- to the filing of the information disclo- plication in which the information dis- sure statement; or closure statement is being submitted; (2) That no item of information contained in the information disclosure (ii) A column that provides a space, statement was cited in a communica- next to each document to be consid- tion from a foreign patent office in a ered, for the examiner’s initials; and counterpart foreign application, and, (iii) A heading that clearly indicates to the knowledge of the person signing that the list is an information disclo- the certification after making reason- sure statement. able inquiry, no item of information (2) A legible copy of: contained in the information disclo- (i) Each foreign patent; sure statement was known to any indi- (ii) Each publication or that portion vidual designated in § 1.56(c) more than which caused it to be listed, other than three months prior to the filing of the U.S. patents and U.S. patent applica- information disclosure statement. tion publications unless required by (f) No extensions of time for filing an the Office; information disclosure statement are (iii) For each cited pending unpub- permitted under § 1.136. If a bona fide lished U.S. application, the application attempt is made to comply with § 1.98, specification including the claims, and but part of the required content is in- any drawing of the application, or that advertently omitted, additional time portion of the application which caused may be given to enable full compli- it to be listed including any claims di- ance. rected to that portion; and (g) An information disclosure state- (iv) All other information or that ment filed in accordance with this sec- portion which caused it to be listed. tion shall not be construed as a rep- (3)(i) A concise explanation of the resentation that a search has been relevance, as it is presently understood made. by the individual designated in § 1.56(c) (h) The filing of an information dis- most knowledgeable about the content closure statement shall not be con- of the information, of each patent, pub- strued to be an admission that the in- lication, or other information listed formation cited in the statement is, or that is not in the English language. is considered to be, material to patent- The concise explanation may be either ability as defined in § 1.56(b). separate from applicant’s specification (i) If an information disclosure state- or incorporated therein. ment does not comply with either this (ii) A copy of the translation if a section or § 1.98, it will be placed in the written English-language translation file but will not be considered by the of a non-English-language document, Office. or portion thereof, is within the posses- sion, custody, or control of, or is read- [57 FR 2034, Jan. 17, 1992, as amended at 59 FR 32658, June 24, 1994; 60 FR 20226, Apr. 25, ily available to any individual des- 1995; 61 FR 42805, Aug. 19, 1996; 62 FR 53190, ignated in § 1.56(c). Oct. 10, 1997; 65 FR 14872, Mar. 20, 2000; 65 FR (b)(1) Each U.S. patent listed in an 54670, Sept. 8, 2000; 80 FR 17963, Apr. 2, 2015] information disclosure statement must

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be identified by inventor, patent num- § 1.99 [Reserved] ber, and issue date. (2) Each U.S. patent application pub- EXAMINATION OF APPLICATIONS lication listed in an information disclosure statement shall be identified by AUTHORITY: Secs. 1.101 to 1.108 also issued applicant, patent application publica- under 35 U.S.C. 131, 132. tion number, and publication date. § 1.101 [Reserved] (3) Each U.S. application listed in an information disclosure statement must § 1.102 Advancement of examination. be identified by the inventor, applica- (a) Applications will not be advanced tion number, and filing date. out of turn for examination or for fur- (4) Each foreign patent or published ther action except as provided by this foreign patent application listed in an part, or upon order of the Director to information disclosure statement must expedite the business of the Office, or be identified by the country or patent upon filing of a request under para- office which issued the patent or pub- graph (b) or (e) of this section or upon lished the application, an appropriate filing a petition or request under para- document number, and the publication graph (c) or (d) of this section with a date indicated on the patent or pub- showing which, in the opinion of the lished application. Director, will justify so advancing it. (5) Each publication listed in an in- (b) Applications wherein the inven- formation disclosure statement must tions are deemed of peculiar impor- be identified by publisher, author (if tance to some branch of the public any), title, relevant pages of the publi- service and the head of some depart- cation, date, and place of publication. ment of the Government requests im- (c) When the disclosures of two or mediate action for that reason, may be more patents or publications listed in advanced for examination. an information disclosure statement (c) A petition to make an application are substantively cumulative, a copy of special may be filed without a fee if the one of the patents or publications as basis for the petition is: specified in paragraph (a) of this sec- (1) The applicant’s age or health; or tion may be submitted without copies (2) That the invention will materi- of the other patents or publications, ally: provided that it is stated that these (i) Enhance the quality of the envi- other patents or publications are cu- ronment; mulative. (ii) Contribute to the development or (d) A copy of any patent, publication, conservation of energy resources; or pending U.S. application or other infor- (iii) Contribute to countering ter- mation, as specified in paragraph (a) of rorism. this section, listed in an information (d) A petition to make an application disclosure statement is required to be special on grounds other than those re- provided, even if the patent, publica- ferred to in paragraph (c) of this section must be accompanied by the fee tion, pending U.S. application or other set forth in § 1.17(h). information was previously submitted (e) A request for prioritized examina- to, or cited by, the Office in an earlier tion under this paragraph (e) must application, unless: comply with the requirements of this (1) The earlier application is properly paragraph (e) and be accompanied by identified in the information disclosure the prioritized examination fee set statement and is relied on for an ear- forth in § 1.17(c), the processing fee set lier effective filing date under 35 U.S.C. forth in § 1.17(i), and if not already 120; and paid, the publication fee set forth in (2) The information disclosure state- § 1.18(d). An application for which ment submitted in the earlier applica- prioritized examination has been re- tion complies with paragraphs (a) quested may not contain or be amend- through (c) of this section. ed to contain more than four inde- [65 FR 54671, Sept. 8, 2000, as amended at 65 pendent claims, more than thirty total FR 57055, Sept. 20, 2000; 68 FR 38628, June 30, claims, or any multiple dependent 2003; 69 FR 56542, Sept. 21, 2004] claim. Prioritized examination under

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this paragraph (e) will not be accorded for prioritized examination under this to international applications that have paragraph may be granted in an appli- not entered the national stage under 35 cation. U.S.C. 371, design applications, reissue (36 U.S.C. 6; 15 U.S.C. 1113, 1123) applications, provisional applications, or reexamination proceedings. A re- [24 FR 10332, Dec. 22, 1959, as amended at 47 quest for prioritized examination must FR 41276, Sept. 17, 1982; 54 FR 6903, Feb. 15, 1989; 60 FR 20226, Apr. 25, 1995; 62 FR 53191, also comply with the requirements of Oct. 10, 1997; 65 FR 54671, Sept. 8, 2000; 69 FR paragraph (e)(1) or (2) of this section. 56542, Sept. 21, 2004; 76 FR 59054, Sept. 23, No more than 12,000 requests for such 2011; 76 FR 78569, Dec. 19, 2011; 79 FR 12390, prioritized examination will be accept- Mar. 5, 2014; 84 FR 45910, Sept. 3, 2019] ed in any fiscal year. (1) A request for prioritized examina- § 1.103 Suspension of action by the Of- tion may be filed with an original util- fice. ity or plant nonprovisional application (a) Suspension for cause. On request of under 35 U.S.C. 111(a). The application the applicant, the Office may grant a must include a specification as pre- suspension of action by the Office scribed by 35 U.S.C. 112 including at under this paragraph for good and suf- least one claim, a drawing when nec- ficient cause. The Office will not sus- essary, and the inventor’s oath or dec- pend action if a reply by applicant to laration on filing, except that the fil- an Office action is outstanding. Any ing of an inventor’s oath or declaration petition for suspension of action under may be postponed in accordance with this paragraph must specify a period of § 1.53(f)(3) if an application data sheet suspension not exceeding six months. meeting the conditions specified in Any petition for suspension of action § 1.53(f)(3)(i) is present upon filing. If under this paragraph must also in- the application is a utility application, clude: it must be filed via the Office’s elec- (1) A showing of good and sufficient tronic filing system and include the fil- cause for suspension of action; and ing fee under § 1.16(a), search fee under (2) The fee set forth in § 1.17(g), unless § 1.16(k), and examination fee under such cause is the fault of the Office. § 1.16(o) upon filing. If the application (b) Limited suspension of action in a is a plant application, it must include continued prosecution application (CPA) the filing fee under § 1.16(c), search fee filed under § 1.53(d). On request of the under § 1.16(m), and examination fee applicant, the Office may grant a sus- under § 1.16(q) upon filing. The request pension of action by the Office under for prioritized examination in compli- this paragraph in a continued prosecu- ance with this paragraph must be tion application filed under § 1.53(d) for present upon filing of the application, a period not exceeding three months. except that the applicant may file an Any request for suspension of action amendment to cancel any independent under this paragraph must be filed claims in excess of four, any total with the request for an application claims in excess of thirty, and any filed under § 1.53(d), specify the period multiple dependent claim not later of suspension, and include the proc- than one month from a first decision essing fee set forth in § 1.17(i). on the request for prioritized examina- (c) Limited suspension of action after a tion. This one-month time period is not request for continued examination (RCE) extendable. under § 1.114. On request of the appli- (2) A request for prioritized examina- cant, the Office may grant a suspension tion may be filed with or after a re- of action by the Office under this para- quest for continued examination in graph after the filing of a request for compliance with § 1.114. If the applica- continued examination in compliance tion is a utility application, the re- with § 1.114 for a period not exceeding quest must be filed via the Office’s three months. Any request for suspen- electronic filing system. The request sion of action under this paragraph must be filed before the mailing of the must be filed with the request for con- first Office action after the filing of the tinued examination under § 1.114, speci- request for continued examination fy the period of suspension, and include under § 1.114. Only a single such request the processing fee set forth in § 1.17(i).

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(d) Deferral of examination. On request ough investigation of the available of the applicant, the Office may grant prior art relating to the subject matter a deferral of examination under the of the claimed invention. The examina- conditions specified in this paragraph tion shall be complete with respect for a period not extending beyond three both to compliance of the application years from the earliest filing date for or patent under reexamination with which a benefit is claimed under title the applicable statutes and rules and to 35, United States Code. A request for the patentability of the invention as deferral of examination under this claimed, as well as with respect to paragraph must include the publication matters of form, unless otherwise indi- fee set forth in § 1.18(d) and the proc- cated. essing fee set forth in § 1.17(i). A re- (2) The applicant, or in the case of a quest for deferral of examination under reexamination proceeding, both the this paragraph will not be granted un- patent owner and the requester, will be less: notified of the examiner’s action. The (1) The application is an original util- reasons for any adverse action or any ity or plant application filed under objection or requirement will be stated § 1.53(b) or resulting from entry of an in an Office action and such informa- international application into the nation or references will be given as may tional stage after compliance with be useful in aiding the applicant, or in § 1.495; the case of a reexamination proceeding (2) The applicant has not filed a non- the patent owner, to judge the pro- publication request under § 1.213(a), or priety of continuing the prosecution. has filed a request under § 1.213(b) to re- (3) An international-type search will scind a previously filed nonpublication be made in all national applications request; filed on and after June 1, 1978. (3) The application is in condition for (4) Any national application may also publication as provided in § 1.211(c); and have an international-type search re- (4) The Office has not issued either an port prepared thereon at the time of Office action under 35 U.S.C. 132 or a the national examination on the mer- notice of allowance under 35 U.S.C. 151. its, upon specific written request there- (e) Notice of suspension on initiative of for and payment of the international- the Office. The Office will notify appli- type search report fee set forth in cant if the Office suspends action by § 1.21(e). The Patent and Trademark Of- the Office on an application on its own fice does not require that a formal re- initiative. port of an international-type search be (f) Suspension of action for public safe- prepared in order to obtain a search fee ty or defense. The Office may suspend refund in a later filed international ap- action by the Office by order of the Di- plication. rector if the following conditions are (b) Completeness of examiner’s action. met: The examiner’s action will be complete (1) The application is owned by the as to all matters, except that in appro- United States; priate circumstances, such as (2) Publication of the invention may misjoinder of invention, fundamental be detrimental to the public safety or defects in the application, and the like, defense; and the action of the examiner may be lim- (3) The appropriate department or ited to such matters before further ac- agency requests such suspension. tion is made. However, matters of form [65 FR 50104, Aug. 16, 2000, as amended at 65 need not be raised by the examiner FR 57056, Sept. 20, 2000; 67 FR 523, Jan. 4, until a claim is found allowable. 2002; 69 FR 49999, Aug. 12, 2004; 69 FR 56542, (c) Rejection of claims. (1) If the inven- Sept. 21, 2004; 78 FR 11057, Feb. 14, 2013] tion is not considered patentable, or not considered patentable as claimed, § 1.104 Nature of examination. the claims, or those considered (a) Examiner’s action. (1) On taking up unpatentable will be rejected. an application for examination or a (2) In rejecting claims for want of patent in a reexamination proceeding, novelty or for obviousness, the exam- the examiner shall make a thorough iner must cite the best references at study thereof and shall make a thor- his or her command. When a reference

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is complex or shows or describes invention filed on or after November 29, 1999, tions other than that claimed by the or any patent issuing thereon, in an ap- applicant, the particular part relied on plication filed before November 29, must be designated as nearly as prac- 1999, but pending on December 10, 2004, ticable. The pertinence of each ref- or any patent issuing thereon, or in erence, if not apparent, must be clearly any patent granted on or after Decem- explained and each rejected claim spec- ber 10, 2004, will be treated as com- ified. monly owned for purposes of 35 U.S.C. (3) In rejecting claims the examiner 103(c) in effect prior to March 16, 2013, may rely upon admissions by the appli- if the applicant or patent owner pro- cant, or the patent owner in a reexam- vides a statement to the effect that the ination proceeding, as to any matter subject matter and the claimed inven- affecting patentability and, insofar as tion, at the time the claimed invention rejections in applications are con- was made, were owned by the same per- cerned, may also rely upon facts within son or subject to an obligation of as- his or her knowledge pursuant to para- signment to the same person. graph (d)(2) of this section. (ii) Subject matter which qualifies as (4)(i) Subject matter which would prior art under 35 U.S.C. 102(e), (f), or otherwise qualify as prior art under 35 (g) in effect prior to March 16, 2013, and U.S.C. 102(a)(2) and a claimed invention a claimed invention in an application will be treated as commonly owned for pending on or after December 10, 2004, purposes of 35 U.S.C. 102(b)(2)(C) if the or in any patent granted on or after applicant or patent owner provides a December 10, 2004, will be treated as statement to the effect that the sub- commonly owned for purposes of 35 ject matter and the claimed invention, U.S.C. 103(c) in effect prior to March 16, not later than the effective filing date 2013, on the basis of a joint research of the claimed invention, were owned agreement under 35 U.S.C. 103(c)(2) in by the same person or subject to an ob- effect prior to March 16, 2013, if: ligation of assignment to the same per- (A) The applicant or patent owner son. provides a statement to the effect that (ii) Subject matter which would oth- the subject matter and the claimed in- erwise qualify as prior art under 35 vention were made by or on behalf of U.S.C. 102(a)(2) and a claimed invention the parties to a joint research agree- will be treated as commonly owned for ment, within the meaning of 35 U.S.C. purposes of 35 U.S.C. 102(b)(2)(C) on the 100(h) and § 1.9(e), which was in effect basis of a joint research agreement on or before the date the claimed in- under 35 U.S.C. 102(c) if: vention was made, and that the (A) The applicant or patent owner claimed invention was made as a result provides a statement to the effect that of activities undertaken within the the subject matter was developed and scope of the joint research agreement; the claimed invention was made by or and on behalf of one or more parties to a (B) The application for patent for the joint research agreement, within the claimed invention discloses or is meaning of 35 U.S.C. 100(h) and § 1.9(e), amended to disclose the names of the that was in effect on or before the ef- parties to the joint research agree- fective filing date of the claimed inven- ment. tion, and the claimed invention was (6) Patents issued prior to December made as a result of activities under- 10, 2004, from applications filed prior to taken within the scope of the joint re- November 29, 1999, are subject to 35 search agreement; and U.S.C. 103(c) in effect on November 28, (B) The application for patent for the 1999. claimed invention discloses or is (d) Citation of references. (1) If domes- amended to disclose the names of the tic patents are cited by the examiner, parties to the joint research agree- their numbers and dates, and the ment. names of the patentees will be stated. (5)(i) Subject matter which qualifies If domestic patent application publica- as prior art under 35 U.S.C. 102(e), (f), tions are cited by the examiner, their or (g) in effect prior to March 16, 2013, publication number, publication date, and a claimed invention in an applica- and the names of the applicants will be

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stated. If foreign published applica- doned application, in a patent, or in a tions or patents are cited, their nation- reexamination proceeding, including a ality or country, numbers and dates, reexamination proceeding ordered as a and the names of the patentees will be result of a supplemental examination stated, and such other data will be fur- proceeding, the examiner or other Of- nished as may be necessary to enable fice employee may require the submis- the applicant, or in the case of a reex- sion, from individuals identified under amination proceeding, the patent § 1.56(c), or any assignee, of such infor- owner, to identify the published appli- mation as may be reasonably necessary cations or patents cited. In citing for- to properly examine or treat the mat- eign published applications or patents, ter, for example: in case only a part of the document is (i) Commercial databases: The exist- involved, the particular pages and ence of any particularly relevant com- sheets containing the parts relied upon mercial database known to any of the will be identified. If printed publica- inventors that could be searched for a tions are cited, the author (if any), particular aspect of the invention. title, date, pages or plates, and place of (ii) Search: Whether a search of the publication, or place where a copy can prior art was made, and if so, what was be found, will be given. searched. (2) When a rejection in an application (iii) Related information: A copy of is based on facts within the personal any non-patent literature, published knowledge of an employee of the Of- application, or patent (U.S. or foreign), fice, the data shall be as specific as by any of the inventors, that relates to possible, and the reference must be the claimed invention. supported, when called for by the appli- (iv) Information used to draft applica- cant, by the affidavit of such employee, tion: A copy of any non-patent lit- and such affidavit shall be subject to erature, published application, or pat- contradiction or explanation by the af- ent (U.S. or foreign) that was used to fidavits of the applicant and other per- draft the application. sons. (v) (e) Reasons for allowance. If the exam- Information used in invention proc- iner believes that the record of the ess: A copy of any non-patent lit- prosecution as a whole does not make erature, published application, or pat- clear his or her reasons for allowing a ent (U.S. or foreign) that was used in claim or claims, the examiner may set the invention process, such as by de- forth such reasoning. The reasons shall signing around or providing a solution be incorporated into an Office action to accomplish an invention result. rejecting other claims of the applica- (vi) Improvements: Where the claimed tion or patent under reexamination or invention is an improvement, identi- be the subject of a separate commu- fication of what is being improved. nication to the applicant or patent (vii) In use: Identification of any use owner. The applicant or patent owner of the claimed invention known to any may file a statement commenting on of the inventors at the time the appli- the reasons for allowance within such cation was filed notwithstanding the time as may be specified by the exam- date of the use. iner. Failure by the examiner to re- (viii) Technical information known to spond to any statement commenting applicant. Technical information on reasons for allowance does not give known to applicant concerning the re- rise to any implication. lated art, the disclosure, the claimed subject matter, other factual informa- [62 FR 53191, Oct. 10, 1997, as amended at 65 tion pertinent to patentability, or con- FR 14872, Mar. 20, 2000; 65 FR 54671, Sept. 8, 2000; 65 FR 57056, Sept. 20, 2000; 70 FR 1823, cerning the accuracy of the examiner’s Jan. 11, 2005; 70 FR 54266, Sept. 14, 2005; 72 FR stated interpretation of such items. 46841, Aug. 21, 2007; 74 FR 52690, Oct. 14, 2009; (2) Requirements for factual informa- 78 FR 11057, Feb. 14, 2013] tion known to applicant may be presented in any appropriate manner, for § 1.105 Requirements for information. example: (a)(1) In the course of examining or (i) A requirement for factual infor- treating a matter in a pending or aban- mation;

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(ii) Interrogatories in the form of entee to identify the inventorship and specific questions seeking applicant’s ownership or obligation to assign own- factual knowledge; or ership, of each claimed invention on its (iii) Stipulations as to facts with effective filing date (as defined in which the applicant may agree or dis- § 1.109) or on its date of invention, as agree. applicable, when necessary for purposes (3) Any reply to a requirement for in- of an Office proceeding. The Office may formation pursuant to this section that also require an applicant or patentee to states either that the information re- identify the invention dates of the sub- quired to be submitted is unknown to ject matter of each claim when nec- or is not readily available to the party essary for purposes of an Office pro- or parties from which it was requested ceeding. may be accepted as a complete reply. [78 FR 11058, Feb. 14, 2013] (b) The requirement for information of paragraph (a)(1) of this section may ACTION BY APPLICANT AND FURTHER be included in an Office action, or sent CONSIDERATION separately. (c) A reply, or a failure to reply, to a AUTHORITY: Secs. 1.111 to 1.113 also issued requirement for information under this under 35 U.S.C. 132. section will be governed by §§ 1.135 and 1.136. § 1.111 Reply by applicant or patent owner to a non-final Office action. [65 FR 54671, Sept. 8, 2000, as amended at 69 FR 56542, Sept. 21, 2004; 72 FR 46841, Aug. 21, (a)(1) If the Office action after the 2007; 74 FR 52690, Oct. 14, 2009; 77 FR 48821, first examination (§ 1.104) is adverse in Aug. 14, 2012; 80 FR 17963, Apr. 2, 2015] any respect, the applicant or patent owner, if he or she persists in his or her §§ 1.106–1.108 [Reserved] application for a patent or reexamination proceeding, must reply and re- § 1.109 Effective filing date of a quest reconsideration or further exam- claimed invention under the Leahy- Smith America Invents Act. ination, with or without amendment. See §§ 1.135 and 1.136 for time for reply (a) The effective filing date for a to avoid abandonment. claimed invention in a patent or appli- (2) Supplemental replies. (i) A reply cation for patent, other than in a re- that is supplemental to a reply that is issue application or reissued patent, is in compliance with § 1.111(b) will not be the earliest of: entered as a matter of right except as (1) The actual filing date of the pat- provided in paragraph (a)(2)(ii) of this ent or the application for the patent section. The Office may enter a supple- containing a claim to the invention; or mental reply if the supplemental reply (2) The filing date of the earliest ap- is clearly limited to: plication for which the patent or appli- (A) Cancellation of a claim(s); cation is entitled, as to such invention, (B) Adoption of the examiner sugges- to a right of priority or the benefit of tion(s); an earlier filing date under 35 U.S.C. (C) Placement of the application in 119, 120, 121, 365, or 386. condition for allowance; (b) The effective filing date for a (D) Reply to an Office requirement claimed invention in a reissue applica- made after the first reply was filed; tion or a reissued patent is determined (E) Correction of informalities (e.g., by deeming the claim to the invention typographical errors); or to have been contained in the patent (F) Simplification of issues for ap- for which reissue was sought. peal. [80 FR 17963, Apr. 2, 2015] (ii) A supplemental reply will be entered if the supplemental reply is filed § 1.110 Inventorship and ownership of within the period during which action the subject matter of individual by the Office is suspended under claims. § 1.103(a) or (c). When one or more joint inventors are (b) In order to be entitled to recon- named in an application or patent, the sideration or further examination, the Office may require an applicant or pat- applicant or patent owner must reply

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to the Office action. The reply by the ability are made, in the same manner applicant or patent owner must be re- as after the first examination (§ 1.104). duced to a writing which distinctly and Applicant or patent owner may reply specifically points out the supposed er- to such Office action in the same man- rors in the examiner’s action and must ner provided in § 1.111 or § 1.945, with or reply to every ground of objection and without amendment, unless such Office rejection in the prior Office action. The action indicates that it is made final reply must present arguments pointing (§ 1.113) or an appeal (§ 41.31 of this out the specific distinctions believed to title) has been taken (§ 1.116), or in an render the claims, including any newly inter partes reexamination, that it is an presented claims, patentable over any action closing prosecution (§ 1.949) or a applied references. If the reply is with right of appeal notice (§ 1.953). respect to an application, a request may be made that objections or re- [69 FR 49999, Aug. 12, 2004] quirements as to form not necessary to further consideration of the claims be § 1.113 Final rejection or action. held in abeyance until allowable sub- (a) On the second or any subsequent ject matter is indicated. The appli- examination or consideration by the cant’s or patent owner’s reply must ap- examiner the rejection or other action pear throughout to be a bona fide at- may be made final, whereupon appli- tempt to advance the application or cant’s, or for ex parte reexaminations the reexamination proceeding to final filed under § 1.510, patent owner’s reply action. A general allegation that the is limited to appeal in the case of rejec- claims define a patentable invention tion of any claim (§ 41.31 of this title), without specifically pointing out how or to amendment as specified in § 1.114 the language of the claims patentably or § 1.116. Petition may be taken to the distinguishes them from the references Director in the case of objections or re- does not comply with the requirements quirements not involved in the rejec- of this section. tion of any claim (§ 1.181). Reply to a (c) In amending in reply to a rejec- final rejection or action must comply tion of claims in an application or pat- with § 1.114 or paragraph (c) of this sec- ent under reexamination, the applicant tion. For final actions in an inter partes or patent owner must clearly point out reexamination filed under § 1.913, see the patentable novelty which he or she § 1.953. thinks the claims present in view of (b) In making such final rejection, the state of the art disclosed by the the examiner shall repeat or state all references cited or the objections grounds of rejection then considered made. The applicant or patent owner applicable to the claims in the applica- must also show how the amendments tion, clearly stating the reasons in sup- avoid such references or objections. port thereof. [46 FR 29182, May 29, 1981, as amended at 62 (c) Reply to a final rejection or ac- FR 53192, Oct. 10, 1997; 65 FR 54672, Sept. 8, tion must include cancellation of, or 2000; 69 FR 56542, Sept. 21, 2004; 70 FR 3891, appeal from the rejection of, each re- Jan. 27, 2005] jected claim. If any claim stands al- § 1.112 Reconsideration before final lowed, the reply to a final rejection or action. action must comply with any requirements or objections as to form. After reply by applicant or patent owner (§ 1.111 or § 1.945) to a non-final [65 FR 14872, Mar. 20, 2000, as amended at 65 action and any comments by an inter FR 76773, Dec. 7, 2000; 69 FR 49999, Aug. 12, partes reexamination requester (§ 1.947), 2004] the application or the patent under reexamination will be reconsidered and § 1.114 Request for continued examina- again examined. The applicant, or in tion. the case of a reexamination proceeding (a) If prosecution in an application is the patent owner and any third party closed, an applicant may request con- requester, will be notified if claims are tinued examination of the application rejected, objections or requirements by filing a submission and the fee set made, or decisions favorable to patent- forth in § 1.17(e) prior to the earliest of:

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(1) Payment of the issue fee, unless a (6) A patent under reexamination. petition under § 1.313 is granted; [65 FR 50104, Aug. 16, 2000, as amended at 69 (2) Abandonment of the application; FR 49999, Aug. 12, 2004; 72 FR 46841, Aug. 21, or 2007; 74 FR 52691, Oct. 14, 2009; 80 FR 17963, (3) The filing of a notice of appeal to Apr. 2, 2015] the U.S. Court of Appeals for the Fed- eral Circuit under 35 U.S.C. 141, or the AMENDMENTS commencement of a civil action under 35 U.S.C. 145 or 146, unless the appeal or AUTHORITY: Secs. 1.115 to 1.127 also issued civil action is terminated. under 35 U.S.C. 132. (b) Prosecution in an application is closed as used in this section means § 1.115 Preliminary amendments. that the application is under appeal, or (a) A preliminary amendment is an that the last Office action is a final ac- amendment that is received in the Of- tion (§ 1.113), a notice of allowance fice (§ 1.6) on or before the mail date of (§ 1.311), or an action that otherwise the first Office action under § 1.104. The closes prosecution in the application. patent application publication may in- (c) A submission as used in this sec- clude preliminary amendments tion includes, but is not limited to, an (§ 1.215(a)). information disclosure statement, an (1) A preliminary amendment that is amendment to the written description, present on the filing date of an applica- claims, or drawings, new arguments, or tion is part of the original disclosure of new evidence in support of patent- the application. ability. If reply to an Office action (2) A preliminary amendment filed under 35 U.S.C. 132 is outstanding, the after the filing date of the application submission must meet the reply re- is not part of the original disclosure of quirements of § 1.111. the application. (d) If an applicant timely files a sub- (b) A preliminary amendment in mission and fee set forth in § 1.17(e), the compliance with § 1.121 will be entered Office will withdraw the finality of any unless disapproved by the Director. Office action and the submission will (1) A preliminary amendment seek- be entered and considered. If an appli- ing cancellation of all the claims with- cant files a request for continued ex- out presenting any new or substitute amination under this section after ap- claims will be disapproved. peal, but prior to a decision on the ap- (2) A preliminary amendment may be peal, it will be treated as a request to disapproved if the preliminary amend- withdraw the appeal and to reopen ment unduly interferes with the prepa- prosecution of the application before ration of a first Office action in an ap- the examiner. An appeal brief (§ 41.37 of plication. Factors that will be consid- this title) or a reply brief (§ 41.41 of this ered in disapproving a preliminary title), or related papers, will not be amendment include: considered a submission under this sec- (i) The state of preparation of a first tion. Office action as of the date of receipt (e) The provisions of this section do (§ 1.6) of the preliminary amendment by not apply to: the Office; and (1) A provisional application; (ii) The nature of any changes to the (2) An application for a utility or specification or claims that would re- plant patent filed under 35 U.S.C. 111(a) sult from entry of the preliminary before June 8, 1995; amendment. (3) An international application filed (3) A preliminary amendment will under 35 U.S.C. 363 before June 8, 1995, not be disapproved under (b)(2) of this or an international application that section if it is filed no later than: does not comply with 35 U.S.C. 371; (i) Three months from the filing date (4) An application for a design pat- of an application under § 1.53(b); ent; (ii) The filing date of a continued (5) An international design applica- prosecution application under § 1.53(d); tion; or or

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(iii) Three months from the date the (2) Notwithstanding the provisions of national stage is entered as set forth in paragraph (b) of this section, an § 1.491 in an international application. amendment made after a final rejec- (4) The time periods specified in para- tion or other final action (§ 1.113) in an graph (b)(3) of this section are not ex- ex parte reexamination filed under tendable. § 1.510, or an action closing prosecution [69 FR 56543, Sept. 21, 2004] (§ 1.949) in an inter partes reexamination filed under § 1.913 may not cancel § 1.116 Amendments and affidavits or claims where such cancellation affects other evidence after final action the scope of any other pending claim in and prior to appeal. the reexamination proceeding except (a) An amendment after final action as provided in § 1.981 or as permitted by must comply with § 1.114 or this sec- § 41.77(b)(1) of this title. tion. (e) An affidavit or other evidence (b) After a final rejection or other submitted after a final rejection or final action (§ 1.113) in an application or other final action (§ 1.113) in an applica- in an ex parte reexamination filed tion or in an ex parte reexamination under § 1.510, or an action closing pros- filed under § 1.510, or an action closing ecution (§ 1.949) in an inter partes reex- prosecution (§ 1.949) in an inter partes amination filed under § 1.913, but before reexamination filed under § 1.913 but or on the same date of filing an appeal before or on the same date of filing an (§ 41.31 or § 41.61 of this title): appeal (§ 41.31 or § 41.61 of this title), (1) An amendment may be made can- may be admitted upon a showing of celing claims or complying with any good and sufficient reasons why the af- requirement of form expressly set forth fidavit or other evidence is necessary in a previous Office action; (2) An amendment presenting re- and was not earlier presented. jected claims in better form for consid- (f) Notwithstanding the provisions of eration on appeal may be admitted; or paragraph (e) of this section, no affi- (3) An amendment touching the mer- davit or other evidence can be made in its of the application or patent under an inter partes reexamination pro- reexamination may be admitted upon a ceeding after the right of appeal notice showing of good and sufficient reasons under § 1.953 except as provided in why the amendment is necessary and § 1.981 or as permitted by § 41.77(b)(1) of was not earlier presented. this title. (c) The admission of, or refusal to (g) After decision on appeal, amend- admit, any amendment after a final re- ments, affidavits and other evidence jection, a final action, an action clos- can only be made as provided in §§ 1.198 ing prosecution, or any related pro- and 1.981, or to carry into effect a rec- ceedings will not operate to relieve the ommendation under § 41.50(c) of this application or reexamination pro- title. ceeding from its condition as subject to appeal or to save the application from [69 FR 49999, Aug. 12, 2004] abandonment under § 1.135, or the reex- §§ 1.117–1.119 [Reserved] amination prosecution from termination under § 1.550(d) or § 1.957(b) or § 1.121 Manner of making amendments limitation of further prosecution under in applications. § 1.957(c). (d)(1) Notwithstanding the provisions (a) Amendments in applications, other of paragraph (b) of this section, no than reissue applications. Amendments amendment other than canceling in applications, other than reissue ap- claims, where such cancellation does plications, are made by filing a paper, not affect the scope of any other pend- in compliance with § 1.52, directing that ing claim in the proceeding, can be specified amendments be made. made in an inter partes reexamination (b) Specification. Amendments to the proceeding after the right of appeal no- specification, other than the claims, tice under § 1.953 except as provided in computer listings (§ 1.96) and sequence § 1.981 or as permitted by § 41.77(b)(1) of listings (§ 1.825), must be made by add- this title. ing, deleting or replacing a paragraph,

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by replacing a section, or by a sub- The text of any added subject matter stitute specification, in the manner must be shown by underlining the specified in this section. added text. The text of any deleted (1) Amendment to delete, replace, or add matter must be shown by strike- a paragraph. Amendments to the speci- through except that double brackets fication, including amendment to a placed before and after the deleted section heading or the title of the in- characters may be used to show dele- vention which are considered for tion of five or fewer consecutive char- amendment purposes to be an amend- acters. The text of any deleted subject ment of a paragraph, must be made by matter must be shown by being placed submitting: within double brackets if strike- (i) An instruction, which unambig- through cannot be easily perceived. uously identifies the location, to delete (3) Amendment by substitute specifica- one or more paragraphs of the speci- tion. The specification, other than the fication, replace a paragraph with one claims, may also be amended by sub- or more replacement paragraphs, or mitting: add one or more paragraphs; (i) An instruction to replace the spec- (ii) The full text of any replacement ification; and paragraph with markings to show all (ii) A substitute specification in com- the changes relative to the previous pliance with §§ 1.125(b) and (c). version of the paragraph. The text of (4) Reinstatement of previously deleted any added subject matter must be paragraph or section. A previously de- shown by underlining the added text. The text of any deleted matter must be leted paragraph or section may be rein- shown by strike-through except that stated only by a subsequent amend- double brackets placed before and after ment adding the previously deleted the deleted characters may be used to paragraph or section. show deletion of five or fewer consecu- (5) Presentation in subsequent amend- tive characters. The text of any deleted ment document. Once a paragraph or subject matter must be shown by being section is amended in a first amend- placed within double brackets if strike- ment document, the paragraph or sec- through cannot be easily perceived; tion shall not be re-presented in a sub- (iii) The full text of any added para- sequent amendment document unless it graphs without any underlining; and is amended again or a substitute speci- (iv) The text of a paragraph to be de- fication is provided. leted must not be presented with (c) Claims. Amendments to a claim strike-through or placed within double must be made by rewriting the entire brackets. The instruction to delete claim with all changes (e.g., additions may identify a paragraph by its para- and deletions) as indicated in this sub- graph number or include a few words section, except when the claim is being from the beginning, and end, of the canceled. Each amendment document paragraph, if needed for paragraph that includes a change to an existing identification purposes. claim, cancellation of an existing (2) Amendment by replacement section. claim or addition of a new claim, must If the sections of the specification con- include a complete listing of all claims tain section headings as provided in ever presented, including the text of all § 1.77(b), § 1.154(b), or § 1.163(c), amend- pending and withdrawn claims, in the ments to the specification, other than application. The claim listing, includ- the claims, may be made by submit- ing the text of the claims, in the ting: amendment document will serve to re- (i) A reference to the section heading place all prior versions of the claims, along with an instruction, which unin the application. In the claim listing, ambiguously identifies the location, to the status of every claim must be indi- delete that section of the specification cated after its claim number by using and to replace such deleted section one of the following identifiers in a with a replacement section; and parenthetical expression: (Original), (ii) A replacement section with (Currently amended), (Canceled), markings to show all changes relative (Withdrawn), (Previously presented), to the previous version of the section. (New), and (Not entered).

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(1) Claim listing. All of the claims pre- (4) When claim text shall not be presented in a claim listing shall be presented; canceling a claim. (i) No claim sented in ascending numerical order. text shall be presented for any claim in Consecutive claims having the same the claim listing with the status of status of ‘‘canceled’’ or ‘‘not entered’’ ‘‘canceled’’ or ‘‘not entered.’’ may be aggregated into one statement (ii) Cancellation of a claim shall be (e.g., Claims 1–5 (canceled)). The claim effected by an instruction to cancel a listing shall commence on a separate particular claim number. Identifying sheet of the amendment document and the status of a claim in the claim list- the sheet(s) that contain the text of ing as ‘‘canceled’’ will constitute an in- any part of the claims shall not construction to cancel the claim. tain any other part of the amendment. (5) Reinstatement of previously canceled (2) When claim text with markings is re- claim. A claim which was previously quired. All claims being currently canceled may be reinstated only by amended in an amendment paper shall adding the claim as a ‘‘new’’ claim be presented in the claim listing, indi- with a new claim number. cate a status of ‘‘currently amended,’’ (d) Drawings. One or more application and be submitted with markings to in- drawings shall be amended in the fol- dicate the changes that have been lowing manner: Any changes to an ap- made relative to the immediate prior plication drawing must be in compli- version of the claims. The text of any ance with § 1.84 or, for a nonprovisional added subject matter must be shown by international design application, in underlining the added text. The text of compliance with §§ 1.84(c) and 1.1026 and any deleted matter must be shown by must be submitted on a replacement strike-through except that double sheet of drawings which shall be an at- brackets placed before and after the de- tachment to the amendment document leted characters may be used to show and, in the top margin, labeled ‘‘Re- deletion of five or fewer consecutive placement Sheet.’’ Any replacement characters. The text of any deleted sheet of drawings shall include all of subject matter must be shown by being placed within double brackets if strike- the figures appearing on the immediate through cannot be easily perceived. prior version of the sheet, even if only Only claims having the status of ‘‘cur- one figure is amended. Any new sheet rently amended,’’ or ‘‘withdrawn’’ if of drawings containing an additional also being amended, shall include figure must be labeled in the top mar- markings. If a withdrawn claim is cur- gin as ‘‘New Sheet.’’ All changes to the rently amended, its status in the claim drawings shall be explained, in detail, listing may be identified as ‘‘within either the drawing amendment or re- drawn—currently amended.’’ marks section of the amendment paper. (3) When claim text in clean version is (1) A marked-up copy of any amended required. The text of all pending claims drawing figure, including annotations not being currently amended shall be indicating the changes made, may be presented in the claim listing in clean included. The marked-up copy must be version, i.e., without any markings in clearly labeled as ‘‘Annotated Sheet’’ the presentation of text. The presen- and must be presented in the amend- tation of a clean version of any claim ment or remarks section that explains having the status of ‘‘original,’’ ‘‘with- the change to the drawings. drawn’’ or ‘‘previously presented’’ will (2) A marked-up copy of any amended constitute an assertion that it has not drawing figure, including annotations been changed relative to the imme- indicating the changes made, must be diate prior version, except to omit provided when required by the exam- markings that may have been present iner. in the immediate prior version of the (e) Disclosure consistency. The disclo- claims of the status of ‘‘withdrawn’’ or sure must be amended, when required ‘‘previously presented.’’ Any claim by the Office, to correct inaccuracies of added by amendment must be indicated description and definition, and to se- with the status of ‘‘new’’ and presented cure substantial correspondence be- in clean version, i.e., without any un- tween the claims, the remainder of the derlining. specification, and the drawings.

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(f) No new matter. No amendment may may be filed at any point up to pay- introduce new matter into the disclo- ment of the issue fee if it is accom- sure of an application. panied by a statement that the sub- (g) Exception for examiner’s amend- stitute specification includes no new ments. Changes to the specification, in- matter. cluding the claims, of an application (c) A substitute specification sub- made by the Office in an examiner’s mitted under this section must be sub- amendment may be made by specific mitted with markings showing all the instructions to insert or delete subject changes relative to the immediate matter set forth in the examiner’s prior version of the specification of amendment by identifying the precise record. The text of any added subject point in the specification or the matter must be shown by underlining claim(s) where the insertion or deletion is to be made. Compliance with the added text. The text of any deleted paragraphs (b)(1), (b)(2), or (c) of this matter must be shown by strike- section is not required. through except that double brackets (h) Amendment sections. Each section placed before and after the deleted of an amendment document (e.g., characters may be used to show dele- amendment to the claims, amendment tion of five or fewer consecutive char- to the specification, replacement draw- acters. The text of any deleted subject ings, and remarks) must begin on a matter must be shown by being placed separate sheet. within double brackets if strike- (i) Amendments in reissue applications. through cannot be easily perceived. An Any amendment to the description and accompanying clean version (without claims in reissue applications must be markings) must also be supplied. Num- made in accordance with § 1.173. bering the paragraphs of the specifica- (j) Amendments in reexamination pro- tion of record is not considered a ceedings. Any proposed amendment to change that must be shown pursuant to the description and claims in patents this paragraph. involved in reexamination proceedings (d) A substitute specification under must be made in accordance with this section is not permitted in a re- § 1.530. issue application or in a reexamination (k) Amendments in provisional applica- proceeding. tions. Amendments in provisional applications are not usually made. If an [62 FR 53193, Oct. 10, 1997, as amended at 65 amendment is made to a provisional FR 54673, Sept. 8, 2000; 68 FR 38630, June 30, application, however, it must comply 2003] with the provisions of this section. Any amendments to a provisional applica- § 1.126 Numbering of claims. tion shall be placed in the provisional The original numbering of the claims application file but may not be en- must be preserved throughout the pros- tered. ecution. When claims are canceled the [68 FR 38628, June 30, 2003, as amended at 69 remaining claims must not be renum- FR 56543, Sept. 21, 2004; 80 FR 17963, Apr. 2, bered. When claims are added, they 2015] must be numbered by the applicant consecutively beginning with the num- §§ 1.122–1.224 [Reserved] ber next following the highest num- § 1.125 Substitute specification. bered claim previously presented (whether entered or not). When the ap- (a) If the number or nature of the amendments or the legibility of the application is ready for allowance, the plication papers renders it difficult to examiner, if necessary, will renumber consider the application, or to arrange the claims consecutively in the order the papers for printing or copying, the in which they appear or in such order Office may require the entire specifica- as may have been requested by appli- tion, including the claims, or any part cant. thereof, be rewritten. [62 FR 53194, Oct. 10, 1997] (b) Subject to § 1.312, a substitute specification, excluding the claims,

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§ 1.127 [Reserved] U.S.C. 120, 121, and 365(c), no requirement for restriction or for the filing of TRANSITIONAL PROVISIONS divisional applications shall be made or maintained in the application after § 1.129 Transitional procedures for June 8, 1995, except where: limited examination after final re- (i) The requirement was first made in jection and restriction practice. the application or any earlier filed ap- (a) An applicant in an application, plication under 35 U.S.C. 120, 121 and other than for reissue or a design pat- 365(c) prior to April 8, 1995; ent, that has been pending for at least (ii) The examiner has not made a re- two years as of June 8, 1995, taking into quirement for restriction in the account any reference made in such ap- present or parent application prior to plication to any earlier filed applica- April 8, 1995, due to actions by the ap- tion under 35 U.S.C. 120, 121 and 365(c), plicant; or is entitled to have a first submission (iii) The required fee for examination entered and considered on the merits of each additional invention was not after final rejection under the fol- paid. lowing circumstances: The Office will (2) If the application contains more consider such a submission, if the first than one independent and distinct in- submission and the fee set forth in vention and a requirement for restric- § 1.17(r) are filed prior to the filing of tion or for the filing of divisional appli- an appeal brief and prior to abandon- cations cannot be made or maintained ment of the application. The finality of pursuant to this paragraph, applicant the final rejection is automatically will be so notified and given a time pe- withdrawn upon the timely filing of riod to: the submission and payment of the fee (i) Elect the invention or inventions set forth in § 1.17(r). If a subsequent to be searched and examined, if no final rejection is made in the applica- election has been made prior to the no- tion, applicant is entitled to have a tice, and pay the fee set forth in second submission entered and consid- § 1.17(s) for each independent and dis- ered on the merits after the subsequent tinct invention claimed in the applica- final rejection under the following cir- tion in excess of one which applicant cumstances: The Office will consider elects; such a submission, if the second sub- (ii) Confirm an election made prior to mission and a second fee set forth in the notice and pay the fee set forth in § 1.17(r) are filed prior to the filing of § 1.17(s) for each independent and dis- an appeal brief and prior to abandon- tinct invention claimed in the applica- ment of the application. The finality of tion in addition to the one invention the subsequent final rejection is auto- which applicant previously elected; or matically withdrawn upon the timely (iii) File a petition under this section filing of the submission and payment of traversing the requirement. If the re- the second fee set forth in § 1.17(r). Any quired petition is filed in a timely submission filed after a final rejection manner, the original time period for made in an application subsequent to electing and paying the fee set forth in the fee set forth in § 1.17(r) having been § 1.17(s) will be deferred and any deci- twice paid will be treated as set forth sion on the petition affirming or modi- in § 1.116. A submission as used in this fying the requirement will set a new paragraph includes, but is not limited time period to elect the invention or to, an information disclosure state- inventions to be searched and exam- ment, an amendment to the written de- ined and to pay the fee set forth in scription, claims or drawings and a new § 1.17(s) for each independent and dis- substantive argument or new evidence tinct invention claimed in the applica- in support of patentability. tion in excess of one which applicant (b)(1) In an application, other than elects. for reissue or a design patent, that has (3) The additional inventions for been pending for at least three years as which the required fee has not been of June 8, 1995; taking into account any paid will be withdrawn from consider- reference made in the application to ation under § 1.142(b). An applicant who any earlier filed application under 35 desires examination of an invention so

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withdrawn from consideration can file with sufficient detail and particularity a divisional application under 35 U.S.C. to determine what subject matter had 121. been publicly disclosed on that date by (c) The provisions of this section the inventor or a joint inventor or an- shall not be applicable to any applica- other who obtained the subject matter tion filed after June 8, 1995. disclosed directly or indirectly from the inventor or a joint inventor. [60 FR 20226, Apr. 25, 1995] (c) When this section is not available. AFFIDAVITS OVERCOMING REJECTIONS The provisions of this section are not available if the rejection is based upon § 1.130 Affidavit or declaration of attri- a disclosure made more than one year bution or prior public disclosure before the effective filing date of the under the Leahy-Smith America In- claimed invention. The provisions of vents Act. this section may not be available if the (a) Affidavit or declaration of attribu- rejection is based upon a U.S. patent or tion. When any claim of an application U.S. patent application publication of a or a patent under reexamination is re- patented or pending application nam- jected, the applicant or patent owner ing another inventor, the patent or may submit an appropriate affidavit or pending application claims an inven- declaration to disqualify a disclosure tion that is the same or substantially as prior art by establishing that the the same as the applicant’s or patent disclosure was made by the inventor or owner’s claimed invention, and the af- a joint inventor, or the subject matter fidavit or declaration contends that an disclosed was obtained directly or indi- inventor named in the U.S. patent or rectly from the inventor or a joint in- U.S. patent application publication de- ventor. rived the claimed invention from the (b) Affidavit or declaration of prior inventor or a joint inventor named in public disclosure. When any claim of an the application or patent, in which application or a patent under reexam- case an applicant or a patent owner ination is rejected, the applicant or may file a petition for a derivation pro- patent owner may submit an appro- ceeding pursuant to § 42.401 et seq. of priate affidavit or declaration to dis- this title. qualify a disclosure as prior art by es- (d) Applications and patents to which tablishing that the subject matter dis- this section is applicable. The provisions closed had, before such disclosure was of this section apply to any application made or before such subject matter was for patent, and to any patent issuing effectively filed, been publicly dis- thereon, that contains, or contained at closed by the inventor or a joint inven- any time: tor or another who obtained the sub- (1) A claim to a claimed invention ject matter disclosed directly or indi- that has an effective filing date as de- rectly from the inventor or a joint in- fined in § 1.109 that is on or after March ventor. An affidavit or declaration 16, 2013; or under this paragraph must identify the (2) A specific reference under 35 subject matter publicly disclosed and U.S.C. 120, 121, 365(c), or 386(c) to any provide the date such subject matter patent or application that contains, or was publicly disclosed by the inventor contained at any time, a claim to a or a joint inventor or another who ob- claimed invention that has an effective tained the subject matter disclosed di- filing date as defined in § 1.109 that is rectly or indirectly from the inventor on or after March 16, 2013. or a joint inventor. [78 FR 11058, Feb. 14, 2013, as amended at 80 (1) If the subject matter publicly dis- FR 17963, Apr. 2, 2015] closed on that date was in a printed publication, the affidavit or declara- § 1.131 Affidavit or declaration of prior tion must be accompanied by a copy of invention or to disqualify com- the printed publication. monly owned patent or published (2) If the subject matter publicly dis- application as prior art. closed on that date was not in a print- (a) When any claim of an application ed publication, the affidavit or declara- or a patent under reexamination is re- tion must describe the subject matter jected, the applicant or patent owner

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may submit an appropriate oath or the inventions defined by the claims in declaration to establish invention of the application or patent under reex- the subject matter of the rejected amination and by the claims in the claim prior to the effective date of the patent or published application are not reference or activity on which the re- identical but are not patentably dis- jection is based. The effective date of a tinct, and the inventions are owned by U.S. patent, U.S. patent application the same party, the applicant or owner publication, or international applica- of the patent under reexamination may tion publication under PCT Article disqualify the patent or patent applica- 21(2) is the earlier of its publication tion publication as prior art. The pat- date or the date that it is effective as ent or patent application publication a reference under 35 U.S.C. 102(e) as in can be disqualified as prior art by sub- effect on March 15, 2013. Prior inven- mission of: tion may not be established under this (1) A terminal disclaimer in accord- section in any country other than the ance with § 1.321(c); and United States, a NAFTA country, or a (2) An oath or declaration stating WTO member country. Prior invention that the application or patent under may not be established under this sec- reexamination and patent or published tion before December 8, 1993, in a application are currently owned by the NAFTA country other than the United same party, and that the inventor States, or before January 1, 1996, in a named in the application or patent WTO member country other than a under reexamination is the prior inven- NAFTA country. Prior invention may tor under 35 U.S.C. 104 as in effect on not be established under this section if March 15, 2013. either: (d) The provisions of this section (1) The rejection is based upon a U.S. apply to any application for patent and patent or U.S. patent application publi- to any patent issuing thereon, that cation of a pending or patented appli- contains, or contained at any time: cation naming another inventor which (1) A claim to an invention that has claims interfering subject matter as an effective filing date as defined in defined in § 41.203(a) of this chapter, in § 1.109 that is before March 16, 2013; or which case an applicant may suggest (2) A specific reference under 35 an interference pursuant to § 41.202(a) U.S.C. 120, 121, 365(c), or 386(c) to any of this chapter; or patent or application that contains, or (2) The rejection is based upon a stat- contained at any time, a claim to an invention that has an effective filing utory bar. date as defined in § 1.109 that is before (b) The showing of facts for an oath March 16, 2013. or declaration under paragraph (a) of (e) In an application for patent to this section shall be such, in character which the provisions of § 1.130 apply, and weight, as to establish reduction to and to any patent issuing thereon, the practice prior to the effective date of provisions of this section are applica- the reference, or conception of the in- ble only with respect to a rejection vention prior to the effective date of under 35 U.S.C. 102(g) as in effect on the reference coupled with due dili- March 15, 2013. gence from prior to said date to a subsequent reduction to practice or to the [78 FR 11058, Feb. 14, 2013, as amended at 78 filing of the application. Original ex- FR 62405, Oct. 21, 2013; 80 FR 17963, Apr. 2, hibits of drawings or records, or photo- 2015] copies thereof, must accompany and § 1.132 Affidavits or declarations tra- form part of the affidavit or declara- versing rejections or objections. tion or their absence must be satisfactorily explained. When any claim of an application or (c) When any claim of an application a patent under reexamination is re- or a patent under reexamination is rejected or objected to, any evidence sub- jected under 35 U.S.C. 103 as in effect mitted to traverse the rejection or ob- on March 15, 2013, on a U.S. patent or jection on a basis not otherwise pro- U.S. patent application publication vided for must be by way of an oath or which is not prior art under 35 U.S.C. declaration under this section. 102(b) as in effect on March 15, 2013, and [65 FR 57057, Sept. 20, 2000]

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INTERVIEWS the application will become abandoned unless an Office action indicates other- § 1.133 Interviews. wise. (a)(1) Interviews with examiners con- (b) Prosecution of an application to cerning applications and other matters save it from abandonment pursuant to pending before the Office must be con- paragraph (a) of this section must in- ducted on Office premises and within clude such complete and proper reply Office hours, as the respective exam- as the condition of the application may iners may designate. Interviews will require. The admission of, or refusal to not be permitted at any other time or admit, any amendment after final replace without the authority of the Di- jection or any amendment not respon- rector. sive to the last action, or any related (2) An interview for the discussion of proceedings, will not operate to save the patentability of a pending applica- the application from abandonment. tion will not occur before the first Of- (c) When reply by the applicant is a fice action, unless the application is a bona fide attempt to advance the appli- continuing or substitute application or cation to final action, and is substan- the examiner determines that such an tially a complete reply to the non-final interview would advance prosecution of Office action, but consideration of the application. some matter or compliance with some (3) The examiner may require that an requirement has been inadvertently omitted, applicant may be given a new interview be scheduled in advance. time period for reply under § 1.134 to (b) In every instance where reconsid- supply the omission. eration is requested in view of an interview with an examiner, a complete [62 FR 53194, Oct. 10, 1997] written statement of the reasons presented at the interview as warranting § 1.136 Extensions of time. favorable action must be filed by the (a)(1) If an applicant is required to applicant. An interview does not re- reply within a nonstatutory or short- move the necessity for reply to Office ened statutory time period, applicant actions as specified in §§ 1.111 and 1.135. may extend the time period for reply up to the earlier of the expiration of (35 U.S.C. 132) any maximum period set by statute or [24 FR 10332, Dec. 22, 1959, as amended at 62 five months after the time period set FR 53194, Oct. 10, 1997; 65 FR 54674, Sept. 8, for reply, if a petition for an extension 2000; 70 FR 56128, Sept. 26, 2005] of time and the fee set in § 1.17(a) are filed, unless: TIME FOR REPLY BY APPLICANT; (i) Applicant is notified otherwise in ABANDONMENT OF APPLICATION an Office action; (ii) The reply is a reply brief sub- AUTHORITY: Secs. 1.135 to 1.138 also issued mitted pursuant to § 41.41 of this title; under 35 U.S.C. 133. (iii) The reply is a request for an oral § 1.134 Time period for reply to an Of- hearing submitted pursuant to § 41.47(a) fice action. of this title; (iv) The reply is to a decision by the An Office action will notify the appli- Patent Trial and Appeal Board pursu- cant of any non-statutory or shortened ant to § 41.50 or § 41.52 of this chapter or statutory time period set for reply to to § 90.3 of this chapter; or an Office action. Unless the applicant (v) The application is involved in a is notified in writing that a reply is re- contested case (§ 41.101(a) of this title) quired in less than six months, a max- or a derivation proceeding (§ 42.4(b) of imum period of six months is allowed. this title). [62 FR 53194, Oct. 10, 1997] (2) The date on which the petition and the fee have been filed is the date § 1.135 Abandonment for failure to for purposes of determining the period reply within time period. of extension and the corresponding (a) If an applicant of a patent appli- amount of the fee. The expiration of cation fails to reply within the time the time period is determined by the period provided under § 1.134 and § 1.136, amount of the fee paid. A reply must be

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filed prior to the expiration of the pe- (2) The period for submitting formal riod of extension to avoid abandonment drawings set under § 1.85(c); and of the application (§ 1.135), but in no (3) The period for making a deposit situation may an applicant reply later set under § 1.809(c). than the maximum time period set by (d) See § 1.550(c) for extensions of statute, or be granted an extension of time in ex parte reexamination pro- time under paragraph (b) of this sec- ceedings, § 1.956 for extensions of time tion when the provisions of paragraph in inter partes reexamination pro- (a) of this section are available. ceedings; §§ 41.4(a) and 41.121(a)(3) of (3) A written request may be sub- this chapter for extensions of time in mitted in an application that is an au- contested cases before the Patent Trial thorization to treat any concurrent or and Appeal Board; § 42.5(c) of this chap- future reply, requiring a petition for an ter for extensions of time in trials be- extension of time under this paragraph fore the Patent Trial and Appeal for its timely submission, as incor- Board; and § 90.3 of this chapter for ex- porating a petition for extension of tensions of time to appeal to the U.S. time for the appropriate length of Court of Appeals for the Federal Cir- time. An authorization to charge all cuit or to commence a civil action. required fees, fees under § 1.17, or all required extension of time fees will be [62 FR 53194, Oct. 10, 1997, as amended at 65 treated as a constructive petition for FR 54674, Sept. 8, 2000; 65 FR 76773, Dec. 7, an extension of time in any concurrent 2000; 66 FR 21092, Apr. 27, 2001; 69 FR 50000, or future reply requiring a petition for Aug. 12, 2004; 69 FR 56543, Sept. 21, 2004; 70 FR an extension of time under this para- 3891, Jan. 27, 2005; 72 FR 46842, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009; 77 FR 46625, Aug. 6, graph for its timely submission. Sub- 2012; 77 FR 48821, Aug. 14, 2012; 78 FR 62405, mission of the fee set forth in § 1.17(a) Oct. 21, 2013] will also be treated as a constructive petition for an extension of time in any § 1.137 Revival of abandoned applica- concurrent reply requiring a petition tion, or terminated or limited reex- for an extension of time under this amination prosecution. paragraph for its timely submission. (a) Revival on the basis of uninten- (b) When a reply cannot be filed with- tional delay. If the delay in reply by ap- in the time period set for such reply plicant or patent owner was uninten- and the provisions of paragraph (a) of tional, a petition may be filed pursuant this section are not available, the pe- to this section to revive an abandoned riod for reply will be extended only for application or a reexamination pros- sufficient cause and for a reasonable ecution terminated under § 1.550(d) or time specified. Any request for an ex- § 1.957(b) or limited under § 1.957(c). tension of time under this paragraph (b) Petition requirements. A grantable must be filed on or before the day on petition pursuant to this section must which such reply is due, but the mere be accompanied by: filing of such a request will not effect any extension under this paragraph. In (1) The reply required to the out- no situation can any extension carry standing Office action or notice, unless the date on which reply is due beyond previously filed; the maximum time period set by stat- (2) The petition fee as set forth in ute. Any request under this paragraph § 1.17(m); must be accompanied by the petition (3) Any terminal disclaimer (and fee fee set forth in § 1.17(g). as set forth in § 1.20(d)) required pursu- (c) If an applicant is notified in a ant to paragraph (d) of this section; ‘‘Notice of Allowability’’ that an appli- and cation is otherwise in condition for al- (4) A statement that the entire delay lowance, the following time periods are in filing the required reply from the not extendable if set in the ‘‘Notice of due date for the reply until the filing of Allowability’’ or in an Office action a grantable petition pursuant to this having a mail date on or after the mail section was unintentional. The Direc- date of the ‘‘Notice of Allowability’’: tor may require additional information (1) The period for submitting the in- where there is a question whether the ventor’s oath or declaration; delay was unintentional.

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(c) Reply. In an application aban- U.S.C. 120, 121, 365(c), or 386(c) to the doned under § 1.57(a), the reply must in- application for which revival is sought. clude a copy of the specification and (3) The provisions of paragraph (d)(1) any drawings of the previously filed ap- of this section do not apply to applica- plication. In an application or patent tions for which revival is sought solely abandoned for failure to pay the issue for purposes of copendency with a util- fee or any portion thereof, the required ity or plant application filed on or reply must include payment of the after June 8, 1995, to reissue applica- issue fee or any outstanding balance. tions, or to reexamination proceedings. In an application abandoned for failure (e) Request for reconsideration. Any re- to pay the publication fee, the required quest for reconsideration or review of a reply must include payment of the pub- decision refusing to revive an aban- lication fee. In a nonprovisional appli- doned application, or a terminated or cation abandoned for failure to pros- limited reexamination prosecution, ecute, the required reply may be met upon petition filed pursuant to this by the filing of a continuing applica- section, to be considered timely, must tion. In a nonprovisional utility or be filed within two months of the deci- plant application filed on or after June sion refusing to revive or within such 8, 1995, abandoned after the close of time as set in the decision. Unless a de- prosecution as defined in § 1.114(b), the cision indicates otherwise, this time required reply may also be met by the period may be extended under: filing of a request for continued exam- (1) The provisions of § 1.136 for an ination in compliance with § 1.114. abandoned application; (d) Terminal disclaimer. (1) Any peti- (2) The provisions of § 1.550(c) for a tion to revive pursuant to this section terminated ex parte reexamination in a design application must be accom- prosecution, where the ex parte reexam- panied by a terminal disclaimer and fee ination was filed under § 1.510; or as set forth in § 1.321 dedicating to the (3) The provisions of § 1.956 for a ter- public a terminal part of the term of minated inter partes reexamination prosecution or an inter partes reexam- any patent granted thereon equivalent ination limited as to further prosecu- to the period of abandonment of the ap- tion, where the inter partes reexamina- plication. Any petition to revive pursu- tion was filed under § 1.913. ant to this section in either a utility or (f) Abandonment for failure to notify plant application filed before June 8, the Office of a foreign filing. A nonprovi- 1995, must be accompanied by a ter- sional application abandoned pursuant minal disclaimer and fee as set forth in to 35 U.S.C. 122(b)(2)(B)(iii) for failure § 1.321 dedicating to the public a ter- to timely notify the Office of the filing minal part of the term of any patent of an application in a foreign country granted thereon equivalent to the less- or under a multinational treaty that er of: requires publication of applications (i) The period of abandonment of the eighteen months after filing, may be application; or revived pursuant to this section. The (ii) The period extending beyond reply requirement of paragraph (c) of twenty years from the date on which this section is met by the notification the application for the patent was filed of such filing in a foreign country or in the United States or, if the applica- under a multinational treaty, but the tion contains a specific reference to an filing of a petition under this section earlier filed application(s) under 35 will not operate to stay any period for U.S.C. 120, 121, 365(c), or 386(c) from the reply that may be running against the date on which the earliest such appli- application. cation was filed. (g) Provisional applications. A provi- (2) Any terminal disclaimer pursuant sional application, abandoned for fail- to paragraph (d)(1) of this section must ure to timely respond to an Office re- also apply to any patent granted on a quirement, may be revived pursuant to continuing utility or plant application this section. Subject to the provisions filed before June 8, 1995, or a con- of 35 U.S.C. 119(e)(3) and § 1.7(b), a pro- tinuing design application, that con- visional application will not be re- tains a specific reference under 35 garded as pending after twelve months

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from its filing date under any cir- tion under § 1.138(d) was filed before an cumstances. examination has been made of the application. If a request for refund of the [78 FR 62405, Oct. 21, 2013, as amended at 80 FR 17963, Apr. 2, 2015] search fee and excess claims fee paid in the application is not filed with the § 1.138 Express abandonment. declaration of express abandonment (a) An application may be expressly under this paragraph or within two abandoned by filing a written declara- months from the date on which the tion of abandonment identifying the declaration of express abandonment application in the United States Pat- under this paragraph was filed, the Of- ent and Trademark Office. Express fice may retain the entire search fee abandonment of the application may and excess claims fee paid in the appli- not be recognized by the Office before cation. This two-month period is not the date of issue or publication unless extendable. If a petition and declara- it is actually received by appropriate tion of express abandonment under this officials in time to act. paragraph are not filed before an exam- (b) A written declaration of abandon- ination has been made of the applica- ment must be signed by a party au- tion, the Office will not refund any thorized under § 1.33(b)(1) or (b)(3) to part of the search fee and excess claims sign a paper in the application, except fee paid in the application except as as otherwise provided in this para- provided in § 1.26. graph. A registered attorney or agent, [65 FR 54674, Sept. 8, 2000, as amended at 65 not of record, who acts in a representa- FR 57058, Sept. 20, 2000; 71 FR 12284, Mar. 10, tive capacity under the provisions of 2006; 78 FR 62406, Oct. 21, 2013] § 1.34 when filing a continuing application, may expressly abandon the prior § 1.139 [Reserved] application as of the filing date grant- JOINDER OF INVENTIONS IN ONE ed to the continuing application. APPLICATION; RESTRICTION (c) An applicant seeking to abandon an application to avoid publication of AUTHORITY: Secs. 1.141 to 1.147 also issued the application (see § 1.211(a)(1)) must under 35 U.S.C. 121. submit a declaration of express abandonment by way of a petition under § 1.141 Different inventions in one na- this paragraph including the fee set tional application. forth in § 1.17(h) in sufficient time to (a) Two or more independent and dis- permit the appropriate officials to rec- tinct inventions may not be claimed in ognize the abandonment and remove one national application, except that the application from the publication more than one species of an invention, process. Applicants should expect that not to exceed a reasonable number, the petition will not be granted and the may be specifically claimed in different application will be published in regular claims in one national application, pro- course unless such declaration of ex- vided the application also includes an press abandonment and petition are re- allowable claim generic to all the ceived by the appropriate officials claimed species and all the claims to more than four weeks prior to the pro- species in excess of one are written in jected date of publication. dependent form (§ 1.75) or otherwise in- (d) An applicant seeking to abandon clude all the limitations of the generic an application filed under 35 U.S.C. claim. 111(a) and § 1.53(b) on or after December (b) Where claims to all three cat- 8, 2004, to obtain a refund of the search egories, product, process of making, fee and excess claims fee paid in the and process of use, are included in a na- application, must submit a declaration tional application, a three way require- of express abandonment by way of a pe- ment for restriction can only be made tition under this paragraph before an where the process of making is distinct examination has been made of the ap- from the product. If the process of plication. The date indicated on any making and the product are not dis- certificate of mailing or transmission tinct, the process of using may be under § 1.8 will not be taken into ac- joined with the claims directed to the count in determining whether a peti- product and the process of making the

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product even though a showing of dis- on or allowance of claims to the inven- tinctness between the product and tion elected, but must be filed not later process of using the product can be than appeal. A petition will not be con- made. sidered if reconsideration of the requirement was not requested (see [52 FR 20046, May 28, 1987] § 1.181). § 1.142 Requirement for restriction. [62 FR 53195, Oct. 10, 1997] (a) If two or more independent and distinct inventions are claimed in a § 1.145 Subsequent presentation of single application, the examiner in an claims for different invention. Office action will require the applicant If, after an Office action on an appli- in the reply to that action to elect an cation, the applicant presents claims invention to which the claims will be directed to an invention distinct from restricted, this official action being and independent of the invention pre- called a requirement for restriction viously claimed, the applicant will be (also known as a requirement for divi- required to restrict the claims to the sion). Such requirement will normally invention previously claimed if the be made before any action on the mer- amendment is entered, subject to re- its; however, it may be made at any consideration and review as provided in time before final action. §§ 1.143 and 1.144. (b) Claims to the invention or inventions not elected, if not canceled, are [74 FR 52691, Oct. 14, 2009] nevertheless withdrawn from further § 1.146 Election of species. consideration by the examiner by the election, subject however to reinstate- In the first action on an application ment in the event the requirement for containing a generic claim to a generic restriction is withdrawn or overruled. invention (genus) and claims to more than one patentably distinct species [24 FR 10332, Dec. 22, 1959, as amended at 62 embraced thereby, the examiner may FR 53195, Oct. 10, 1997; 72 FR 46842, Aug. 21, 2007; 74 FR 52691, Oct. 14, 2009] require the applicant in the reply to that action to elect a species of his or § 1.143 Reconsideration of require- her invention to which his or her claim ment. will be restricted if no claim to the If the applicant disagrees with the re- genus is found to be allowable. How- quirement for restriction, he may re- ever, if such application contains quest reconsideration and withdrawal claims directed to more than a reason- or modification of the requirement, able number of species, the examiner giving the reasons therefor. (See may require restriction of the claims § 1.111.) In requesting reconsideration to not more than a reasonable number the applicant must indicate a provi- of species before taking further action sional election of one invention for in the application. prosecution, which invention shall be [62 FR 53195, Oct. 10, 1997] the one elected in the event the requirement becomes final The require- DESIGN PATENTS ment for restriction will be reconsidered on such a request. If the require- § 1.151 Rules applicable. ment is repeated and made final the ex- The rules relating to applications for aminer will at the same time act on patents for other inventions or discov- the claims to the invention elected. eries are also applicable to applications for patents for designs except as other- § 1.144 Petition from requirement for wise provided. restriction. After a final requirement for restric- (35 U.S.C. 171) tion, the applicant, in addition to making any reply due on the remainder of § 1.152 Design drawings. the action, may petition the Director The design must be represented by a to review the requirement. Petition drawing that complies with the re- may be deferred until after final action quirements of § 1.84 and must contain a

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sufficient number of views to con- (5) Drawings or photographs. stitute a complete disclosure of the ap- (6) The inventor’s oath or declaration pearance of the design. Appropriate (see § 1.153(b)). and adequate surface shading should be (b) The specification should include used to show the character or contour the following sections in order: of the surfaces represented. Solid black (1) Preamble, stating the name of the surface shading is not permitted except applicant, title of the design, and a when used to represent the color black brief description of the nature and in- as well as color contrast. Broken lines tended use of the article in which the may be used to show visible environ- design is embodied. mental structure, but may not be used (2) Cross-reference to related applica- to show hidden planes and surfaces tions (unless included in the applica- that cannot be seen through opaque tion data sheet). materials. Alternate positions of a de- (3) Statement regarding federally sign component, illustrated by full and sponsored research or development. broken lines in the same view are not (4) Description of the figure or fig- permitted in a design drawing. Photo- ures of the drawing. graphs and ink drawings are not per- (5) Feature description. mitted to be combined as formal draw- (6) A single claim. ings in one application. Photographs (c) The text of the specification sec- submitted in lieu of ink drawings in de- tions defined in paragraph (b) of this sign patent applications must not dis- section, if applicable, should be pre- close environmental structure but ceded by a section heading in uppercase must be limited to the design claimed letters without underlining or bold for the article. type. [65 FR 54674, Sept. 8, 2000] [65 FR 54674, Sept. 8, 2000, as amended at 77 FR 48821, Aug. 14, 2012] § 1.153 Title, description and claim, oath or declaration. § 1.155 Expedited examination of design applications. (a) The title of the design must des- (a) The applicant may request that ignate the particular article. No de- the Office expedite the examination of scription, other than a reference to the a design application. To qualify for ex- drawing, is ordinarily required. The pedited examination: claim shall be in formal terms to the (1) The application must include ornamental design for the article drawings in compliance with § 1.84, or (specifying name) as shown, or as for an international design application shown and described. More than one that designates the United States, claim is neither required nor per- must have been published pursuant to mitted. Hague Agreement Article 10(3); (b) The inventor’s oath or declaration (2) The applicant must have con- must comply with the requirements of ducted a preexamination search; and § 1.63, or comply with the requirements (3) The applicant must file a request of § 1.64 for a substitute statement. for expedited examination including: (35 U.S.C. 6, Pub. L. 97–247) (i) The fee set forth in § 1.17(k); and (ii) A statement that a [24 FR 10332, Dec. 22, 1959, as amended at 29 FR 18503, Dec. 29, 1964; 48 FR 2712, Jan. 20, preexamination search was conducted. 1983; 77 FR 48821, Aug. 14, 2012] The statement must also indicate the field of search and include an informa- § 1.154 Arrangement of application ele- tion disclosure statement in compli- ments in a design application. ance with § 1.98. (a) The elements of the design appli- (b) The Office will not examine an ap- cation, if applicable, should appear in plication that is not in condition for the following order: examination (e.g., missing basic filing (1) Design application transmittal fee) even if the applicant files a request form. for expedited examination under this (2) Fee transmittal form. section. (3) Application data sheet (see § 1.76). [65 FR 54674, Sept. 8, 2000, as amended at 80 (4) Specification. FR 17963, Apr. 2, 2015]

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PLANT PATENTS (2) Cross-reference to related applications (unless included in the applica- § 1.161 Rules applicable. tion data sheet). The rules relating to applications for (3) Statement regarding federally patent for other inventions or discov- sponsored research or development. eries are also applicable to applications (4) Latin name of the genus and spe- for patents for plants except as other- cies of the plant claimed. wise provided. (5) Variety denomination. (6) Background of the invention. § 1.162 Applicant, oath or declaration. (7) Brief summary of the invention. (8) Brief description of the drawing. The inventor named for a plant pat- (9) Detailed botanical description. ent application must be the person who (10) A single claim. has invented or discovered and (11) Abstract of the disclosure. asexually reproduced the new and dis- (d) The text of the specification or tinct variety of plant for which a pat- sections defined in paragraph (c) of this ent is sought. The inventor’s oath or section, if applicable, should be pre- declaration, in addition to the aver- ceded by a section heading in upper ments required by § 1.63 or § 1.64, must case, without underlining or bold type. state that the inventor has asexually reproduced the plant. Where the plant [65 FR 54675, Sept. 8, 2000, as amended at 77 is a newly found plant, the inventor’s FR 48821, Aug. 14, 2012] oath or declaration must also state that it was found in a cultivated area. § 1.164 Claim. The claim shall be in formal terms to [77 FR 48821, Aug. 14, 2012] the new and distinct variety of the specified plant as described and illus- § 1.163 Specification and arrangement of application elements in a plant trated, and may also recite the prin- application. cipal distinguishing characteristics. More than one claim is not permitted. (a) The specification must contain as full and complete a disclosure as pos- (35 U.S.C. 162) sible of the plant and the characteristics thereof that distinguish the same § 1.165 Plant drawings. over related known varieties, and its (a) Plant patent drawings should be antecedents, and must particularly artistically and competently executed point out where and in what manner and must comply with the require- the variety of plant has been asexually ments of § 1.84. View numbers and ref- reproduced. For a newly found plant, erence characters need not be em- the specification must particularly ployed unless required by the exam- point out the location and character of iner. The drawing must disclose all the the area where the plant was discov- distinctive characteristics of the plant ered. capable of visual representation. (b) The elements of the plant applica- (b) The drawings may be in color. tion, if applicable, should appear in the The drawing must be in color if color is following order: a distinguishing characteristic of the (1) Plant application transmittal new variety. Two copies of color draw- form. ings or photographs must be sub- (2) Fee transmittal form. mitted. (3) Application data sheet (see § 1.76). [58 FR 38726, July 20, 1993, as amended at 65 (4) Specification. FR 57058, Sept. 20, 2000; 69 FR 56543, Sept. 21, (5) Drawings (in duplicate). 2004] (6) The inventor’s oath or declaration (§ 1.162). § 1.166 Specimens. (c) The specification should include The applicant may be required to fur- the following sections in order: nish specimens of the plant, or its flow- (1) Title of the invention, which may er or fruit, in a quantity and at a time include an introductory portion stating in its stage of growth as may be des- the name, citizenship, and residence of ignated, for study and inspection. Such the applicant. specimens, properly packed, must be

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forwarded in conformity with instruc- duced into the application. No reissue tions furnished to the applicant. When patent shall be granted enlarging the it is not possible to forward such speci- scope of the claims of the original pat- mens, plants must be made available ent unless applied for within two years for official inspection where grown. from the grant of the original patent, (35 U.S.C. 114, 161) pursuant to 35 U.S.C. 251. (1) Specification, including claims. The § 1.167 Examination. entire specification, including the Applications may be submitted by claims, of the patent for which reissue the Patent and Trademark Office to is requested must be furnished in the the Department of Agriculture for form of a copy of the printed patent, in study and report. double column format, each page on only one side of a single sheet of paper. [62 FR 53196, Oct. 10, 1997] If an amendment of the reissue application is to be included, it must be made REISSUES pursuant to paragraph (b) of this section. The formal requirements for pa- AUTHORITY: Secs. 1.171 to 1.179 also issued pers making up the reissue application under 35 U.S.C. 251. other than those set forth in this sec- § 1.171 Application for reissue. tion are set out in § 1.52. Additionally, a copy of any disclaimer (§ 1.321), cer- An application for reissue must con- tificate of correction (§§ 1.322 through tain the same parts required for an ap- 1.324), or reexamination certificate plication for an original patent, com- (§ 1.570) issued in the patent must be in- plying with all the rules relating there- cluded. (See also § 1.178). to except as otherwise provided, and in addition, must comply with the re- (2) Drawings. Applicant must submit quirements of the rules relating to re- a clean copy of each drawing sheet of issue applications. the printed patent at the time the reissue application is filed. If such copy [62 FR 53196, Oct. 10, 1997] complies with § 1.84, no further drawings will be required. Where a drawing § 1.172 Reissue applicant. of the reissue application is to include (a) The reissue applicant is the origi- any changes relative to the patent nal patentee, or the current patent being reissued, the changes to the owner if there has been an assignment. drawing must be made in accordance A reissue application must be accom- with paragraph (b)(3) of this section. panied by the written consent of all as- The Office will not transfer the draw- signees, if any, currently owning an ings from the patent file to the reissue undivided interest in the patent. All application. assignees consenting to the reissue (b) Making amendments in a reissue ap- must establish their ownership in the plication. An amendment in a reissue patent by filing in the reissue applica- application is made either by phys- tion a submission in accordance with ically incorporating the changes into the provisions of § 3.73(c) of this chap- the specification when the application ter. is filed, or by a separate amendment (b) A reissue will be granted to the paper. If amendment is made by incor- original patentee, his legal representa- poration, markings pursuant to para- tives or assigns as the interest may ap- graph (d) of this section must be used. pear. If amendment is made by an amend- [77 FR 48821, Aug. 14, 2012] ment paper, the paper must direct that specified changes be made, as follows: § 1.173 Reissue specification, draw- (1) Specification other than the claims. ings, and amendments. Changes to the specification, other (a) Contents of a reissue application. than to the claims, must be made by An application for reissue must con- submission of the entire text of an tain the entire specification, including added or rewritten paragraph, includ- the claims, and the drawings of the ing markings pursuant to paragraph (d) patent. No new matter shall be intro- of this section, except that an entire

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paragraph may be deleted by a state- (ii) A marked-up copy of any amendment deleting the paragraph without ed drawing figure, including annota- presentation of the text of the para- tions indicating the changes made, graph. The precise point in the speci- must be provided when required by the fication must be identified where any examiner. added or rewritten paragraph is lo- (c) Status of claims and support for cated. This paragraph applies whether claim changes. Whenever there is an the amendment is submitted on paper amendment to the claims pursuant to or compact disc (see §§ 1.52(e)(1) and paragraph (b) of this section, there 1.821(c), but not for discs submitted must also be supplied, on pages sepa- under § 1.821(e)). rate from the pages containing the (2) Claims. An amendment paper must changes, the status (i.e., pending or include the entire text of each claim canceled), as of the date of the amend- being changed by such amendment ment, of all patent claims and of all paper and of each claim being added by added claims, and an explanation of the such amendment paper. For any claim support in the disclosure of the patent changed by the amendment paper, a for the changes made to the claims. parenthetical expression ‘‘amended,’’ (d) Changes shown by markings. Any ‘‘twice amended,’’ etc., should follow changes relative to the patent being re- the claim number. Each changed pat- issued which are made to the specifica- ent claim and each added claim must tion, including the claims, upon filing, include markings pursuant to para- or by an amendment paper in the re- graph (d) of this section, except that a issue application, must include the fol- patent claim or added claim should be lowing markings: canceled by a statement canceling the (1) The matter to be omitted by re- claim without presentation of the text issue must be enclosed in brackets; and of the claim. (2) The matter to be added by reissue (3) Drawings. One or more patent must be underlined, except for amend- drawings shall be amended in the fol- ments submitted on compact discs lowing manner: Any changes to a pat- (§§ 1.96 and 1.821(c)). Matter added by ent drawing must be submitted as a re- reissue on compact discs must be pre- placement sheet of drawings which ceded with ‘‘’’ and end with ‘‘’’ shall be an attachment to the amend- to properly identify the material being ment document. Any replacement added. sheet of drawings must be in compli- (e) Numbering of patent claims pre- ance with § 1.84 and shall include all of served. Patent claims may not be re- the figures appearing on the original numbered. The numbering of any claim version of the sheet, even if only one added in the reissue application must figure is amended. Amended figures follow the number of the highest num- must be identified as ‘‘Amended,’’ and bered patent claim. any added figure must be identified as (f) Amendment of disclosure may be re- ‘‘New.’’ In the event that a figure is canceled, the figure must be sur- quired. The disclosure must be amend- rounded by brackets and identified as ed, when required by the Office, to cor- ‘‘Canceled.’’ All changes to the draw- rect inaccuracies of description and ing(s) shall be explained, in detail, be- definition, and to secure substantial ginning on a separate sheet accom- correspondence between the claims, panying the papers including the the remainder of the specification, and amendment to the drawings. the drawings. (i) A marked-up copy of any amended (g) Amendments made relative to the drawing figure, including annotations patent. All amendments must be made indicating the changes made, may be relative to the patent specification, in- included. The marked-up copy must be cluding the claims, and drawings, clearly labeled as ‘‘Annotated Marked- which are in effect as of the date of fil- up Drawings’’ and must be presented in ing of the reissue application. the amendment or remarks section [65 FR 54675, Sept. 8, 2000, as amended at 68 that explains the change to the draw- FR 38630, June 30, 2003; 69 FR 56543, Sept. 21, ings. 2004]

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§ 1.174 [Reserved] (f)(1) The requirement for the inventor’s oath or declaration for a con- § 1.175 Inventor’s oath or declaration tinuing reissue application that claims for a reissue application. the benefit under 35 U.S.C. 120, 121, (a) The inventor’s oath or declaration 365(c), or 386(c) in compliance with for a reissue application, in addition to § 1.78 of an earlier-filed reissue applica- complying with the requirements of tion may be satisfied by a copy of the § 1.63, § 1.64, or § 1.67, must also specifi- inventor’s oath or declaration from the cally identify at least one error pursu- earlier-filed reissue application, pro- ant to 35 U.S.C. 251 being relied upon as vided that: the basis for reissue and state that the (i) The inventor, or each individual applicant believes the original patent who is a joint inventor of a claimed in- to be wholly or partly inoperative or vention, in the reissue application exe- invalid by reason of a defective speci- cuted an inventor’s oath or declaration fication or drawing, or by reason of the for the earlier-filed reissue application, patentee claiming more or less than except as provided for in § 1.64; the patentee had the right to claim in (ii) The continuing reissue applica- the patent. tion does not seek to enlarge the scope (b) If the reissue application seeks to of the claims of the original patent; or enlarge the scope of the claims of the (iii) The application for the original patent (a basis for the reissue is the patent was filed under § 1.46 by the as- patentee claiming less than the pat- signee of the entire interest. entee had the right to claim in the pat- (2) If all errors identified in the in- ent), the inventor’s oath or declaration ventor’s oath or declaration from the for a reissue application must identify earlier-filed reissue application are no a claim that the application seeks to longer being relied upon as the basis broaden. A claim is a broadened claim for reissue, the applicant must identify if the claim is broadened in any re- an error being relied upon as the basis spect. for reissue. (c) The inventor, or each individual (g) An oath or declaration filed at who is a joint inventor of a claimed in- any time pursuant to 35 U.S.C. vention, in a reissue application must 115(h)(1), will be placed in the file execute an oath or declaration for the record of the reissue application, but reissue application, except as provided may not necessarily be reviewed by the for in § 1.64, and except that the inven- Office. tor’s oath or declaration for a reissue application may be signed by the as- [77 FR 48821, Aug. 14, 2012, as amended at 80 signee of the entire interest if: FR 17964, Apr. 2, 2015] (1) The application does not seek to enlarge the scope of the claims of the § 1.176 Examination of reissue. original patent; or (a) A reissue application will be ex- (2) The application for the original amined in the same manner as a non- patent was filed under § 1.46 by the as- reissue, non-provisional application, signee of the entire interest. and will be subject to all the require- (d) If errors previously identified in ments of the rules related to non-re- the inventor’s oath or declaration for a issue applications. Applications for re- reissue application pursuant to para- issue will be acted on by the examiner graph (a) of this section are no longer in advance of other applications. being relied upon as the basis for re- (b) Restriction between subject mat- issue, the applicant must identify an ter of the original patent claims and error being relied upon as the basis for previously unclaimed subject matter reissue. may be required (restriction involving (e) The inventor’s oath or declaration only subject matter of the original pat- for a reissue application required by ent claims will not be required). If re- paragraph (a) of this section may be striction is required, the subject mat- submitted under the provisions of ter of the original patent claims will be § 1.53(f), except that the provisions of held to be constructively elected unless § 1.53(f)(3) do not apply to a reissue ap- a disclaimer of all the patent claims is plication. filed in the reissue application, which

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disclaimer cannot be withdrawn by ap- § 1.178 Original patent; continuing plicant. duty of applicant. [65 FR 54676, Sept. 8, 2000] (a) The application for reissue of a patent shall constitute an offer to sur- § 1.177 Issuance of multiple reissue render that patent, and the surrender patents. shall take effect upon reissue of the (a) The Office may reissue a patent as patent. Until a reissue application is granted, the original patent shall re- multiple reissue patents. If applicant main in effect. files more than one application for the (b) In any reissue application before reissue of a single patent, each such ap- the Office, the applicant must call to plication must contain or be amended the attention of the Office any prior or to contain in the first sentence of the concurrent proceedings in which the specification a notice stating that patent (for which reissue is requested) more than one reissue application has is or was involved, such as inter- been filed and identifying each of the ferences or trials before the Patent reissue applications by relationship, Trial and Appeal Board, reissues, reex- application number and filing date. aminations, or litigations and the re- The Office may correct by certificate sults of such proceedings (see also of correction under § 1.322 any reissue § 1.173(a)(1)). patent resulting from an application to which this paragraph applies that does [65 FR 54676, Sept. 8, 2000, as amended at 69 not contain the required notice. FR 56544, Sept. 21, 2004; 77 FR 46625, Aug. 6, 2012] (b) If applicant files more than one application for the reissue of a single § 1.179 [Reserved] patent, each claim of the patent being reissued must be presented in each of PETITIONS AND ACTION BY THE DIRECTOR the reissue applications as an amended, unamended, or canceled (shown in AUTHORITY: 35 U.S.C. 6; 15 U.S.C. 1113, 1123. brackets) claim, with each such claim bearing the same number as in the pat- § 1.181 Petition to the Director. ent being reissued. The same claim of (a) Petition may be taken to the Di- the patent being reissued may not be rector: presented in its original unamended (1) From any action or requirement form for examination in more than one of any examiner in the ex parte pros- of such multiple reissue applications. ecution of an application, or in ex parte The numbering of any added claims in or inter partes prosecution of a reexam- any of the multiple reissue applica- ination proceeding which is not subject tions must follow the number of the to appeal to the Patent Trial and Ap- highest numbered original patent peal Board or to the court; claim. (2) In cases in which a statute or the (c) If any one of the several reissue rules specify that the matter is to be applications by itself fails to correct determined directly by or reviewed by an error in the original patent as re- the Director; and quired by 35 U.S.C. 251 but is otherwise (3) To invoke the supervisory author- in condition for allowance, the Office ity of the Director in appropriate cir- may suspend action in the allowable cumstances. For petitions involving ac- application until all issues are resolved tion of the Patent Trial and Appeal as to at least one of the remaining re- Board, see § 41.3 of this title. issue applications. The Office may also (b) Any such petition must contain a merge two or more of the multiple re- statement of the facts involved and the issue applications into a single reissue point or points to be reviewed and the application. No reissue application action requested. Briefs or memoranda, containing only unamended patent if any, in support thereof should accompany or be embodied in the peti- claims and not correcting an error in tion; and where facts are to be proven, the original patent will be passed to the proof in the form of affidavits or issue by itself. declarations (and exhibits, if any) must [65 FR 54676, Sept. 8, 2000] accompany the petition.

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(c) When a petition is taken from an panied by the petition fee set forth in action or requirement of an examiner § 1.17(f). in the ex parte prosecution of an appli- [69 FR 56544, Sept. 21, 2004] cation, or in the ex parte or inter partes prosecution of a reexamination pro- § 1.183 Suspension of rules. ceeding, it may be required that there have been a proper request for recon- In an extraordinary situation, when justice requires, any requirement of sideration (§ 1.111) and a repeated ac- the regulations in this part which is tion by the examiner. The examiner not a requirement of the statutes may may be directed by the Director to fur- be suspended or waived by the Director nish a written statement, within a or the Director’s designee, sua sponte, specified time, setting forth the rea- or on petition of the interested party, sons for his or her decision upon the subject to such other requirements as matters averred in the petition, sup- may be imposed. Any petition under plying a copy to the petitioner. this section must be accompanied by (d) Where a fee is required for a peti- the petition fee set forth in § 1.17(f). tion to the Director the appropriate section of this part will so indicate. If [69 FR 56544, Sept. 21, 2004] any required fee does not accompany § 1.184 [Reserved] the petition, the petition will be dismissed. APPEAL TO THE PATENT TRIAL AND (e) Oral hearing will not be granted APPEAL BOARD except when considered necessary by the Director. AUTHORITY: Secs. 1.191 to 1.198 also issued (f) The mere filing of a petition will under 35 U.S.C. 134. not stay any period for reply that may be running against the application, nor § 1.191 Appeal to Patent Trial and Ap- act as a stay of other proceedings. Any peal Board. petition under this part not filed with- Appeals to the Patent Trial and Ap- in two months of the mailing date of peal Board under 35 U.S.C. 134(a) and the action or notice from which relief (b) are conducted according to part 41 is requested may be dismissed as un- of this title. timely, except as otherwise provided. [77 FR 46625, Aug. 6, 2012] This two-month period is not extendable. §§ 1.192–1.196 [Reserved] (g) The Director may delegate to appropriate Patent and Trademark Office § 1.197 Termination of proceedings. officials the determination of peti- (a) Proceedings on an application are tions. considered terminated by the dismissal [24 FR 10332, Dec. 22, 1959, as amended at 34 of an appeal or the failure to timely FR 18857, Nov. 26, 1969; 47 FR 41278, Sept. 17, file an appeal to the court or a civil ac- 1982; 49 FR 48452, Dec. 12, 1984; 65 FR 54676, tion except: Sept. 8, 2000; 65 FR 76774, Dec. 7, 2000; 69 FR (1) Where claims stand allowed in an 50000, Aug. 12, 2004; 77 FR 46625, Aug. 6, 2012] application; or (2) Where the nature of the decision § 1.182 Questions not specifically pro- requires further action by the exam- vided for. iner. All situations not specifically pro- (b) The date of termination of provided for in the regulations of this part ceedings on an application is the date will be decided in accordance with the on which the appeal is dismissed or the merits of each situation by or under date on which the time for appeal to the authority of the Director, subject the U.S. Court of Appeals for the Fed- to such other requirements as may be eral Circuit or review by civil action imposed, and such decision will be (§ 90.3 of this chapter) expires in the ab- communicated to the interested parties sence of further appeal or review. If an in writing. Any petition seeking a deci- appeal to the U.S. Court of Appeals for sion under this section must be accom- the Federal Circuit or a civil action

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has been filed, proceedings on an appli- design applications under 35 U.S.C. cation are considered terminated when chapter 16, international design appli- the appeal or civil action is termi- cations under 35 U.S.C. chapter 38, and nated. A civil action is terminated reissue applications under 35 U.S.C. when the time to appeal the judgment chapter 25 shall not be published under expires. An appeal to the U.S. Court of this section. Appeals for the Federal Circuit, wheth- (c) An application filed under 35 er from a decision of the Board or a U.S.C. 111(a) will not be published until judgment in a civil action, is termi- it includes the basic filing fee (§ 1.16(a) nated when the mandate is issued by or § 1.16(c)) and any English translation the Court. required by § 1.52(d). The Office may delay publishing any application until [78 FR 75252, Dec. 11, 2013] it includes any application size fee re- § 1.198 Reopening after a final deci- quired by the Office under § 1.16(s) or sion of the Patent Trial and Appeal § 1.492(j), a specification having papers Board. in compliance with § 1.52 and an ab- When a decision by the Patent Trial stract (§ 1.72(b)), drawings in compli- and Appeal Board on appeal has be- ance with § 1.84, a sequence listing in come final for judicial review, prosecu- compliance with §§ 1.821 through 1.825 tion of the proceeding before the pri- (if applicable), and the inventor’s oath mary examiner will not be reopened or or declaration or application data reconsidered by the primary examiner sheet containing the information speci- except under the provisions of § 1.114 or fied in § 1.63(b). § 41.50 of this title without the written (d) The Office may refuse to publish authority of the Director, and then an application, or to include a portion only for the consideration of matters of an application in the patent applica- not already adjudicated, sufficient tion publication (§ 1.215), if publication cause being shown. of the application or portion thereof would violate Federal or state law, or [77 FR 46625, Aug. 6, 2012] if the application or portion thereof contains offensive or disparaging mate- PUBLICATION OF APPLICATIONS rial. (e) The publication fee set forth in SOURCE: 65 FR 57058, Sept. 20, 2000, unless otherwise noted. § 1.18(d) must be paid in each application published under this section before § 1.211 Publication of applications. the patent will be granted. If an appli- (a) Each U.S. national application for cation is subject to publication under patent filed in the Office under 35 this section, the sum specified in the U.S.C. 111(a) and each international ap- notice of allowance under § 1.311 will plication in compliance with 35 U.S.C. also include the publication fee which 371 will be published promptly after the must be paid within three months from expiration of a period of eighteen the date of mailing of the notice of al- months from the earliest filing date for lowance to avoid abandonment of the which a benefit is sought under title 35, application. This three-month period is United States Code, unless: not extendable. If the application is (1) The application is recognized by not published under this section, the the Office as no longer pending; publication fee (if paid) will be re- (2) The application is national secu- funded. rity classified (see § 5.2(c)), subject to a [65 FR 57058, Sept. 20, 2000, as amended at 70 secrecy order under 35 U.S.C. 181, or FR 3891, Jan. 27, 2005; 77 FR 48822, Aug. 14, under national security review; 2012, as amended at 80 FR 17964, Apr. 2, 2015] (3) The application has issued as a patent in sufficient time to be removed § 1.213 Nonpublication request. from the publication process; or (a) If the invention disclosed in an (4) The application was filed with a application has not been and will not nonpublication request in compliance be the subject of an application filed in with § 1.213(a). another country, or under a multilat- (b) Provisional applications under 35 eral international agreement, that re- U.S.C. 111(b) shall not be published, and quires publication of applications

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eighteen months after filing, the appli- on the patent application publication. cation will not be published under 35 The patent application publication will U.S.C. 122(b) and § 1.211 provided: be based upon the specification and (1) A request (nonpublication re- drawings deposited on the filing date of quest) is submitted with the applica- the application, as well as the application upon filing; tion data sheet and/or the inventor’s (2) The request states in a con- oath or declaration. The patent appli- spicuous manner that the application cation publication may also be based is not to be published under 35 U.S.C. upon amendments to the specification 122(b); (other than the abstract or the claims) (3) The request contains a certifi- that are reflected in a substitute speci- cation that the invention disclosed in fication under § 1.125(b), amendments to the application has not been and will the abstract under § 1.121(b), amend- not be the subject of an application ments to the claims that are reflected filed in another country, or under a in a complete claim listing under multilateral international agreement, § 1.121(c), and amendments to the draw- that requires publication at eighteen ings under § 1.121(d), provided that such months after filing; and substitute specification or amendment (4) The request is signed in compli- is submitted in sufficient time to be ance with § 1.33(b). entered into the Office file wrapper of (b) The applicant may rescind a non- the application before technical prep- publication request at any time. A re- arations for publication of the applica- quest to rescind a nonpublication re- tion have begun. Technical prepara- quest under paragraph (a) of this section must: tions for publication of an application (1) Identify the application to which generally begin four months prior to it is directed; the projected date of publication. The (2) State in a conspicuous manner patent application publication of an that the request that the application is application that has entered the na- not to be published under 35 U.S.C. tional stage under 35 U.S.C. 371 may 122(b) is rescinded; and also include amendments made during (3) Be signed in compliance with the international stage. See paragraph § 1.33(b). (c) of this section for publication of an (c) If an applicant who has submitted application based upon a copy of the a nonpublication request under para- application submitted via the Office graph (a) of this section subsequently electronic filing system. files an application directed to the in- (b) The patent application publica- vention disclosed in the application in tion will include the name of the as- which the nonpublication request was signee, person to whom the inventor is submitted in another country, or under under an obligation to assign the in- a multilateral international agree- vention, or person who otherwise shows ment, that requires publication of ap- sufficient proprietary interest in the plications eighteen months after filing, matter if that information is provided the applicant must notify the Office of in the application data sheet in an ap- such filing within forty-five days after plication filed under § 1.46. Assignee in- the date of the filing of such foreign or formation may be included on the pat- international application. The failure ent application publication in other ap- to timely notify the Office of the filing plications if the assignee information of such foreign or international appli- is provided in an application data sheet cation shall result in abandonment of submitted in sufficient time to be en- the application in which the non- tered into the Office file wrapper of the publication request was submitted (35 application before technical prepara- U.S.C. 122(b)(2)(B)(iii)). tions for publication of the application have begun. Providing assignee infor- § 1.215 Patent application publication. mation in the application data sheet (a) The publication of an application does not substitute for compliance under 35 U.S.C. 122(b) shall include a with any requirement of part 3 of this patent application publication. The chapter to have an assignment re- date of publication shall be indicated corded by the Office.

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(c) At applicant’s option, the patent (b) The redacted copy of the applica- application publication will be based tion must be submitted in compliance upon the copy of the application (speci- with the Office electronic filing system fication, drawings, and the application requirements. The title of the inven- data sheet and/or the inventor’s oath tion in the redacted copy of the appli- or declaration) as amended, provided cation must correspond to the title of that applicant supplies such a copy in the application at the time the re- compliance with the Office electronic dacted copy of the application is sub- filing system requirements within one mitted to the Office. If the redacted month of the mailing date of the first copy of the application does not com- Office communication that includes a ply with the Office electronic filing confirmation number for the applica- system requirements, the Office will tion, or fourteen months of the earliest publish the application as provided in filing date for which a benefit is sought § 1.215(a). under title 35, United States Code, (c) The applicant must also concur- whichever is later. rently submit in paper (§ 1.52(a)) to be (d) If the copy of the application sub- filed in the application: mitted pursuant to paragraph (c) of (1) A certified copy of each foreign- this section does not comply with the filed application that corresponds to Office electronic filing system require- the application for which a redacted ments, the Office will publish the ap- copy is submitted; plication as provided in paragraph (a) (2) A translation of each such for- of this section. If, however, the Office eign-filed application that is in a lan- has not started the publication process, guage other than English, and a state- the Office may use an untimely filed ment that the translation is accurate; copy of the application supplied by the (3) A marked-up copy of the applica- applicant under paragraph (c) of this tion showing the redactions in brack- section in creating the patent applica- ets; and tion publication. (4) A certification that the redacted copy of the application eliminates only [65 FR 57058, Sept. 20, 2000, as amended at 69 the part or description of the invention FR 56544, Sept. 21, 2004; 77 FR 48822, Aug. 14, that is not contained in any applica- 2012] tion filed in a foreign country, directly or through a multilateral international § 1.217 Publication of a redacted copy agreement, that corresponds to the ap- of an application. plication filed in the Office. (a) If an applicant has filed applica- (d) The Office will provide a copy of tions in one or more foreign countries, the complete file wrapper and contents directly or through a multilateral of an application for which a redacted international agreement, and such for- copy was submitted under this section eign-filed applications or the descrip- to any person upon written request tion of the invention in such foreign- pursuant to § 1.14(c)(2), unless applicant filed applications is less extensive than complies with the requirements of the application or description of the in- paragraphs (d)(1), (d)(2), and (d)(3) of vention in the application filed in the this section. Office, the applicant may submit a re- (1) Applicant must accompany the dacted copy of the application filed in submission required by paragraph (c) of the Office for publication, eliminating this section with the following: any part or description of the inven- (i) A copy of any Office correspond- tion that is not also contained in any ence previously received by applicant of the corresponding applications filed including any desired redactions, and a in a foreign country. The Office will second copy of all Office correspond- publish the application as provided in ence previously received by applicant § 1.215(a) unless the applicant files a re- showing the redacted material in dacted copy of the application in com- brackets; and pliance with this section within sixteen (ii) A copy of each submission pre- months after the earliest filing date for viously filed by the applicant including which a benefit is sought under title 35, any desired redactions, and a second United States Code. copy of each submission previously

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filed by the applicant showing the re- clude a copy of the application in com- dacted material in brackets. pliance with the Office electronic filing (2) In addition to providing the sub- system requirements and be accom- mission required by paragraphs (c) and panied by the publication fee set forth (d)(1) of this section, applicant must: in § 1.18(d) and the processing fee set (i) Within one month of the date of forth in § 1.17(i). If the request does not mailing of any correspondence from comply with the requirements of this the Office, file a copy of such Office paragraph or the copy of the applica- correspondence including any desired tion does not comply with the Office redactions, and a second copy of such electronic filing system requirements, Office correspondence showing the re- the Office will not publish the applica- dacted material in brackets; and tion and will refund the publication (ii) With each submission by the ap- fee. plicant, include a copy of such submis- (b) The Office will grant a request for sion including any desired redactions, a corrected or revised patent applica- and a second copy of such submission tion publication other than as provided showing the redacted material in in paragraph (a) of this section only brackets. when the Office makes a material mis- (3) Each submission under paragraph take which is apparent from Office (d)(1) or (d)(2) of this paragraph must records. Any request for a corrected or also be accompanied by the processing revised patent application publication fee set forth in § 1.17(i) and a certifi- other than as provided in paragraph (a) cation that the redactions are limited of this section must be filed within two to the elimination of material that is months from the date of the patent ap- relevant only to the part or description plication publication. This period is of the invention that was not con- not extendable. tained in the redacted copy of the application submitted for publication. MISCELLANEOUS PROVISIONS (e) The provisions of § 1.8 do not apply to the time periods set forth in this § 1.248 Service of papers; manner of section. service; proof of service in cases other than interferences and trials. § 1.219 Early publication. (a) Service of papers must be on the Applications that will be published attorney or agent of the party if there under § 1.211 may be published earlier be such or on the party if there is no than as set forth in § 1.211(a) at the re- attorney or agent, and may be made in quest of the applicant. Any request for any of the following ways: early publication must be accompanied (1) By delivering a copy of the paper by the publication fee set forth in to the person served; § 1.18(d). If the applicant does not sub- (2) By leaving a copy at the usual mit a copy of the application in com- place of business of the person served pliance with the Office electronic filing with someone in his employment; system requirements pursuant to (3) When the person served has no § 1.215(c), the Office will publish the ap- usual place of business, by leaving a plication as provided in § 1.215(a). No copy at the person’s residence, with consideration will be given to requests some person of suitable age and discre- for publication on a certain date, and tion who resides there; such requests will be treated as a re- (4) Transmission by first class mail. quest for publication as soon as pos- When service is by mail the date of sible. mailing will be regarded as the date of service; § 1.221 Voluntary publication or re- (5) Whenever it shall be satisfactorily publication of patent application shown to the Director that none of the publication. above modes of obtaining or serving (a) Any request for publication of an the paper is practicable, service may be application filed before, but pending by notice published in the Official Ga- on, November 29, 2000, and any request zette. for republication of an application pre- (b) Papers filed in the Patent and viously published under § 1.211, must in- Trademark Office which are required

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to be served shall contain proof of serv- (i) Producing the applicant’s or pat- ice. Proof of service may appear on or entee’s record (if any) of all of the cor- be affixed to papers filed. Proof of serv- respondence between the Office and the ice shall include the date and manner applicant or patentee for such applica- of service. In the case of personal serv- tion, patent, or other proceeding for ice, proof of service shall also include the Office to copy (except for U.S. pat- the name of any person served, cer- ent documents); and tified by the person who made service. (ii) Providing a statement that the Proof of service may be made by: papers produced by applicant or pat- (1) An acknowledgement of service by entee are applicant’s or patentee’s or on behalf of the person served or complete record of all of the cor- (2) A statement signed by the attor- respondence between the Office and the ney or agent containing the informa- applicant or patentee for such application required by this section. tion, patent, or other proceeding (ex- (c) See § 41.106(e) or § 42.6(e) of this cept for U.S. patent documents), and title for service of papers in contested whether applicant or patentee is aware cases or trials before the Patent Trial of any correspondence between the Of- and Appeal Board. fice and the applicant or patentee for such application, patent, or other pro- [46 FR 29184, May 29, 1981, as amended at 49 FR 48454, Dec. 12, 1984; 69 FR 50000, Aug. 12, ceeding that is not among applicant’s 2004; 69 FR 58260, Sept. 30, 2004; 77 FR 46626, or patentee’s records. Aug. 6, 2012] (3) If applicant or patentee does not possess any record of the correspond- § 1.251 Unlocatable file. ence between the Office and the appli- (a) In the event that the Office can- cant or patentee for such application, not locate the file of an application, patent, or other proceeding, applicant patent, or other patent-related pro- or patentee must comply with a notice ceeding after a reasonable search, the under this section by providing a state- Office will notify the applicant or pat- ment that applicant or patentee does entee and set a time period within not possess any record of the cor- which the applicant or patentee must respondence between the Office and the comply with the notice in accordance applicant or patentee for such applica- with one of paragraphs (a)(1), (a)(2), or tion, patent, or other proceeding. (a)(3) of this section. (b) With regard to a pending applica- (1) Applicant or patentee may comply tion, failure to comply with one of with a notice under this section by pro- paragraphs (a)(1), (a)(2), or (a)(3) of this viding: section within the time period set in (i) A copy of the applicant’s or pat- the notice will result in abandonment entee’s record (if any) of all of the cor- of the application. respondence between the Office and the [65 FR 69451, Nov. 17, 2000] applicant or patentee for such application, patent, or other proceeding (ex- PREISSUANCE SUBMISSIONS AND cept for U.S. patent documents); PROTESTS BY THIRD PARTIES (ii) A list of such correspondence; and (iii) A statement that the copy is a § 1.290 Submissions by third parties in complete and accurate copy of the ap- applications. plicant’s or patentee’s record of all of (a) A third party may submit, for the correspondence between the Office consideration and entry in the record and the applicant or patentee for such of a patent application, any patents, application, patent, or other pro- published patent applications, or other ceeding (except for U.S. patent docu- printed publications of potential rel- ments), and whether applicant or pat- evance to the examination of the appli- entee is aware of any correspondence cation if the submission is made in ac- between the Office and the applicant or cordance with 35 U.S.C. 122(e) and this patentee for such application, patent, section. A third-party submission may or other proceeding that is not among not be entered or considered by the Of- applicant’s or patentee’s records. fice if any part of the submission is not (2) Applicant or patentee may comply in compliance with 35 U.S.C. 122(e) and with a notice under this section by: this section.

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(b) Any third-party submission under (3) Foreign patent or published for- this section must be filed prior to the eign patent application by the country earlier of: or patent office that issued the patent (1) The date a notice of allowance or published the application; the appli- under § 1.311 is given or mailed in the cant, patentee, or first named inventor; application; or an appropriate document number; and (2) The later of: the publication date indicated on the (i) Six months after the date on patent or published application; and which the application is first published (4) Non-patent publication by author by the Office under 35 U.S.C. 122(b) and (if any), title, pages being submitted, § 1.211, or publication date, and, where available, (ii) The date the first rejection under publisher and place of publication. If § 1.104 of any claim by the examiner is no publication date is known, the third given or mailed during the examina- party must provide evidence of publication of the application. tion. (c) Any third-party submission under (f) Any third-party submission under this section must be made in writing. this section must be accompanied by (d) Any third-party submission under the fee set forth in § 1.17(o) for every this section must include: ten items or fraction thereof identified (1) A document list identifying the in the document list. documents, or portions of documents, being submitted in accordance with (g) The fee otherwise required by paragraph (e) of this section; paragraph (f) of this section is not re- (2) A concise description of the as- quired for a submission listing three or serted relevance of each item identified fewer total items that is accompanied in the document list; by a statement by the party making (3) A legible copy of each item identi- the submission that, to the knowledge fied in the document list, other than of the person signing the statement U.S. patents and U.S. patent applica- after making reasonable inquiry, the tion publications; submission is the first and only sub- (4) An English language translation mission under 35 U.S.C. 122(e) filed in of any non-English language item iden- the application by the party or a party tified in the document list; and in privity with the party. (5) A statement by the party making (h) In the absence of a request by the the submission that: Office, an applicant need not reply to a (i) The party is not an individual who submission under this section. has a duty to disclose information with (i) The provisions of § 1.8 do not apply respect to the application under § 1.56; to the time periods set forth in this and section. (ii) The submission complies with the requirements of 35 U.S.C. 122(e) and [77 FR 42173, July 17, 2012, as amended at 78 this section. FR 62406, Oct. 21, 2013] (e) The document list required by § 1.291 Protests by the public against paragraph (d)(1) of this section must pending applications. include a heading that identifies the list as a third-party submission under (a) A protest may be filed by a mem- § 1.290, identify on each page of the list ber of the public against a pending ap- the application number of the applica- plication, and it will be matched with tion in which the submission is being the application file if it adequately filed, list U.S. patents and U.S. patent identifies the patent application. A application publications in a separate protest submitted within the time section from other items, and identify frame of paragraph (b) of this section, each: which is not matched, or not matched (1) U.S. patent by patent number, in a timely manner to permit review by first named inventor, and issue date; the examiner during prosecution, due (2) U.S. patent application publica- to inadequate identification, may not tion by patent application publication be entered and may be returned to the number, first named inventor, and pub- protestor where practical, or, if return lication date; is not practical, discarded.

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(b) The protest will be entered into information list pursuant to paragraph the record of the application if, in addi- (c)(1) of this section; tion to complying with paragraph (c) of (3) A legible copy of each item identi- this section, the protest has been fied in the information list, other than served upon the applicant in accord- U.S. patents and U.S. patent applica- ance with § 1.248, or filed with the Of- tion publications; fice in duplicate in the event service is (4) An English language translation not possible; and, except for paragraph of any non-English language item iden- (b)(1) of this section, the protest was tified in the information list; and filed prior to the date the application (5) If it is a second or subsequent pro- was published under § 1.211, or the date a notice of allowance under § 1.311 was test by the same real party in interest, given or mailed, whichever occurs first: an explanation as to why the issue(s) (1) If a protest is accompanied by the raised in the second or subsequent pro- written consent of the applicant, the test are significantly different than protest will be considered if the protest those raised earlier and why the sig- is filed prior to the date a notice of al- nificantly different issue(s) were not lowance under § 1.311 is given or mailed presented earlier, and a processing fee in the application. under § 1.17(i) must be submitted. (2) A statement must accompany a (d) A member of the public filing a protest that it is the first protest sub- protest in an application under this mitted in the application by the real section will not receive any commu- party in interest who is submitting the nication from the Office relating to the protest; or the protest must comply protest, other than the return of a self- with paragraph (c)(5) of this section. addressed postcard which the member This section does not apply to the first of the public may include with the pro- protest filed in an application. test in order to receive an acknowledg- (c) In addition to compliance with ment by the Office that the protest has paragraphs (a) and (b) of this section, a been received. The limited involvement protest must include: of the member of the public filing a (1) An information list of the docu- protest pursuant to this section ends ments, portions of documents, or other with the filing of the protest, and no information being submitted, where further submission on behalf of the each: (i) U.S. patent is identified by patent protestor will be considered, unless the number, first named inventor, and submission is made pursuant to para- issue date; graph (c)(5) of this section. (ii) U.S. patent application publica- (e) Where a protest raising inequi- tion is identified by patent application table conduct issues satisfies the provi- publication number, first named inven- sions of this section for entry, it will tor, and publication date; be entered into the application file, (iii) Foreign patent or published for- generally without comment on the in- eign patent application is identified by equitable conduct issues raised in it. the country or patent office that issued (f) In the absence of a request by the the patent or published the applica- Office, an applicant need not reply to a tion; an appropriate document number; protest. the applicant, patentee, or first named (g) Protests that fail to comply with inventor; and the publication date indi- paragraphs (b) or (c) of this section cated on the patent or published appli- may not be entered, and if not entered, cation; will be returned to the protestor, or (iv) Non-patent publication is identi- discarded, at the option of the Office. fied by author (if any), title, pages being submitted, publication date, and, [69 FR 56544, Sept. 21, 2004, as amended at 77 where available, publisher and place of FR 42173, July 17, 2012] publication; and (v) Item of other information is identified by date, if known. (2) A concise explanation of the relevance of each item identified in the

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§§ 1.292–1.297 [Reserved] § 1.313 Withdrawal from issue. (a) Applications may be withdrawn REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT from issue for further action at the initiative of the Office or upon petition by §§ 1.301–1.304 [Reserved] the applicant. To request that the Of- fice withdraw an application from ALLOWANCE AND ISSUE OF PATENT issue, applicant must file a petition under this section including the fee set § 1.311 Notice of allowance. forth in § 1.17(h) and a showing of good (a) If, on examination, it appears and sufficient reasons why withdrawal that the applicant is entitled to a pat- of the application from issue is nec- ent under the law, a notice of allow- essary. A petition under this section is ance will be sent to the applicant at not required if a request for continued the correspondence address indicated examination under § 1.114 is filed prior in § 1.33. The notice of allowance shall to payment of the issue fee. If the Of- specify a sum constituting the issue fee fice withdraws the application from and any required publication fee issue, the Office will issue a new notice (§ 1.211(e)), which issue fee and any re- of allowance if the Office again allows quired publication fee must both be the application. paid within three months from the date (b) Once the issue fee has been paid, of mailing of the notice of allowance to the Office will not withdraw the appli- avoid abandonment of the application. cation from issue at its own initiative This three-month period is not extendable. for any reason except: (b) An authorization to charge the (1) A mistake on the part of the Of- issue fee or other post-allowance fees fice; set forth in § 1.18 to a deposit account (2) A violation of § 1.56 or illegality in may be filed in an individual applica- the application; tion only after mailing of the notice of (3) Unpatentability of one or more allowance. The submission of either of claims; or the following after the mailing of a no- (4) For an interference or derivation tice of allowance will operate as a re- proceeding. quest to charge the correct issue fee or (c) Once the issue fee has been paid, any publication fee due to any deposit the application will not be withdrawn account identified in a previously filed from issue upon petition by the appli- authorization to charge such fees: cant for any reason except: (1) An incorrect issue fee or publica- (1) Unpatentability of one of more tion fee; or claims, which petition must be accom- (2) A fee transmittal form (or letter) panied by an unequivocal statement for payment of issue fee or publication that one or more claims are fee. unpatentable, an amendment to such [65 FR 57060, Sept. 20, 2000, as amended at 66 claim or claims, and an explanation as FR 67096, Dec. 28, 2001; 69 FR 56545, Sept. 21, to how the amendment causes such 2004; 78 FR 62406, Oct. 21, 2013] claim or claims to be patentable; (2) Consideration of a request for con- § 1.312 Amendments after allowance. tinued examination in compliance with No amendment may be made as a § 1.114; or matter of right in an application after (3) Express abandonment of the appli- the mailing of the notice of allowance. cation. Such express abandonment may Any amendment filed pursuant to this be in favor of a continuing application. section must be filed before or with the (d) A petition under this section will payment of the issue fee, and may be not be effective to withdraw the appli- entered on the recommendation of the cation from issue unless it is actually primary examiner, approved by the Di- received and granted by the appro- rector, without withdrawing the appli- priate officials before the date of issue. cation from issue. Withdrawal of an application from [65 FR 14873, Mar. 20, 2000] issue after payment of the issue fee

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may not be effective to avoid publica- disclaimer, to be recorded in the Pat- tion of application information. ent and Trademark Office, must: (1) Be signed by the patentee, or an [65 FR 14873, Mar. 20, 2000, as amended at 65 FR 50105, Aug. 16, 2000; 77 FR 46626, Aug. 6, attorney or agent of record; 2012] (2) Identify the patent and complete claim or claims, or term being dis- § 1.314 Issuance of patent. claimed. A disclaimer which is not a disclaimer of a complete claim or If applicant timely pays the issue fee, claims, or term will be refused recorda- the Office will issue the patent in reg- tion; ular course unless the application is (3) State the present extent of pat- withdrawn from issue (§ 1.313) or the Of- entee’s ownership interest in the pat- fice defers issuance of the patent. To ent; and request that the Office defer issuance (4) Be accompanied by the fee set of a patent, applicant must file a peti- forth in § 1.20(d). tion under this section including the (b) An applicant may disclaim or fee set forth in § 1.17(h) and a showing dedicate to the public the entire term, of good and sufficient reasons why it is or any terminal part of the term, of a necessary to defer issuance of the pat- patent to be granted. Such terminal ent. disclaimer is binding upon the grantee [65 FR 54677, Sept. 8, 2000] and its successors or assigns. The terminal disclaimer, to be recorded in the § 1.315 Delivery of patent. Patent and Trademark Office, must: The patent will be delivered or (1) Be signed by the applicant or an mailed upon issuance to the cor- attorney or agent of record; respondence address of record. See (2) Specify the portion of the term of § 1.33(a). the patent being disclaimed; (3) State the present extent of appli- [61 FR 42807, Aug. 19, 1996] cant’s ownership interest in the patent to be granted; and § 1.316 Application abandoned for fail- (4) Be accompanied by the fee set ure to pay issue fee. forth in § 1.20(d). If the issue fee is not paid within (c) A terminal disclaimer, when filed three months from the date of the no- to obviate judicially created double tice of allowance, the application will patenting in a patent application or in be regarded as abandoned. Such an a reexamination proceeding except as abandoned application will not be con- provided for in paragraph (d) of this sidered as pending before the Patent section, must: and Trademark Office. (1) Comply with the provisions of [62 FR 53198, Oct. 10, 1997] paragraphs (b)(2) through (b)(4) of this section; §§ 1.317–1.318 [Reserved] (2) Be signed in accordance with paragraph (b)(1) of this section if filed DISCLAIMER in a patent application or in accordance with paragraph (a)(1) of this sec- § 1.321 Statutory disclaimers, includ- tion if filed in a reexamination pro- ing terminal disclaimers. ceeding; and (a) A patentee owning the whole or (3) Include a provision that any pat- any sectional interest in a patent may ent granted on that application or any disclaim any complete claim or claims patent subject to the reexamination in a patent. In like manner any pat- proceeding shall be enforceable only entee may disclaim or dedicate to the for and during such period that said public the entire term, or any terminal patent is commonly owned with the ap- part of the term, of the patent granted. plication or patent which formed the Such disclaimer is binding upon the basis for the judicially created double grantee and its successors or assigns. A patenting. notice of the disclaimer is published in (d) A terminal disclaimer, when filed the Official Gazette and attached to the in a patent application or in a reexam- printed copies of the specification. The ination proceeding to obviate double

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patenting based upon a patent or appli- (ii) Papers submitted by a third party cation that is not commonly owned but under this section will not be made of was disqualified as prior art as set record in the file that they relate to forth in either § 1.104(c)(4)(ii) or nor be retained by the Office. (c)(5)(ii) as the result of activities un- (3) If the request relates to a patent dertaken within the scope of a joint re- involved in an interference or trial be- search agreement, must: fore the Patent Trial and Appeal (1) Comply with the provisions of Board, the request must comply with paragraphs (b)(2) through (b)(4) of this the requirements of this section and be section; accompanied by a motion under (2) Be signed in accordance with § 41.121(a)(2), § 41.121(a)(3), or § 42.20 of paragraph (b)(1) of this section if filed this title. in a patent application or be signed in (4) The Office will not issue a certifi- accordance with paragraph (a)(1) of cate of correction under this section this section if filed in a reexamination proceeding; and without first notifying the patentee (3) Include a provision waiving the (including any assignee of record) at right to separately enforce any patent the correspondence address of record as granted on that application or any pat- specified in § 1.33(a) and affording the ent subject to the reexamination pro- patentee or an assignee an opportunity ceeding and the patent or any patent to be heard. granted on the application which (b) If the nature of the mistake on formed the basis for the double pat- the part of the Office is such that a cer- enting, and that any patent granted on tificate of correction is deemed inap- that application or any patent subject propriate in form, the Director may to the reexamination proceeding shall issue a corrected patent in lieu thereof be enforceable only for and during such as a more appropriate form for certifi- period that said patent and the patent, cate of correction, without expense to or any patent granted on the applica- the patentee. tion, which formed the basis for the double patenting are not separately en- (35 U.S.C. 254) forced. [24 FR 10332, Dec. 22, 1959, as amended at 49 FR 48454, Dec. 12, 1984; 65 FR 54677, Sept. 8, [58 FR 54510, Oct. 22, 1993, as amended at 61 2000; 69 FR 50001, Aug. 12, 2004; 77 FR 46626, FR 42807, Aug. 19, 1996; 70 FR 1824, Jan. 11, Aug. 6, 2012] 2005; 70 FR 54266, Sept. 14, 2005; 77 FR 48822, Aug. 14, 2012; 78 FR 11059, Feb. 14, 2013] § 1.323 Certificate of correction of ap- CORRECTION OF ERRORS IN PATENT plicant’s mistake. The Office may issue a certificate of § 1.322 Certificate of correction of Of- correction under the conditions speci- fice mistake. fied in 35 U.S.C. 255 at the request of (a)(1) The Director may issue a cer- the patentee or the patentee’s assignee, tificate of correction pursuant to 35 upon payment of the fee set forth in U.S.C. 254 to correct a mistake in a § 1.20(a). If the request relates to a pat- patent, incurred through the fault of ent involved in an interference or trial the Office, which mistake is clearly before the Patent Trial and Appeal disclosed in the records of the Office: Board, the request must comply with (i) At the request of the patentee or the requirements of this section and be the patentee’s assignee; accompanied by a motion under (ii) Acting sua sponte for mistakes § 41.121(a)(2), § 41.121(a)(3) or § 42.20 of that the Office discovers; or this title. (iii) Acting on information about a mistake supplied by a third party. [77 FR 46626, Aug. 6, 2012] (2)(i) There is no obligation on the Office to act on or respond to a submis- § 1.324 Correction of inventorship in sion of information or request to issue patent, pursuant to 35 U.S.C. 256. a certificate of correction by a third (a) Whenever through error a person party under paragraph (a)(1)(iii) of this is named in an issued patent as the in- section. ventor, or an inventor is not named in

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an issued patent, the Director, pursu- ARBITRATION AWARDS ant to 35 U.S.C. 256, may, on application of all the parties and assignees, or §§ 1.331–1.334 [Reserved] on order of a court before which such § 1.335 Filing of notice of arbitration matter is called in question, issue a awards. certificate naming only the actual in- (a) Written notice of any award by an ventor or inventors. arbitrator pursuant to 35 U.S.C. 294 (b) Any request to correct must be filed in the Patent and Trade- inventorship of a patent pursuant to mark Office by the patentee, or the paragraph (a) of this section must be patentee’s assignee or licensee. If the accompanied by: award involves more than one patent a (1) A statement from each person separate notice must be filed for place- who is being added as an inventor and ment in the file of each patent. The no- each person who is currently named as tice must set forth the patent number, an inventor either agreeing to the the names of the inventor and patent change of inventorship or stating that owner, and the names and addresses of he or she has no disagreement in re- the parties to the arbitration. The no- gard to the requested change; tice must also include a copy of the (2) A statement from all assignees of award. the parties submitting a statement (b) If an award by an arbitrator pur- under paragraph (b)(1) of this section suant to 35 U.S.C. 294 is modified by a agreeing to the change of inventorship court, the party requesting the modi- in the patent, which statement must fication must file in the Patent and comply with the requirements of Trademark Office, a notice of the modification for placement in the file § 3.73(c) of this chapter; and of each patent to which the modifica- (3) The fee set forth in § 1.20(b). tion applies. The notice must set forth (c) For correction of inventorship in the patent number, the names of the an application, see § 1.48. inventor and patent owner, and the (d) In an interference under part 41, names and addresses of the parties to subpart D, of this title, a request for the arbitration. The notice must also correction of inventorship in a patent include a copy of the court’s order must be in the form of a motion under modifying the award. § 41.121(a)(2) of this title. In a contested (c) Any award by an arbitrator pursu- case under part 42, subpart D, of this ant to 35 U.S.C. 294 shall be unenforce- title, a request for correction of able until any notices required by para- inventorship in a patent must be in the graph (a) or (b) of this section are filed form of a motion under § 42.22 of this in the Patent and Trademark Office. If title. The motion under § 41.121(a)(2) or any required notice is not filed by the § 42.22 of this title must comply with party designated in paragraph (a) or (b) the requirements of this section. of this section, any party to the arbitration proceeding may file such a no- [77 FR 48822, Aug. 14, 2012] tice. § 1.325 Other mistakes not corrected. (35 U.S.C. 6, Pub. L. 97–247) Mistakes other than those provided [48 FR 2714, Jan. 20, 1983] for in §§ 1.322, 1.323, 1.324, and not af- §§ 1.351–1.352 [Reserved] fording legal grounds for reissue or for reexamination, will not be corrected MAINTENANCE FEES after the date of the patent. § 1.362 Time for payment of mainte- (35 U.S.C. 6, Pub. L. 97–247) nance fees. [48 FR 2714, Jan. 20, 1983] (a) Maintenance fees as set forth in §§ 1.20 (e) through (g) are required to be paid in all patents based on applications filed on or after December 12, 1980, except as noted in paragraph (b) of this section, to maintain a patent in

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force beyond 4, 8 and 12 years after the grant for the second maintenance fee, date of grant. and (b) Maintenance fees are not required (3) 11 years and 6 months and through for any plant patents or for any design the day of the 12th anniversary of the patents. grant for the third maintenance fee. (c) The application filing dates for (f) If the last day for paying a main- purposes of payment of maintenance tenance fee without surcharge set forth fees are as follows: in paragraph (d) of this section, or the (1) For an application not claiming last day for paying a maintenance fee benefit of an earlier application, the with surcharge set forth in paragraph actual United States filing date of the (e) of this section, falls on a Saturday, application. Sunday, or a federal holiday within the (2) For an application claiming ben- District of Columbia, the maintenance efit of an earlier foreign application fee and any necessary surcharge may under 35 U.S.C. 119, the United States be paid under paragraph (d) or para- filing date of the application. graph (e) respectively on the next suc- (3) For a continuing (continuation, ceeding day which is not a Saturday, division, continuation-in-part) applica- Sunday, or federal holiday. tion claiming the benefit of a prior pat- (g) Unless the maintenance fee and ent application under 35 U.S.C. 120, the actual United States filing date of the any applicable surcharge is paid within continuing application. the time periods set forth in para- (4) For a reissue application, includ- graphs (d), (e) or (f) of this section, the ing a continuing reissue application patent will expire as of the end of the claiming the benefit of a reissue appli- grace period set forth in paragraph (e) cation under 35 U.S.C. 120, United of this section. A patent which expires States filing date of the original non- for the failure to pay the maintenance reissue application on which the patent fee will expire at the end of the same reissued is based. date (anniversary date) the patent was (5) For an international application granted in the 4th, 8th, or 12th year which has entered the United States as after grant. a Designated Office under 35 U.S.C. 371, (h) The periods specified in §§ 1.362 (d) the international filing date granted and (e) with respect to a reissue appli- under Article 11(1) of the Patent Co- cation, including a continuing reissue operation Treaty which is considered application thereof, are counted from to be the United States filing date the date of grant of the original non-re- under 35 U.S.C. 363. issue application on which the reissued (d) Maintenance fees may be paid in patent is based. patents without surcharge during the periods extending respectively from: [49 FR 34724, Aug. 31, 1984, as amended at 56 (1) 3 years through 3 years and 6 FR 65154, Dec. 13, 1991; 58 FR 54511, Oct. 22, 1993; 82 FR 52816, Nov. 14, 2017] months after grant for the first maintenance fee, § 1.363 Fee address for maintenance (2) 7 years through 7 years and 6 fee purposes. months after grant for the second maintenance fee, and (a) All notices, receipts, refunds, and (3) 11 years through 11 years and 6 other communications relating to pay- months after grant for the third main- ment or refund of maintenance fees tenance fee. will be directed to the correspondence (e) Maintenance fees may be paid address used during prosecution of the with the surcharge set forth in § 1.20(h) application as indicated in § 1.33(a) un- during the respective grace periods less: after: (1) A fee address for purposes of pay- (1) 3 years and 6 months and through ment of maintenance fees is set forth the day of the 4th anniversary of the when submitting the issue fee, or grant for the first maintenance fee. (2) A change in the correspondence (2) 7 years and 6 months and through address for all purposes is filed after the day of the 8th anniversary of the payment of the issue fee, or

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(3) A fee address or a change in the manner other than that set forth in ‘‘fee address’’ is filed for purposes of re- § 1.23, or in the filing of an authoriza- ceiving notices, receipts and other cor- tion to charge a deposit account having respondence relating to the payment of insufficient funds will not constitute maintenance fees after the payment of payment of a maintenance fee or sur- the issue fee, in which instance, the charge on a patent. The procedures set latest such address will be used. forth in § 1.8 or § 1.10 may be utilized in (b) An assignment of a patent appli- paying maintenance fees and any nec- cation or patent does not result in a essary surcharges. change of the ‘‘correspondence ad- (c) In submitting maintenance fees dress’’ or ‘‘fee address’’ for mainte- and any necessary surcharges, identi- nance fee purposes. fication of the patents for which main- (c) A fee address must be an address tenance fees are being paid must in- associated with a Customer Number. clude the patent number, and the appli- [49 FR 34725, Aug. 31, 1984, as amended at 69 cation number of the United States ap- FR 29878, May 26, 2004] plication for the patent on which the maintenance fee is being paid. If the § 1.366 Submission of maintenance payment includes identification of only fees. the patent number (i.e., does not iden- (a) The patentee may pay mainte- tify the application number of the nance fees and any necessary sur- United States application for the pat- charges, or any person or organization ent on which the maintenance fee is may pay maintenance fees and any being paid), the Office may apply the necessary surcharges on behalf of a payment to the patent identified by patentee. A maintenance fee trans- patent number in the payment or may mittal letter may be signed by a juris- return the payment. tic applicant or patent owner. A pat- (d) Payment of maintenance fees and entee need not file authorization to en- any surcharges should identify the fee able any person or organization to pay being paid for each patent as to wheth- maintenance fees and any necessary er it is the 31⁄2-, 71⁄2-, or 111⁄2-year fee, surcharges on behalf of the patentee. whether small entity status is being (b) A maintenance fee and any nec- changed or claimed, the amount of the essary surcharge submitted for a pat- maintenance fee and any surcharge ent must be submitted in the amount being paid, and any assigned customer due on the date the maintenance fee number. If the maintenance fee and and any necessary surcharge are paid. any necessary surcharge is being paid A maintenance fee or surcharge may be on a reissue patent, the payment must paid in the manner set forth in § 1.23 or identify the reissue patent by reissue by an authorization to charge a deposit patent number and reissue application account established pursuant to § 1.25. number as required by paragraph (c) of Payment of a maintenance fee and any this section and should also include the necessary surcharge or the authoriza- original patent number. tion to charge a deposit account must (e) Maintenance fee payments and be submitted within the periods set surcharge payments relating thereto forth in § 1.362 (d), (e), or (f). Any pay- must be submitted separate from any ment or authorization of maintenance other payments for fees or charges, fees and surcharges filed at any other whether submitted in the manner set time will not be accepted and will not forth in § 1.23 or by an authorization to serve as a payment of the maintenance charge a deposit account. If mainte- fee except insofar as a delayed pay- nance fee and surcharge payments for ment of the maintenance fee is accept- more than one patent are submitted to- ed by the Director in an expired patent gether, they should be submitted on as pursuant to a petition filed under few sheets as possible with the patent § 1.378. Any authorization to charge a numbers listed in increasing patent deposit account must authorize the im- number order. If the payment sub- mediate charging of the maintenance mitted is insufficient to cover the fee and any necessary surcharge to the maintenance fees and surcharges for all deposit account. Payment of less than the listed patents, the payment will be the required amount, payment in a applied in the order the patents are

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listed, beginning at the top of the list- upon petition, the delay in payment of ing. the maintenance fee is shown to the (f) Notification of any change in sta- satisfaction of the Director to have tus resulting in loss of entitlement to been unintentional. If the Director ac- small entity status must be filed in a cepts payment of the maintenance fee patent prior to paying, or at the time upon petition, the patent shall be con- of paying, the earliest maintenance fee sidered as not having expired, but will due after the date on which status as a be subject to the conditions set forth in small entity is no longer appropriate. 35 U.S.C. 41(c)(2). See § 1.27(g). (b) Any petition to accept an unin- (g) Maintenance fees and surcharges tentionally delayed payment of a relating thereto will not be refunded maintenance fee must include: except in accordance with §§ 1.26 and (1) The required maintenance fee set 1.28(a). forth in § 1.20(e) through (g); [49 FR 34725, Aug. 31, 1984, as amended at 58 (2) The petition fee as set forth in FR 54503, Oct. 22, 1993; 62 FR 53199, Oct. 10, § 1.17(m); and 1997; 65 FR 54677, Sept. 8, 2000; 65 FR 78960, (3) A statement that the delay in Dec. 18, 2000; 78 FR 62406, Oct. 21, 2013] payment of the maintenance fee was unintentional. The Director may re- § 1.377 Review of decision refusing to quire additional information where accept and record payment of a maintenance fee filed prior to expi- there is a question whether the delay ration of patent. was unintentional. (c) Any petition under this section (a) Any patentee who is dissatisfied must be signed in compliance with with the refusal of the Patent and § 1.33(b). Trademark Office to accept and record a maintenance fee which was filed (d) Reconsideration of a decision re- prior to the expiration of the patent fusing to accept a delayed maintenance may petition the Director to accept fee may be obtained by filing a petition and record the maintenance fee. for reconsideration within two months (b) Any petition under this section of the decision, or such other time as must be filed within two months of the set in the decision refusing to accept action complained of, or within such the delayed payment of the mainte- other time as may be set in the action nance fee. complained of, and must be accom- (e) If the delayed payment of the panied by the fee set forth in § 1.17(g). maintenance fee is not accepted, the The petition may include a request maintenance fee will be refunded fol- that the petition fee be refunded if the lowing the decision on the petition for refusal to accept and record the main- reconsideration, or after the expiration tenance fee is determined to result of the time for filing such a petition for from an error by the Patent and Trade- reconsideration, if none is filed. mark Office. [78 FR 62407, Oct. 21, 2013] (c) Any petition filed under this section must comply with the requirements of § 1.181(b) and must be signed Subpart C—International by an attorney or agent registered to Processing Provisions practice before the Patent and Trade- mark Office, or by the patentee, the as- AUTHORITY: Secs. 1.401 to 1.499 also issued signee, or other party in interest. under 35 U.S.C. 41 and 351 through 376. [49 FR 34725, Aug. 31, 1984, as amended at 62 SOURCE: 43 FR 20466, May 11, 1978, unless FR 53199, Oct. 10, 1997; 69 FR 56545, Sept. 21, otherwise noted. 2004] GENERAL INFORMATION § 1.378 Acceptance of delayed payment of maintenance fee in expired pat- § 1.401 Definitions of terms under the ent to reinstate patent. Patent Cooperation Treaty. (a) The Director may accept the pay- (a) The abbreviation PCT and the ment of any maintenance fee due on a term Treaty mean the Patent Coopera- patent after expiration of the patent if, tion Treaty.

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(b) International Bureau means the international applications (PCT Rule World Intellectual Property Organiza- 14, 15, 16); tion located in Geneva, Switzerland. (4) Transmitting the record and (c) Administrative Instructions means search copies to the International Bu- that body of instructions for operating reau and International Searching Au- under the Patent Cooperation Treaty thority, respectively (PCT Rules 22 and referred to in PCT Rule 89. 23); and (d) Request, when capitalized, means (5) Determining compliance with ap- that element of the international applicable requirements of part 5 of this plication described in PCT Rules 3 and chapter. 4. (6) Reviewing and, unless prescrip- (e) International application, as used tions concerning national security pre- in this subchapter is defined in § 1.9(b). vent the application from being so (f) Priority date for the purpose of transmitted (PCT Rule 19.4), transmit- computing time limits under the Pat- ting the international application to ent Cooperation Treaty is defined in the International Bureau for proc- PCT Art. 2 (xi). Note also § 1.465. essing in its capacity as a Receiving (g) Demand, when capitalized, means Office: that document filed with the Inter- (i) Where the United States Receiv- national Preliminary Examining Au- ing Office is not the competent Receiv- thority which requests an inter- ing Office under PCT Rule 19.1 or 19.2 national preliminary examination. and § 1.421(a); or (h) Annexes means amendments made (ii) Where the international applica- to the claims, description or the draw- tion is not in English but is in a lan- ings before the International Prelimi- guage accepted under PCT Rule 12.1(a) nary Examining Authority. by the International Bureau as a Re- (i) Other terms and expressions in ceiving Office; or this subpart C not defined in this sec- (iii) Where there is agreement and tion are to be taken in the sense indi- authorization in accordance with PCT cated in PCT Art. 2 and 35 U.S.C. 351. Rule 19.4(a)(iii). [43 FR 20466, May 11, 1978, as amended at 52 [43 FR 20466, May 11, 1978, as amended at 60 FR 20047, May 28, 1987] FR 21439, May 2, 1995; 63 FR 29617, June 1, 1998] § 1.412 The United States Receiving Office. § 1.413 The United States International (a) The United States Patent and Searching Authority. Trademark Office is a Receiving Office (a) Pursuant to appointment by the only for applicants who are residents Assembly, the United States Patent or nationals of the United States of and Trademark Office will act as an America. International Searching Authority for (b) The Patent and Trademark Office, international applications filed in the when acting as a Receiving Office, will United States Receiving Office and in be identified by the full title ‘‘United other Receiving Offices as may be States Receiving Office’’ or by the ab- agreed upon by the Director, in accord- breviation ‘‘RO/US.’’ ance with the agreement between the (c) The major functions of the Re- Patent and Trademark Office and the ceiving Office include: International Bureau (PCT Art. (1) According of international filing 16(3)(b)). dates to international applications (b) The Patent and Trademark Office, meeting the requirements of PCT Art. when acting as an International 11(1), and PCT Rule 20; Searching Authority, will be identified (2) Assuring that international appli- by the full title ‘‘United States Inter- cations meet the standards for format national Searching Authority’’ or by and content of PCT Art. 14(1), PCT the abbreviation ‘‘ISA/US.’’ Rule 9, 26, 29.1, 37, 38, 91, and portions (c) The major functions of the Inter- of PCT Rules 3 through 11; national Searching Authority include: (3) Collecting and, when required, (1) Approving or establishing the transmitting fees due for processing title and abstract;

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(2) Considering the matter of unity of is the international intergovernmental invention; organization which acts as the coordi- (3) Conducting international and nating body under the Treaty and the international-type searches and pre- Regulations (PCT Art. 2 (xix) and 35 paring international and international- U.S.C. 351 (h)). type search reports (PCT Art. 15, 17 and (b) The major functions of the Inter- 18, and PCT Rules 25, 33 to 45 and 47), national Bureau include: and issuing declarations that no inter- (1) Publishing of international appli- national search report will be estab- cations and the International Gazette; lished (PCT Article 17(2)(a)); (2) Transmitting copies of inter- (4) Preparing written opinions of the national applications to Designated Of- International Searching Authority in fices; accordance with PCT Rule 43bis (when (3) Storing and maintaining record necessary); and copies; and (5) Transmitting the international (4) Transmitting information to au- search report and the written opinion thorities pertinent to the processing of of the International Searching Author- specific international applications. ity to the applicant and the Inter- national Bureau. § 1.416 The United States International Preliminary Examining Authority. [43 FR 20466, May 11, 1978, as amended at 68 FR 59886, Oct. 20, 2003] (a) Pursuant to appointment by the Assembly, the United States Patent § 1.414 The United States Patent and and Trademark Office will act as an Trademark Office as a Designated International Preliminary Examining Office or Elected Office. Authority for international applica- (a) The United States Patent and tions filed in the United States Receiv- Trademark Office will act as a Des- ing Office and in other Receiving Of- ignated Office or Elected Office for fices as may be agreed upon by the Di- international applications in which the rector, in accordance with agreement United States of America has been des- between the Patent and Trademark Of- ignated or elected as a State in which fice and the International Bureau. patent protection is desired. (b) The United States Patent and (b) The United States Patent and Trademark Office, when acting as an Trademark Office, when acting as a International Preliminary Examining Designated Office or Elected Office dur- Authority, will be identified by the full ing international processing will be title ‘‘United States International Pre- identified by the full title ‘‘United liminary Examining Authority’’ or by States Designated Office’’ or by the ab- the abbreviation ‘‘IPEA/US.’’ breviation ‘‘DO/US’’ or by the full title (c) The major functions of the Inter- ‘‘United States Elected Office’’ or by national Preliminary Examining Au- the abbreviation ‘‘EO/US’’. thority include: (c) The major functions of the United (1) Receiving and checking for de- States Designated Office or Elected Of- fects in the Demand; fice in respect to international applica- (2) Forwarding Demands in accord- tions in which the United States of ance with PCT Rule 59.3; America has been designated or elect- (3) Collecting the handling fee for the ed, include: International Bureau and the prelimi- (1) Receiving various notifications nary examination fee for the United throughout the international stage and States International Preliminary Ex- (2) National stage processing for amining Authority; international applications entering the (4) Informing applicant of receipt of national stage under 35 U.S.C. 371. the Demand; [52 FR 20047, May 28, 1987, as amended at 77 (5) Considering the matter of unity of FR 48823, Aug. 14, 2012] invention; (6) Providing an international pre- § 1.415 The International Bureau. liminary examination report which is a (a) The International Bureau is the non-binding opinion on the questions of World Intellectual Property Organiza- whether the claimed invention appears: tion located at Geneva, Switzerland. It to be novel, to involve an inventive

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step (to be nonobvious), and to be in- WHO MAY FILE AN INTERNATIONAL dustrially applicable; and APPLICATION (7) Transmitting the international preliminary examination report to ap- § 1.421 Applicant for international application. plicant and the International Bureau. (a) Only residents or nationals of the [52 FR 20047, May 28, 1987, as amended at 63 United States of America may file FR 29617, June 1, 1998] international applications in the United States Receiving Office. If an § 1.417 Submission of translation of international application does not in- international publication. clude an applicant who is indicated as The submission of an English lan- being a resident or national of the guage translation of the publication of United States of America, and at least an international application pursuant one applicant: to 35 U.S.C. 154(d)(4) must clearly iden- (1) Has indicated a residence or na- tify the international application to tionality in a PCT Contracting State, which it pertains (§ 1.5(a)) and be clear- or ly identified as a submission pursuant (2) Has no residence or nationality to 35 U.S.C. 154(d)(4). Otherwise, the indicated, applicant will be so notified submission will be treated as a filing and, if the international application in- under 35 U.S.C. 111(a). Such submis- cludes a fee amount equivalent to that sions should be marked ‘‘Mail Stop required by § 1.445(a)(4), the inter- PCT.’’ national application will be forwarded for processing to the International Bu- [68 FR 71007, Dec. 22, 2003] reau acting as a Receiving Office (see also § 1.412(c)(6)). § 1.419 Display of currently valid con- (b) Although the United States Re- trol number under the Paperwork ceiving Office will accept international Reduction Act. applications filed by any applicant who (a) Pursuant to the Paperwork Re- is a resident or national of the United duction Act of 1995 (44 U.S.C. 3501 et States of America for international seq.), the collection of information in processing, for the purposes of the des- this subpart has been reviewed and ap- ignation of the United States, an inter- proved by the Office of Management national application will be accepted and Budget under control number 0651– by the Patent and Trademark Office 0021. for the national stage only if the appli- (b) Notwithstanding any other provi- cant is the inventor or other person as provided in § 1.422 or § 1.424. Joint in- sion of law, no person is required to re- ventors must jointly apply for an inter- spond to nor shall a person be subject national application. to a penalty for failure to comply with (c) A registered attorney or agent of a collection of information subject to the applicant may sign the inter- the requirements of the Paperwork Re- national application Request and file duction Act unless that collection of the international application for the information displays a currently valid applicant. A separate power of attor- Office of Management and Budget con- ney from each applicant may be re- trol number. This section constitutes quired. the display required by 44 U.S.C. 3512(a) (d) Any indication of different appli- and 5 CFR 1320.5(b)(2)(i) for the collec- cants for the purpose of different Des- tion of information under Office of ignated Offices must be shown on the Management and Budget control num- Request portion of the international ber 0651–0021 (see 5 CFR application. 1320.5(b)(2)(ii)(D)). (e) Requests for changes in the indications concerning the applicant, [63 FR 29617, June 1, 1998] agent, or common representative of an international application shall be made in accordance with PCT Rule 92bis and may be required to be signed by all applicants.

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(f) Requests for withdrawals of the THE INTERNATIONAL APPLICATION international application, designa- tions, priority claims, the Demand, or § 1.431 International application re- elections shall be made in accordance quirements. with PCT Rule 90bis and must be signed (a) An international application shall by all applicants. A separate power of contain, as specified in the Treaty and attorney from the applicants will be re- the Regulations, a Request, a descrip- quired for the purposes of any request tion, one or more claims, an abstract, for a withdrawal in accordance with and one or more drawings (where re- PCT Rule 90bis which is not signed by quired). (PCT Art. 3(2) and section 207 all applicants. of the Administrative Instructions.) (b) An international filing date will [77 FR 48823, Aug. 14, 2012] be accorded by the United States Re- ceiving Office, at the time to receipt of § 1.422 Legal representative as appli- the international application, provided cant in an international applica- that: tion. (1) At least one applicant (§ 1.421) is a If an inventor is deceased or under United States resident or national and legal incapacity, the legal representa- the papers filed at the time of receipt tive of the inventor may be an appli- of the international application so in- cant in an international application dicate (35 U.S.C. 361(a), PCT Art. which designates the United States of 11(1)(i)). America. (2) The international application is in the English language (35 U.S.C. 361(c), [77 FR 48823, Aug. 14, 2012] PCT Art. 11(1)(ii)). § 1.423 [Reserved] (3) The international application contains at least the following elements § 1.424 Assignee, obligated assignee, or (PCT Art. 11(1)(iii)): person having sufficient propri- (i) An indication that it is intended etary interest as applicant in an as an international application (PCT international application. Rule 4.2); (a) A person to whom the inventor (ii) The designation of at least one has assigned or is under an obligation Contracting State of the International to assign the invention may be an ap- Patent Cooperation Union (§ 1.432); plicant in an international application (iii) The name of the applicant, as which designates the United States of prescribed (note §§ 1.421, 1.422, and America. A person who otherwise 1.424); shows sufficient proprietary interest in (iv) A part which on the face of it ap- the matter may be an applicant in an pears to be a description; and international application which des- (v) A part which on the face of it ap- ignates the United States of America pears to be a claim. on proof of the pertinent facts and a (c) Payment of the international fil- showing that such action is appro- ing fee (PCT Rule 15.2) and the trans- priate to preserve the rights of the par- mittal and search fees (§ 1.445) may be made in full at the time the inter- ties. national application papers required by (b) Neither any showing required paragraph (b) of this section are depos- under paragraph (a) of this section nor ited or within one month thereafter. documentary evidence of ownership or The international filing, transmittal, proprietary interest will be required or and search fee payable is the inter- considered by the Office in the international filing, transmittal, and search national stage, but will be required in fee in effect on the receipt date of the the national stage in accordance with international application. the conditions and requirements of (1) If the international filing, trans- § 1.46. mittal and search fees are not paid [77 FR 48823, Aug. 14, 2012] within one month from the date of receipt of the international application and prior to the sending of a notice of

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deficiency which imposes a late pay- § 1.433 Physical requirements of inter- ment fee, applicant will be notified and national application. given one month within which to pay (a) The international application and the deficient fees plus the late pay- each of the documents that may be re- ment fee. Subject to paragraph (c)(2) of ferred to in the check list of the Re- this section, the late payment fee will quest (PCT Rule 3.3(a)(ii)) shall be filed be equal to the greater of: in one copy only. (i) Fifty percent of the amount of the (b) All sheets of the international ap- deficient fees; or plication must be on A4 size paper (21.0 (ii) An amount equal to the trans- × 29.7 cm.). mittal fee; (c) Other physical requirements for (2) The late payment fee shall not ex- international applications are set forth ceed an amount equal to fifty percent in PCT Rule 11 and sections 201–207 of of the international filing fee not tak- the Administrative Instructions. ing into account any fee for each sheet § 1.434 The request. of the international application in excess of thirty sheets (PCT Rule 16bis). (a) The request shall be made on a (3) The one-month time limit set pur- standardized form (PCT Rules 3 and 4). suant to paragraph (c) of this section Copies of printed Request forms are to pay deficient fees may not be ex- available from the United States Pat- tended. ent and Trademark Office. Letters requesting printed forms should be (d) If the payment needed to cover marked ‘‘Mail Stop PCT.’’ the transmittal fee, the international (b) The Check List portion of the Re- filing fee, the search fee, and the late quest form should indicate each docu- payment fee pursuant to paragraph (c) ment accompanying the international of this section is not timely made in application on filing. accordance with PCT Rule 16bis.1(e), (c) All information, for example, ad- the Receiving Office will declare the dresses, names of States and dates, international application withdrawn shall be indicated in the Request as re- under PCT Article 14(3)(a). quired by PCT Rule 4 and Administra- [43 FR 20466, May 11, 1978, as amended at 50 tive Instructions 110 and 201. FR 9383, Mar. 7, 1985; 52 FR 20047, May 28, (d) For the purposes of the designa- 1987; 58 FR 4344, Jan. 14, 1993; 63 FR 29618, tion of the United States of America, June 1, 1998; 68 FR 59887, Oct. 20, 2003; 68 FR an international application shall in- 67805, Dec. 4, 2003; 77 FR 48823, Aug. 14, 2012] clude: (1) The name of the inventor; and § 1.432 Designation of States by filing (2) A reference to any prior-filed na- an international application. tional application or international ap- The filing of an international appli- plication designating the United States cation request shall constitute: of America, if the benefit of the filing (a) The designation of all Contracting date for the prior-filed application is to States that are bound by the Treaty on be claimed. the international filing date; (e) An international application may (b) An indication that the inter- also include in the Request a declara- national application is, in respect of tion of the inventors as provided for in each designated State to which PCT PCT Rule 4.17(iv). Article 43 or 44 applies, for the grant of [43 FR 20466, May 11, 1978, as amended at 58 every kind of protection which is avail- FR 4345, Jan. 14, 1993; 66 FR 16006, Mar. 22, able by way of the designation of that 2001; 66 FR 67096, Dec. 28, 2001; 68 FR 14337, State; and Mar. 25, 2003; 68 FR 59887, Oct. 20, 2003] (c) An indication that the inter- § 1.435 The description. national application is, in respect of each designated State to which PCT (a) The application must meet the requirements as to the content and form Article 45(1) applies, for the grant of a of the description set forth in PCT regional patent and also, unless PCT Rules 5, 9, 10, and 11 and sections 204 Article 45(2) applies, a national patent. and 208 of the Administrative Instruc- [68 FR 59887, Oct. 20, 2003] tions.

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(b) In international applications des- (B) For an international applica- ignating the United States the description having a receipt date that tion must contain upon filing an indi- is before January 1, 2014 ...... $240.00 cation of the best mode contemplated (ii) A non-electronic filing fee portion for any international by the inventor for carrying out the application designating the claimed invention. United States of America that [43 FR 20466, May 11, 1978, as amended at 63 is filed on or after November 15, FR 29618, June 1, 1998] 2011, other than by the Office electronic filing system, except § 1.436 The claims. for a plant application: By a small entity (§ 1.27(a)) ... $200.00 The requirements as to the content By other than a small entity $400.00 and format of claims are set forth in (2) A search fee (see 35 U.S.C. PCT Art. 6 and PCT Rules 6, 9, 10 and 361(d) and PCT Rule 16): 11 and shall be adhered to. The number (i) For an international applica- of the claims shall be reasonable, con- tion having a receipt date that is on or after January 1, 2014: sidering the nature of the invention By a micro entity (§ 1.29) ...... $520.00 claimed. By a small entity (§ 1.27(a)) ... $1,040.00 By other than a small or § 1.437 The drawings. micro entity ...... $2,080.00 (a) Drawings are required when they (ii) For an international application having a receipt date that are necessary for the understanding of is before January 1, 2014 ...... $2,080.00 the invention (PCT Art. 7). (3) A supplemental search fee (b) The physical requirements for when required, per additional drawings are set forth in PCT Rule 11 invention: and shall be adhered to. (i) For an international application having a receipt date that [72 FR 51563, Sept. 10, 2007] is on or after January 1, 2014: By a micro entity (§ 1.29) ...... $520.00 § 1.438 The abstract. By a small entity (§ 1.27(a)) ... $1,040.00 (a) Requirements as to the content By other than a small or micro entity ...... $2,080.00 and form of the abstract are set forth (ii) For an international applica- in PCT Rule 8, and shall be adhered to. tion having a receipt date that (b) Lack of an abstract upon filing of is before January 1, 2014 ...... $2,080.00 an international application will not (4) A fee equivalent to the trans- affect the granting of a filing date. mittal fee in paragraph (a)(1) of this However, failure to furnish an abstract section that would apply if the USPTO within one month from the date of the was the Receiving Office for trans- notification by the Receiving Office mittal of an international application will result in the international to the International Bureau for proc- appplication being declared withdrawn. essing in its capacity as a Receiving FEES Office (PCT Rule 19.4). (5) Late furnishing fee for providing a § 1.445 International application filing, sequence listing in response to an invi- processing and search fees. tation under PCT Rule 13ter: (a) The following fees and charges for By a micro entity (§ 1.29) ...... $75.00 international applications are estab- By a small entity (§ 1.27(a)) ...... 150.00 lished by law or by the Director under By other than a small or micro the authority of 35 U.S.C. 376: entity ...... 300.00 (1) A transmittal fee (see 35 U.S.C. (b) The international filing fee shall 361(d) and PCT Rule 14) consisting of: be as prescribed in PCT Rule 15. (i) A basic portion: (A) For an international applica- [78 FR 17107, Mar. 20, 2013, as amended at 82 tion having a receipt date that FR 52816, Nov. 14, 2017] is on or after January 1, 2014: By a micro entity (§ 1.29) ...... $60.00 § 1.446 Refund of international appli- By a small entity (§ 1.27(a)) ... $120.00 cation filing and processing fees. By other than a small or (a) Money paid for international ap- micro entity ...... $240.00 plication fees, where paid by actual 138

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mistake or in excess, such as a pay- (2) The Demand is considered not to ment not required by law or treaty and have been submitted (PCT Rule 54.4(a)). its regulations, may be refunded. A (35 U.S.C. 6; 15 U.S.C. 1113, 1123) mere change of purpose after the payment of a fee will not entitle a party to [43 FR 20466, May 11, 1978, as amended at 50 a refund of such fee. The Office will not FR 9384, Mar. 7, 1985; 50 FR 31826, Aug. 6, 1985; refund amounts of twenty-five dollars 58 FR 4345, Jan. 14, 1993; 65 FR 54677, Sept. 8, 2000] or less unless a refund is specifically requested and will not notify the payor PRIORITY of such amounts. If the payor or party requesting a refund does not provide § 1.451 The priority claim and priority the banking information necessary for document in an international appli- making refunds by electronic funds cation. transfer, the Office may use the bank- (a) The claim for priority must, sub- ing information provided on the pay- ject to paragraph (d) of this section, be ment instrument to make any refund made on the Request (PCT Rule 4.10) in by electronic funds transfer. a manner complying with sections 110 (b) Any request for refund under and 115 of the Administrative Instruc- paragraph (a) of this section must be tions. filed within two years from the date (b) Whenever the priority of an ear- the fee was paid. If the Office charges a lier United States national application deposit account by an amount other or international application filed with than an amount specifically indicated the United States Receiving Office is in an authorization under § 1.25(b), any claimed in an international applica- request for refund based upon such tion, the applicant may request in the charge must be filed within two years Request or in a letter of transmittal from the date of the deposit account accompanying the international appli- statement indicating such charge and cation upon filing with the United include a copy of that deposit account States Receiving Office or in a separate statement. The time periods set forth letter filed in the United States Re- in this paragraph are not extendable. ceiving Office not later than 16 months (c) Refund of the supplemental search after the priority date, that the United fees will be made if such refund is de- States Patent and Trademark Office termined to be warranted by the Direc- prepare a certified copy of the prior ap- tor or the Director’s designee acting plication for transmittal to the Inter- under PCT Rule 40.2(c). national Bureau (PCT Article 8 and (d) The international and search fees PCT Rule 17). The fee for preparing a will be refunded if no international fil- certified copy is set forth in § 1.19(b)(1). ing date is accorded or if the applica- (c) If a certified copy of the priority tion is withdrawn before transmittal of document is not submitted together the record copy to the International with the international application on Bureau (PCT Rules 15.6 and 16.2). The filing, or, if the priority application search fee will be refunded if the appli- was filed in the United States and a re- cation is withdrawn before transmittal quest and appropriate payment for of the search copy to the International preparation of such a certified copy do Searching Authority. The transmittal not accompany the international appli- fee will not be refunded. cation on filing or are not filed within (e) The handling fee (§ 1.482(b)) will be 16 months of the priority date, the cer- refunded (PCT Rule 57.6) only if: tified copy of the priority document (1) The Demand is withdrawn before must be furnished by the applicant to the Demand has been sent by the Inter- the International Bureau or to the national Preliminary Examining Au- United States Receiving Office within thority to the International Bureau, or the time limit specified in PCT Rule 17.1(a).

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(d) The applicant may correct or add quested in an international application a priority claim in accordance with filed with the United States Receiving PCT Rule 26bis.1. Office pursuant to PCT Rule 4.12 that an International Searching Authority (35 U.S.C. 6; 15 U.S.C. 1113, 1123) take into account the results of an ear- [43 FR 20466, May 11, 1978, as amended at 50 lier search, the United States Receiv- FR 9384, Mar. 7, 1985; 50 FR 11366, Mar. 21, ing Office shall prepare and transmit to 1985; 54 FR 6903, Feb. 15, 1989; 58 FR 4345, Jan. 14, 1993; 63 FR 29619, June 1, 1998; 66 FR 16006, the International Searching Authority, Mar. 22, 2001] as applicable, a copy of the results of the earlier search and any earlier clas- § 1.452 Restoration of right of priority. sification as provided under PCT Rule (a) If the international application 23bis.1. has an international filing date which (b) Subject to paragraph (c) of this is later than the expiration of the pri- section, where an international appli- ority period as defined by PCT Rule 2.4 cation filed with the United States Re- but within two months from the expi- ceiving Office claims the priority of an ration of the priority period, the right earlier application filed with the of priority in the international applica- USPTO in which the USPTO has car- tion may be restored upon request if ried out an earlier search or has classi- the delay in filing the international ap- fied such earlier application, the plication within the priority period United States Receiving Office shall was unintentional. prepare and transmit to the Inter- (b) A request to restore the right of national Searching Authority a copy of priority in an international application the results of any such earlier search under paragraph (a) of this section and earlier classification as provided must be filed not later than two under PCT Rule 23bis.2. months from the expiration of the pri- (c) The United States Receiving Of- ority period and must include: fice will not prepare a copy of the re- (1) A notice under PCT Rule 26bis.1(a) sults of an earlier search or earlier adding the priority claim, if the pri- classification referred to in paragraphs ority claim in respect of the earlier ap- (a) and (b) of this section for trans- plication is not contained in the inter- mittal to an International Searching national application; Authority from an application pre- (2) The petition fee as set forth in served in confidence (§ 1.14) unless the § 1.17(m); and international application contains (3) A statement that the delay in fil- written authority granting the Inter- ing the international application with- national Searching Authority access to in the priority period was uninten- such results. Written authority pro- tional. The Director may require addi- vided under this paragraph must be tional information where there is a signed by: question whether the delay was unin- (1) An applicant in the international tentional. application who is also an applicant in (c) If the applicant makes a request the application preserved in con- for early publication under PCT Article fidence; or 21(2)(b), any requirement under para- (2) A person set forth in § 1.14(c) per- graph (b) of this section filed after the mitted to grant access to the applica- technical preparations for inter- tion preserved in confidence. national publication have been com- [82 FR 24252, May 26, 2017] pleted by the International Bureau shall be considered as not having been REPRESENTATION submitted in time. § 1.455 Representation in international [72 FR 51563, Sept. 10, 2007, as amended at 78 applications. FR 62407, Oct. 21, 2013] (a) Applicants of international appli- § 1.453 Transmittal of documents relat- cations may be represented by attor- ing to earlier search or classifica- neys or agents registered to practice tion. before the United States Patent and (a) Subject to paragraph (c) of this Trademark Office or by an applicant section, where an applicant has re- appointed as a common representative

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(PCT Art. 49, Rules 4.8 and 90 and (c) No copy of an international appli- § 11.9). If applicants have not appointed cation may be transmitted to the an attorney or agent or one of the ap- International Bureau, a foreign Des- plicants to represent them, and there is ignated Office, or other foreign author- more than one applicant, the applicant ity by the United States Receiving Of- first named in the request and who is fice or the applicant, unless the appli- entitled to file in the U.S. Receiving cable requirements of part 5 of this Office shall be considered to be the chapter have been satisfied. common representative of all the applicants. An attorney or agent having the [43 FR 20466, May 11, 1978, as amended at 50 right to practice before a national of- FR 9384, Mar. 7, 1985; 63 FR 29619, June 1, fice with which an international appli- 1998] cation is filed and for which the United States is an International Searching TIMING Authority or International Prelimi- § 1.465 Timing of application proc- nary Examining Authority may be ap- essing based on the priority date. pointed to represent the applicants in the international application before (a) For the purpose of computing that authority. An attorney or agent time limits under the Treaty, the pri- may appoint an associate attorney or ority date shall be defined as in PCT agent who shall also then be of record Art. 2(xi). (PCT Rule 90.1(d)). The appointment of (b) When a claimed priority date is an attorney or agent, or of a common corrected under PCT Rule 26bis.1(a), or representative, revokes any earlier ap- a priority claim is added under PCT pointment unless otherwise indicated Rule 26bis.1(a), withdrawn under PCT (PCT Rule 90.6 (b) and (c)). Rule 90bis.3, or considered not to have (b) Appointment of an agent, attor- been made under PCT Rule 26bis.2, the ney or common representative (PCT priority date for the purposes of com- Rule 4.8) must be effected either in the puting any non-expired time limits will Request form, signed by applicant, in be the filing date of the earliest re- the Demand form, signed by applicant, maining priority claim under PCT Ar- or in a separate power of attorney sub- ticle 8 of the international application, mitted either to the United States Re- or if none, the international filing ceiving Office or to the International date. Bureau. (c) Powers of attorney and revoca- (c) When corrections under PCT Art. tions thereof should be submitted to 11(2), Art. 14(2) or PCT Rule 20.2(a) (i) the United States Receiving Office or (iii) are timely submitted, and the until the issuance of the international date of receipt of such corrections falls search report. later than one year from the claimed (d) The addressee for correspondence priority date or dates, the Receiving will be as indicated in section 108 of the Office shall proceed under PCT Rule Administrative Instructions. 26bis.2. [43 FR 20466, May 11, 1978, as amended at 50 [43 FR 20466, May 11, 1978, as amended at 63 FR 5171, Feb. 6, 1985; 58 FR 4345, Jan. 14, 1993; FR 29619, June 1, 1998; 72 FR 51564, Sept. 10, 68 FR 59888, Oct. 20, 2003; 69 FR 35452, June 24, 2007] 2004] § 1.468 Delays in meeting time limits. TRANSMITTAL OF RECORD COPY Delays in meeting time limits during § 1.461 Procedures for transmittal of international processing of inter- record copy to the International national applications may only be ex- Bureau. cused as provided in PCT Rule 82. For (a) Transmittal of the record copy of delays in meeting time limits in a na- the international application to the tional application, see § 1.137. International Bureau shall be made by the United States Receiving Office or as provided by PCT Rule 19.4. (b) [Reserved]

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AMENDMENTS UNITY OF INVENTION

§ 1.471 Corrections and amendments § 1.475 Unity of invention before the during international processing. International Searching Authority, the International Preliminary Ex- (a) Except as otherwise provided in amining Authority and during the this paragraph, all corrections sub- national stage. mitted to the United States Receiving (a) An international and a national Office or United States International stage application shall relate to one in- Searching Authority must be in vention only or to a group of inven- English, in the form of replacement tions so linked as to form a single gen- sheets in compliance with PCT Rules 10 eral inventive concept (‘‘requirement and 11, and accompanied by a letter of unity of invention’’). Where a group that draws attention to the differences of inventions is claimed in an applica- between the replaced sheets and the re- tion, the requirement of unity of inven- placement sheets. Replacement sheets tion shall be fulfilled only when there are not required for the deletion of is a technical relationship among those lines of text, the correction of simple inventions involving one or more of the typographical errors, and one addition same or corresponding special tech- or change of not more than five words nical features. The expression ‘‘special technical features’’ shall mean those per sheet. These changes may be stated technical features that define a con- in a letter and, if appropriate, the tribution which each of the claimed in- United States Receiving Office will ventions, considered as a whole, makes make the deletion or transfer the cor- over the prior art. rection to the international applica- (b) An international or a national tion, provided that such corrections do stage application containing claims to not adversely affect the clarity and di- different categories of invention will be rect reproducibility of the application considered to have unity of invention if (PCT Rule 26.4). Amendments that do the claims are drawn only to one of the not comply with PCT Rules 10 and 11.1 following combinations of categories: to 11.13 may not be entered. (1) A product and a process specially (b) Amendments of claims submitted adapted for the manufacture of said to the International Bureau shall be as product; or prescribed by PCT Rule 46. (2) A product and a process of use of (c) Corrections or additions to the said product; or Request of any declarations under PCT (3) A product, a process specially adapted for the manufacture of the said Rule 4.17 should be submitted to the product, and a use of the said product; International Bureau as prescribed by or PCT Rule 26ter. (4) A process and an apparatus or [43 FR 20466, May 11, 1978, as amended at 63 means specifically designed for car- FR 29619, June 1, 1998; 66 FR 16006, Mar. 22, rying out the said process; or 2001] (5) A product, a process specially adapted for the manufacture of the said § 1.472 Changes in person, name, or product, and an apparatus or means address of applicants and inven- specifically designed for carrying out tors. the said process. All requests for a change in person, (c) If an application contains claims name or address of applicants and in- to more or less than one of the com- ventor be sent to the United States Re- binations of categories of invention set ceiving Office until the time of forth in paragraph (b) of this section, unity of invention might not be issuance of the international search represent. port. Thereafter requests for such (d) If multiple products, processes of changes should be submitted to the manufacture or uses are claimed, the International Bureau. first invention of the category first [43 FR 20466, May 11, 1978. Redesignated at 52 mentioned in the claims of the applica- FR 20047, May 28, 1987] tion and the first recited invention of each of the other categories related

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thereto will be considered as the main § 1.477 Protest to lack of unity of in- invention in the claims, see PCT Arti- vention before the International cle 17(3)(a) and § 1.476(c). Searching Authority. (e) The determination whether a (a) If the applicant disagrees with the group of inventions is so linked as to holding of lack of unity of invention by form a single general inventive concept the International Searching Authority, shall be made without regard to wheth- additional fees may be paid under pro- er the inventions are claimed in sepa- test, accompanied by a request for re- rate claims or as alternatives within a fund and a statement setting forth rea- single claim. sons for disagreement or why the required additional fees are considered [58 FR 4345, Jan. 14, 1993] excessive, or both (PCT Rule 40.2(c)). (b) Protest under paragraph (a) of § 1.476 Determination of unity of in- this section will be examined by the vention before the International Director or the Director’s designee. In Searching Authority. the event that the applicant’s protest (a) Before establishing the inter- is determined to be justified, the addi- national search report, the Inter- tional fees or a portion thereof will be national Searching Authority will de- refunded. termine whether the international ap- (c) An applicant who desires that a plication complies with the require- copy of the protest and the decision ment of unity of invention as set forth thereon accompany the international in § 1.475. search report when forwarded to the Designated Offices, may notify the (b) If the International Searching Au- International Searching Authority to thority considers that the inter- that effect any time prior to the national application does not comply issuance of the international search re- with the requirement of unity of inven- port. Thereafter, such notification tion, it shall inform the applicant ac- should be directed to the International cordingly and invite the payment of Bureau (PCT Rule 40.2(c)). additional fees (note § 1.445 and PCT Art. 17(3)(a) and PCT Rule 40). The ap- [43 FR 20466, May 11, 1978. Redesignated and plicant will be given a time period in amended at 52 FR 20048, May 28, 1987] accordance with PCT Rule 40.3 to pay INTERNATIONAL PRELIMINARY the additional fees due. EXAMINATION (c) In the case of non-compliance with unity of invention and where no § 1.480 Demand for international pre- additional fees are paid, the inter- liminary examination. national search will be performed on (a) On the filing of a proper Demand the invention first mentioned (‘‘main in an application for which the United invention’’) in the claims. States International Preliminary Ex- (d) Lack of unity of invention may be amining Authority is competent and directly evident before considering the for which the fees have been paid, the claims in relation to any prior art, or international application shall be the after taking the prior art into consid- subject of an international preliminary eration, as where a document discov- examination. The preliminary exam- ered during the search shows the inven- ination fee (§ 1.482(a)(1)) and the han- tion claimed in a generic or linking dling fee (§ 1.482(b)) shall be due within claim lacks novelty or is clearly obvi- the applicable time limit set forth in ous, leaving two or more claims joined PCT Rule 57.3. (b) The Demand shall be made on a thereby without a common inventive standardized form (PCT Rule 53). Cop- concept. In such a case the Inter- ies of the printed Demand forms are national Searching Authority may available from the United States Pat- raise the objection of lack of unity of ent and Trademark Office. Letters re- invention. questing printed Demand forms should [43 FR 20466, May 11, 1978. Redesignated and be marked ‘‘Mail Stop PCT.’’ amended at 52 FR 20048, May 28, 1987; 58 FR (c) Withdrawal of a proper Demand 4346, Jan. 14, 1993] prior to the start of the international

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preliminary examination will entitle § 1.482 International preliminary ex- applicant to a refund of the prelimi- amination and processing fees. nary examination fee minus the (a) The following fees and charges for amount of the transmittal fee set forth international preliminary examination in § 1.445(a)(1). are established by the Director under (d) The filing of a Demand shall con- the authority of 35 U.S.C. 376: stitute the election of all Contracting (1) The following preliminary exam- States which are designated and are ination fee is due on filing the Demand: bound by Chapter II of the Treaty on (i) If an international search fee as the international filing date (PCT Rule set forth in § 1.445(a)(2) has been paid on 53.7). the international application to the (e) Any Demand filed after the expi- United States Patent and Trademark ration of the applicable time limit set Office as an International Searching forth in PCT Rule 54bis.1(a) shall be Authority: considered as if it had not been sub- (A) For an international prelimi- mitted (PCT Rule 54bis.1(b)). nary examination fee paid on or after January 1, 2014: [52 FR 20048, May 28, 1987, as amended at 53 By a micro entity (§ 1.29) ...... $150.00 FR 47810, Nov. 28, 1988; 58 FR 4346, Jan. 14, By a small entity (§ 1.27(a)) ... $300.00 1993; 63 FR 29619, June 1, 1998; 67 FR 523, Jan. By other than a small or 4, 2002; 68 FR 14337, Mar. 25, 2003; 68 FR 59888, micro entity ...... $600.00 Oct. 20, 2003] (B) For an international preliminary examination fee paid be- § 1.481 Payment of international pre- fore January 1, 2014 ...... $600.00 liminary examination fees. (ii) If the International Search- (a) The handling and preliminary ex- ing Authority for the inter- amination fees shall be paid within the national application was an au- time period set in PCT Rule 57.3. The thority other than the United States Patent and Trademark handling fee or preliminary examina- Office: tion fee payable is the handling fee or (A) For an international prelimi- preliminary examination fee in effect nary examination fee paid on on the date of payment. or after January 1, 2014: (1) If the handling and preliminary By a micro entity (§ 1.29) ...... $190.00 examination fees are not paid within By a small entity (§ 1.27(a)) ... $380.00 the time period set in PCT Rule 57.3, By other than a small or micro entity ...... $760.00 applicant will be notified and given one (B) For an international prelimi- month within which to pay the defi- nary examination fee paid be- cient fees plus a late payment fee equal fore January 1, 2014 $750.00. to the greater of: (2) An additional preliminary ex- (i) Fifty percent of the amount of the amination fee when required, deficient fees, but not exceeding an per additional invention: amount equal to double the handling (i) If the international preliminary examination fee set forth fee; or in paragraph (a)(1) of this sec- (ii) An amount equal to the handling tion was paid on or after Janu- fee (PCT Rule 58bis.2). ary 1, 2014: (2) The one-month time limit set in By a micro entity (§ 1.29) ...... $150.00 this paragraph to pay deficient fees By a small entity (§ 1.27(a)) ... $300.00 may not be extended. By other than a small or micro entity ...... $600.00 (b) If the payment needed to cover (ii) If the international prelimi- the handling and preliminary examina- nary examination fee set forth tion fees, pursuant to paragraph (a) of in paragraph (a)(1) of this sec- this section, is not timely made in action was paid before January 1, cordance with PCT Rule 58bis.1(d), the 2014 ...... $600.00 United States International Prelimi- (b) The handling fee is due on filing nary Examination Authority will de- the Demand and shall be prescribed in clare the Demand to be considered as if PCT Rule 57. it had not been submitted. (c) Late furnishing fee for providing a [63 FR 29619, June 1, 1998, as amended at 68 sequence listing in response to an invi- FR 59888, Oct. 20, 2003] tation under PCT Rule 13ter:

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be conducted during the period between By a micro entity (§ 1.29) ...... $75.00 the establishment of the written opin- By a small entity (§ 1.27(a)) ...... 150.00 ion and the establishment of the inter- By other than a small or micro national preliminary examination re- entity ...... 300.00 port. Additional interviews may be conducted where the examiner deter- [78 FR 17107, Mar. 20, 2013, as amended at 82 FR 52816, Nov. 14, 2017] mines that such additional interviews may be helpful to advancing the inter- § 1.484 Conduct of international pre- national preliminary examination pro- liminary examination. cedure. A summary of any such per- (a) An international preliminary ex- sonal or telephone interview must be amination will be conducted to formu- filed by the applicant or, if not filed by late a non-binding opinion as to wheth- applicant be made of record in the file er the claimed invention has novelty, by the examiner. involves an inventive step (is non-obvi- (i) If the application whose priority is ous) and is industrially applicable. claimed in the international applica- (b) International preliminary exam- tion is in a language other than ination will begin in accordance with English, the United States Inter- PCT Rule 69.1. national Preliminary Examining Au- (c) No international preliminary ex- thority may, where the validity of the amination will be conducted on inven- priority claim is relevant for the for- tions not previously searched by an mulation of the opinion referred to in International Searching Authority. Article 33(1), invite the applicant to (d) The International Preliminary furnish an English translation of the Examining Authority will establish a priority document within two months written opinion if any defect exists or from the date of the invitation. If the if the claimed invention lacks novelty, translation is not furnished within inventive step or industrial applica- that time limit, the international pre- bility and will set a non-extendable liminary report may be established as time limit in the written opinion for if the priority had not been claimed. the applicant to reply. [52 FR 20049, May 28, 1987, as amended at 58 (e) The written opinion established FR 4346, Jan. 14, 1993; 62 FR 53199, Oct. 10, by the International Searching Author- 1997; 63 FR 29619, June 1, 1998; 66 FR 16006, ity under PCT Rule 43bis.1 shall be con- Mar. 22, 2001; 68 FR 59888, Oct. 20, 2003] sidered to be a written opinion of the § 1.485 Amendments by applicant dur- United States International Prelimi- ing international preliminary exam- nary Examining Authority for the pur- ination. poses of paragraph (d) of this section. (f) The International Preliminary Ex- The applicant may make amend- amining Authority may establish fur- ments at the time of filing the De- ther written opinions under paragraph mand. The applicant may also make (d) of this section. amendments within the time limit set (g) If no written opinion under para- by the International Preliminary Ex- graph (d) of this section is necessary, amining Authority for reply to any no- or if no further written opinion under tification under § 1.484(b) or to any paragraph (f) of this section is to be es- written opinion. Any such amendments tablished, or after any written opinion must be made in accordance with PCT and the reply thereto or the expiration Rule 66.8. of the time limit for reply to such writ- [74 FR 31373, July 1, 2009] ten opinion, an international preliminary examination report will be estab- § 1.488 Determination of unity of in- lished by the International Prelimi- vention before the International nary Examining Authority. One copy Preliminary Examining Authority. will be submitted to the International (a) Before establishing any written Bureau and one copy will be submitted opinion or the international prelimi- to the applicant. nary examination report, the Inter- (h) An applicant will be permitted a national Preliminary Examining Au- personal or telephone interview with thority will determine whether the the examiner, which may be requested international application complies after the filing of a Demand, and must 145

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with the requirement of unity of inven- § 1.489 Protest to lack of unity of in- tion as set forth in § 1.475. vention before the International (b) If the International Preliminary Preliminary Examining Authority. Examining Authority considers that (a) If the applicant disagrees with the the international application does not holding of lack of unity of invention by comply with the requirement of unity of invention, it may: the International Preliminary Exam- (1) Issue a written opinion and/or an ining Authority, additional fees may be international preliminary examination paid under protest, accompanied by a report, in respect of the entire inter- request for refund and a statement set- national application and indicate that ting forth reasons for disagreement or unity of invention is lacking and speci- why the required additional fees are fy the reasons therefor without extend- considered excessive, or both. ing an invitation to restrict or pay ad- (b) Protest under paragraph (a) of ditional fees. No international prelimi- this section will be examined by the nary examination will be conducted on Director or the Director’s designee. In inventions not previously searched by the event that the applicant’s protest an International Searching Authority. is determined to be justified, the addi- (2) Invite the applicant to restrict tional fees or a portion thereof will be the claims or pay additional fees, refunded. pointing out the categories of inven- (c) An applicant who desires that a tion found, within a set time limit copy of the protest and the decision which will not be extended. No inter- thereon accompany the international national preliminary examination will preliminary examination report when be conducted on inventions not pre- forwarded to the Elected Offices, may viously searched by an International Searching Authority, or notify the International Preliminary (3) If applicant fails to restrict the Examining Authority to that effect claims or pay additional fees within any time prior to the issuance of the the time limit set for reply, the Inter- international preliminary examination national Preliminary Examining Au- report. Thereafter, such notification thority will issue a written opinion should be directed to the International and/or establish an international pre- Bureau. liminary examination report on the [52 FR 20050, May 28, 1987] main invention and shall indicate the relevant facts in the said report. In NATIONAL STAGE case of any doubt as to which invention is the main invention, the invention § 1.491 National stage commencement, first mentioned in the claims and pre- entry, and fulfillment. viously searched by an International (a) Subject to 35 U.S.C. 371(f), the na- Searching Authority shall be consid- tional stage shall commence with the ered the main invention. (c) Lack of unity of invention may be expiration of the applicable time limit directly evident before considering the under PCT Article 22 (1) or (2), or under claims in relation to any prior art, or PCT Article 39(1)(a). after taking the prior art into consid- (b) An international application en- eration, as where a document discov- ters the national stage when the appli- ered during the search shows the inven- cant has filed the documents and fees tion claimed in a generic or linking required by 35 U.S.C. 371(c)(1) and (c)(2) claim lacks novelty or is clearly obvi- within the period set in § 1.495. ous, leaving two or more claims joined (c) An international application ful- thereby without a common inventive fills the requirements of 35 U.S.C. 371 concept. In such a case the Inter- when the national stage has com- national Preliminary Examining Au- menced under 35 U.S.C. 371(b) or (f) and thority may raise the objection of lack all applicable requirements of 35 U.S.C. of unity of invention. 371 have been satisfied. [52 FR 20049, May 28, 1987, as amended at 58 [67 FR 523, Jan. 4, 2002, as amended at 77 FR FR 4346, Jan. 14, 1993; 62 FR 53200, Oct. 10, 48823, Aug. 14, 2012] 1997]

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§ 1.492 National stage fees. (4) In all situations not provided for in paragraph (b)(1), (2), or (3) of this The following fees and charges are es- section: tablished for international applications entering the national stage under 35 By a micro entity (§ 1.29) ...... $165.00 U.S.C. 371: By a small entity (§ 1.27(a)) ...... 330.00 (a) The basic national fee for an By other than a small or micro international application entering the entity ...... 660.00 national stage under 35 U.S.C. 371: (c) The examination fee for an international application entering the na- By a micro entity (§ 1.29) ...... $75.00 By a small entity (§ 1.27(a)) ...... 150.00 tional stage under 35 U.S.C. 371: By other than a small or micro (1) If an international preliminary entity ...... 300.00 examination report on the international application prepared by the (b) Search fee for an international United States International Prelimi- application entering the national stage nary Examining Authority or a written under 35 U.S.C. 371: opinion on the international applica- (1) If an international preliminary tion prepared by the United States examination report on the inter- International Searching Authority national application prepared by the states that the criteria of novelty, in- United States International Prelimi- ventive step (non-obviousness), and in- nary Examining Authority or a written dustrial applicability, as defined in opinion on the international applica- PCT Article 33 (1) to (4) have been sat- tion prepared by the United States isfied for all of the claims presented in International Searching Authority the application entering the national states that the criteria of novelty, in- stage: ventive step (non-obviousness), and in- By a micro entity (§ 1.29) ...... $0.00 dustrial applicability, as defined in By a small entity (§ 1.27(a)) ...... 0.00 PCT Article 33(1) to (4) have been satis- By other than a small or micro fied for all of the claims presented in entity ...... 0.00 the application entering the national stage: (2) In all situations not provided for in paragraph (c)(1) of this section: By a micro entity (§ 1.29) ...... $0.00 By a small entity (§ 1.27(a)) ...... 0.00 By a micro entity (§ 1.29) ...... $190.00 By other than a small or micro By a small entity (§ 1.27(a)) ...... 380.00 entity ...... 0.00 By other than a small or micro (2) If the search fee as set forth in entity ...... 760.00 § 1.445(a)(2) has been paid on the inter- (d) In addition to the basic national national application to the United fee, for filing or on later presentation States Patent and Trademark Office as at any other time of each claim in an International Searching Authority: independent form in excess of 3:

By a micro entity (§ 1.29) ...... $35.00 By a micro entity (§ 1.29) ...... $115.00 By a small entity (§ 1.27(a)) ...... 70.00 By a small entity (§ 1.27(a)) ...... 230.00 By other than a small or micro By other than a small or micro entity ...... 140.00 entity ...... 460.00 (3) If an international search report (e) In addition to the basic national on the international application has fee, for filing or on later presentation been prepared by an International at any other time of each claim Searching Authority other than the (whether dependent or independent) in United States International Searching excess of 20 (note that § 1.75(c) indicates Authority and is provided, or has been how multiple dependent claims are previously communicated by the Inter- considered for fee calculation pur- national Bureau, to the Office: poses):

By a micro entity (§ 1.29) ...... $130.00 By a micro entity (§ 1.29) ...... $25.00 By a small entity (§ 1.27(a)) ...... 260.00 By a small entity (§ 1.27(a)) ...... 50.00 By other than a small or micro By other than a small or micro entity ...... 520.00 entity ...... 100.00

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(f) In addition to the basic national § 1.495 Entering the national stage in fee, if the application contains, or is the United States of America. amended to contain, a multiple depend- (a) The applicant in an international ent claim, per application: application must fulfill the requirements of 35 U.S.C. 371 within the time By a micro entity (§ 1.29) ...... $205.00 periods set forth in paragraphs (b) and By a small entity (§ 1.27(a)) ...... 410.00 (c) of this section in order to prevent By other than a small or micro the abandonment of the international entity ...... 820.00 application as to the United States of (g) If the excess claims fees required America. The thirty-month time period by paragraphs (d) and (e) of this section set forth in paragraphs (b), (c), (d), (e) and multiple dependent claim fee re- and (h) of this section may not be ex- quired by paragraph (f) of this section tended. (b) To avoid abandonment of the ap- are not paid with the basic national fee plication, the applicant shall furnish to or on later presentation of the claims the United States Patent and Trade- for which excess claims or multiple de- mark Office not later than the expira- pendent claim fees are due, the fees re- tion of thirty months from the priority quired by paragraphs (d), (e), and (f) of date: this section must be paid or the claims (1) A copy of the international appli- canceled by amendment prior to the cation, unless it has been previously expiration of the time period set for communicated by the International reply by the Office in any notice of fee Bureau or unless it was originally filed deficiency in order to avoid abandon- in the United States Patent and Trade- ment. mark Office; and (h) Surcharge for filing any of the (2) The basic national fee (see search fee, the examination fee, or the § 1.492(a)). oath or declaration after the date of (c)(1) If applicant complies with para- the commencement of the national graph (b) of this section before expira- stage (§ 1.491(a)) pursuant to § 1.495(c): tion of thirty months from the priority date, the Office will notify the appli- By a micro entity (§ 1.29) ...... $35.00 cant if he or she has omitted any of: By a small entity (§ 1.27(a)) ...... 70.00 (i) A translation of the international By other than a small or micro entity ...... 140.00 application, as filed, into the English language, if it was originally filed in (i) For filing an English translation another language and if any English of an international application or any language translation of the publication annexes to an international prelimi- of the international application pre- nary examination report later than viously submitted under 35 U.S.C. thirty months after the priority date 154(d) (§ 1.417) is not also a translation (§ 1.495(c) and (e)): of the international application as filed By a micro entity (§ 1.29) ...... $35.00 (35 U.S.C. 371(c)(2)); By a small entity (§ 1.27(a)) ...... 70.00 (ii) The inventor’s oath or declara- By other than a small or micro tion (35 U.S.C. 371(c)(4) and § 1.497), if a entity ...... 140.00 declaration of inventorship in compliance with § 1.63 has not been previously (j) Application size fee for any inter- submitted in the international applica- national application, the specification tion under PCT Rule 4.17(iv) within the and drawings of which exceed 100 time limits provided for in PCT Rule sheets of paper, for each additional 50 26ter.1; sheets or fraction thereof: (iii) The search fee set forth in By a micro entity (§ 1.29) ...... $100.00 § 1.492(b); By a small entity (§ 1.27(a)) ...... 200.00 (iv) The examination fee set forth in By other than a small or micro § 1.492(c); and entity ...... 400.00 (v) Any application size fee required by § 1.492(j). [78 FR 4290, Jan. 18, 2013, as amended at 82 (2) A notice under paragraph (c)(1) of FR 52816, Nov. 14, 2017] this section will set a time period within which applicant must provide any

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omitted translation, search fee set be treated as complying with 35 U.S.C. forth in § 1.492(b), examination fee set 371 for purposes of eighteen-month pub- forth in § 1.492(c), and any application lication under 35 U.S.C. 122(b) and size fee required by § 1.492(j) in order to § 1.211 et seq. avoid abandonment of the application. (4) The payment of the processing fee (3) The inventor’s oath or declaration set forth in § 1.492(i) is required for ac- must also be filed within the period ceptance of an English translation specified in paragraph (c)(2) of this sec- later than the expiration of thirty tion, except that the filing of the in- months after the priority date. The ventor’s oath or declaration may be payment of the surcharge set forth in postponed until the application is oth- § 1.492(h) is required for acceptance of erwise in condition for allowance under any of the search fee, the examination the conditions specified in paragraphs fee, or the inventor’s oath or declara- (c)(3)(i) through (c)(3)(iii) of this section after the date of the commence- tion. ment of the national stage (§ 1.491(a)). (i) The application contains an appli- (5) A ‘‘Sequence Listing’’ need not be cation data sheet in accordance with translated if the ‘‘Sequence Listing’’ § 1.76 filed prior to the expiration of the complies with PCT Rule 12.1(d) and the time period set in any notice under description complies with PCT Rule paragraph (c)(1) identifying: 5.2(b). (A) Each inventor by his or her legal (d) A copy of any amendments to the name; claims made under PCT Article 19, and (B) A mailing address where the in- a translation of those amendments into ventor customarily receives mail, and English, if they were made in another residence, if an inventor lives at a loca- language, must be furnished not later tion which is different from where the than the expiration of thirty months inventor customarily receives mail, for from the priority date. Amendments each inventor. under PCT Article 19 which are not re- (ii) The applicant must file each received by the expiration of thirty quired oath or declaration in compli- months from the priority date will be ance with § 1.63, or substitute state- considered to be canceled. ment in compliance with § 1.64, no later (e) A translation into English of any than the date on which the issue fee for annexes to an international prelimi- the patent is paid. If the applicant is nary examination report (if applica- notified in a notice of allowability that ble), if the annexes were made in an- an oath or declaration in compliance other language, must be furnished not with § 1.63, or substitute statement in later than the expiration of thirty compliance with § 1.64, executed by or months from the priority date. Trans- with respect to each named inventor lations of the annexes which are not re- has not been filed, the applicant must ceived by the expiration of thirty file each required oath or declaration months from the priority date may be in compliance with § 1.63, or substitute submitted within any period set pursu- statement in compliance with § 1.64, no ant to paragraph (c) of this section ac- later than the date on which the issue companied by the processing fee set fee is paid to avoid abandonment. This forth in § 1.492(f). Annexes for which time period is not extendable under translations are not timely received § 1.136 (see § 1.136(c)). The Office may will be considered canceled. dispense with the notice provided for in (f) Verification of the translation of paragraph (c)(1) of this section if each the international application or any required oath or declaration in compli- other document pertaining to an inter- ance with § 1.63, or substitute state- national application may be required ment in compliance with § 1.64, has where it is considered necessary, if the been filed before the application is in international application or other doc- condition for allowance. ument was filed in a language other (iii) An international application in than English. which the basic national fee under 35 (g) The documents and fees sub- U.S.C. 41(a)(1)(F) has been paid and for mitted under paragraphs (b) and (c) of which an application data sheet in ac- this section must be identified as a cordance with § 1.76 has been filed may submission to enter the national stage

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under 35 U.S.C. 371. If the documents (b) An oath or declaration under § 1.63 and fees contain conflicting indications will be accepted as complying with 35 as between an application under 35 U.S.C. 371(c)(4) if it complies with the U.S.C. 111 and a submission to enter requirements of §§ 1.63(a), (c) and (g). A the national stage under 35 U.S.C. 371, substitute statement under § 1.64 will the documents and fees will be treated be accepted as complying with 35 as a submission to enter the national U.S.C. 371(c)(4) if it complies with the stage under 35 U.S.C. 371. requirements of §§ 1.64(b)(1), (c) and (e) (h) An international application be- and identifies the person executing the comes abandoned as to the United substitute statement. If a newly exe- States thirty months from the priority cuted inventor’s oath or declaration date if the requirements of paragraph under § 1.63 or substitute statement (b) of this section have not been com- under § 1.64 is not required pursuant to plied with within thirty months from § 1.63(d), submission of the copy of the the priority date. previously executed oath, declaration, [52 FR 20051, May 28, 1987, as amended at 58 or substitute statement under FR 4347, Jan. 14, 1993; 63 FR 29620, June 1, § 1.63(d)(1) is required to comply with 35 1998; 65 FR 57060, Sept. 20, 2000; 67 FR 523, U.S.C. 371(c)(4). Jan. 4, 2002; 68 FR 71007, Dec. 22, 2003; 70 FR (c) If an oath or declaration under 3892, Jan. 27, 2005; 70 FR 30365, May 26, 2005; 72 FR 46843, Aug. 21, 2007; 74 FR 52691, Oct. 14, § 1.63, or substitute statement under 2009; 77 FR 48824, Aug. 14, 2012; 78 FR 62407, § 1.64, meeting the requirements of Oct. 21, 2013] § 1.497(b) does not also meet the requirements of § 1.63 or § 1.64, an oath, § 1.496 Examination of international declaration, substitute statement, or applications in the national stage. application data sheet in accordance National stage applications having with § 1.76 to comply with § 1.63 or § 1.64 paid therein the search fee as set forth will be required. in § 1.492(b)(1) and examination fee as [77 FR 48824, Aug. 14, 2012] set forth in § 1.492(c)(1) may be amended subsequent to the date of commence- § 1.499 Unity of invention during the ment of national stage processing only national stage. to the extent necessary to eliminate objections as to form or to cancel re- If the examiner finds that a national jected claims. Such national stage ap- stage application lacks unity of inven- plications will be advanced out of turn tion under § 1.475, the examiner may in for examination. an Office action require the applicant in the response to that action to elect [77 FR 48824, Aug. 14, 2012] the invention to which the claims shall be restricted. Such requirement may be § 1.497 Inventor’s oath or declaration under 35 U.S.C. 371(c)(4). made before any action on the merits but may be made at any time before (a) When an applicant of an inter- the final action at the discretion of the national application desires to enter examiner. Review of any such require- the national stage under 35 U.S.C. 371 ment is provided under §§ 1.143 and pursuant to § 1.495, and a declaration in 1.144. compliance with § 1.63 has not been previously submitted in the international [58 FR 4347, Jan. 14, 1993] application under PCT Rule 4.17(iv) within the time limits provided for in Subpart D—Ex Parte PCT Rule 26ter.1, the applicant must file the inventor’s oath or declaration. Reexamination of Patents The inventor, or each individual who is a joint inventor of a claimed invention, SOURCE: 46 FR 29185, May 29, 1981, unless in an application for patent must exe- otherwise noted. cute an oath or declaration in accordance with the conditions and requirements of § 1.63, except as provided for in § 1.64.

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CITATION OF PRIOR ART AND WRITTEN any prior art submitted under para- STATEMENTS graph (a)(1) of this section or any written statements and accompanying in- § 1.501 Citation of prior art and writ- formation submitted under paragraph ten statements in patent files. (a)(2) of this section. (a) Information content of submission: (c) Reexamination pending: If a reex- At any time during the period of en- amination proceeding has been re- forceability of a patent, any person quested and is pending for the patent may file a written submission with the in which the submission is filed, entry Office under this section, which is di- of the submission into the official file rected to the following information: of the patent is subject to the provi- (1) Prior art consisting of patents or sions of §§ 1.502 and 1.902. printed publications which the person making the submission believes to (d) Identity: If the person making the have a bearing on the patentability of submission wishes his or her identity any claim of the patent; or to be excluded from the patent file and (2) Statements of the patent owner kept confidential, the submission pa- filed by the patent owner in a pro- pers must be submitted anonymously ceeding before a Federal court or the without any identification of the per- Office in which the patent owner took son making the submission. a position on the scope of any claim of (e) Certificate of Service: A submission the patent. Any statement submitted under this section by a person other under this paragraph must be accom- than the patent owner must include a panied by any other documents, plead- certification that a copy of the submis- ings, or evidence from the proceeding sion was served in its entirety upon in which the statement was filed that patent owner at the address as pro- address the written statement, and vided for in § 1.33 (c). A submission by a such statement and accompanying in- person other than the patent owner formation under this paragraph must that fails to include proper proof of be submitted in redacted form to ex- service as required by § 1.248(b) will not clude information subject to an appli- be entered into the patent file. cable protective order. (3) Submissions under paragraph [77 FR 46626, Aug. 6, 2012] (a)(2) of this section must identify: (i) The forum and proceeding in § 1.502 Processing of prior art cita- which patent owner filed each state- tions during an ex parte reexamina- ment; tion proceeding. (ii) The specific papers and portions Citations by the patent owner under of the papers submitted that contain § 1.555 and by an ex parte reexamination the statements; and requester under either § 1.510 or § 1.535 (iii) How each statement submitted is will be entered in the reexamination a statement in which patent owner file during a reexamination proceeding. took a position on the scope of any The entry in the patent file of citations claim in the patent. submitted after the date of an order to (b) Explanation: A submission pursu- reexamine pursuant to § 1.525 by per- ant to paragraph (a) of this section: sons other than the patent owner, or an (1) Must include an explanation in ex parte reexamination requester under writing of the pertinence and manner either § 1.510 or § 1.535, will be delayed of applying any prior art submitted under paragraph (a)(1) of this section until the reexamination proceeding has and any written statement and accom- been concluded by the issuance and panying information submitted under publication of a reexamination certifi- paragraph (a)(2) of this section to at cate. See § 1.902 for processing of prior least one claim of the patent, in order art citations in patent and reexamina- for the submission to become a part of tion files during an inter partes reexam- the official file of the patent; and ination proceeding filed under § 1.913. (2) May, if the submission is made by [72 FR 18905, Apr. 16, 2007] the patent owner, include an explanation of how the claims differ from

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REQUEST FOR Ex Parte REEXAMINATION patent owner has been served in its entirety on the patent owner at the ad- § 1.510 Request for ex parte reexam- dress as provided for in § 1.33(c). The ination. name and address of the party served (a) Any person may, at any time dur- must be indicated. If service was not ing the period of enforceability of a possible, a duplicate copy must be sup- patent, file a request for an ex parte re- plied to the Office. examination by the Office of any claim (6) A certification by the third party of the patent on the basis of prior art requester that the statutory estoppel patents or printed publications cited provisions of 35 U.S.C. 315(e)(1) or 35 under § 1.501, unless prohibited by 35 U.S.C. 325(e)(1) do not prohibit the re- U.S.C. 315(e)(1) or 35 U.S.C. 325(e)(1). quester from filing the ex parte reexam- The request must be accompanied by ination request. the fee for requesting reexamination (c) If the request does not include the set in § 1.20(c)(1). fee for requesting ex parte reexamina- (b) Any request for reexamination tion required by paragraph (a) of this must include the following parts: section and meet all the requirements (1) A statement pointing out each by paragraph (b) of this section, then substantial new question of patent- the person identified as requesting re- ability based on prior patents and examination will be so notified and printed publications. will generally be given an opportunity (2) An identification of every claim to complete the request within a speci- for which reexamination is requested, fied time. Failure to comply with the and a detailed explanation of the notice will result in the ex parte reex- pertinency and manner of applying the amination request not being granted a cited prior art to every claim for which filing date, and will result in place- reexamination is requested. For each ment of the request in the patent file statement of the patent owner and ac- as a citation if it complies with the re- companying information submitted quirements of § 1.501. pursuant to § 1.501(a)(2) which is relied (d) The filing date of the request for upon in the detailed explanation, the ex parte reexamination is the date on request must explain how that state- which the request satisfies all the re- ment is being used to determine the quirements of this section. proper meaning of a patent claim in (e) A request filed by the patent connection with the prior art applied owner may include a proposed amend- to that claim and how each relevant ment in accordance with § 1.530. claim is being interpreted. If appro- (f) If a request is filed by an attorney priate, the party requesting reexamina- or agent identifying another party on tion may also point out how claims dis- whose behalf the request is being filed, tinguish over cited prior art. the attorney or agent must have a (3) A copy of every patent or printed power of attorney from that party or publication relied upon or referred to be acting in a representative capacity in paragraph (b) (1) and (2) of this sec- pursuant to § 1.34. tion accompanied by an English lan- (35 U.S.C. 6; 15 U.S.C. 1113, 1123) guage translation of all the necessary and pertinent parts of any non-English [46 FR 29185, May 29, 1981, as amended at 47 FR 41282, Sept. 17, 1982; 62 FR 53200, Oct. 10, language patent or printed publication. 1997; 65 FR 54678, Sept. 8, 2000; 65 FR 76775, (4) A copy of the entire patent includ- Dec. 7, 2000; 71 FR 9262, Feb. 23, 2006; 71 FR ing the front face, drawings, and speci- 44223, Aug. 4, 2006; 72 FR 18905, Apr. 16, 2007; fication/claims (in double column for- 77 FR 46626, Aug. 6, 2012] mat) for which reexamination is requested, and a copy of any disclaimer, § 1.515 Determination of the request certificate of correction, or reexamina- for ex parte reexamination. tion certificate issued in the patent. (a) Within three months following All copies must have each page plainly the filing date of a request for an ex written on only one side of a sheet of parte reexamination, an examiner will paper. consider the request and determine (5) A certification that a copy of the whether or not a substantial new ques- request filed by a person other than the tion of patentability affecting any

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claim of the patent is raised by the re- patent and will be mailed to the patent quest and the prior art cited therein, owner at the address as provided for in with or without consideration of other § 1.33(c). patents or printed publications. A statement and any accompanying in- [65 FR 76775, Dec. 7, 2000] formation submitted pursuant to Ex Parte REEXAMINATION § 1.501(a)(2) will not be considered by the examiner when making a deter- § 1.525 Order for ex parte reexamina- mination on the request. The exam- tion. iner’s determination will be based on the claims in effect at the time of the (a) If a substantial new question of determination, will become a part of patentability is found pursuant to the official file of the patent, and will § 1.515 or § 1.520, the determination will be given or mailed to the patent owner include an order for ex parte reexamina- at the address provided for in § 1.33(c) tion of the patent for resolution of the and to the person requesting reexam- question. If the order for ex parte reex- ination. amination resulted from a petition pur- (b) Where no substantial new ques- suant to § 1.515(c), the ex parte reexam- tion of patentability has been found, a ination will ordinarily be conducted by refund of a portion of the fee for re- an examiner other than the examiner questing ex parte reexamination will be responsible for the initial determina- made to the requester in accordance tion under § 1.515(a). with § 1.26(c). (b) The notice published in the Offi- (c) The requester may seek review by cial Gazette under § 1.11(c) will be con- a petition to the Director under § 1.181 sidered to be constructive notice and ex within one month of the mailing date parte reexamination will proceed. of the examiner’s determination refusing ex parte reexamination. Any such [65 FR 76775, Dec. 7, 2000] petition must comply with § 1.181(b). If no petition is timely filed or if the de- § 1.530 Statement by patent owner in cision on petition affirms that no sub- ex parte reexamination; amendment stantial new question of patentability by patent owner in ex parte or inter partes reexamination; inventorship has been raised, the determination change in ex parte or inter partes shall be final and nonappealable. reexamination. [65 FR 76775, Dec. 7, 2000, as amended at 77 (a) Except as provided in § 1.510(e), no FR 46626, Aug. 6, 2012] statement or other response by the § 1.520 Ex parte reexamination at the patent owner in an ex parte reexamina- initiative of the Director. tion proceeding shall be filed prior to the determinations made in accordance The Director, at any time during the with § 1.515 or § 1.520. If a premature period of enforceability of a patent, statement or other response is filed by may determine whether or not a substantial new question of patentability the patent owner, it will not be ac- is raised by patents or printed publica- knowledged or considered in making tions which have been discovered by the determination, and it will be re- the Director or which have been turned or discarded (at the Office’s op- brought to the Director’s attention, tion). even though no request for reexamina- (b) The order for ex parte reexamination has been filed in accordance with tion will set a period of not less than § 1.510 or § 1.913. The Director may ini- two months from the date of the order tiate ex parte reexamination without a within which the patent owner may file request for reexamination pursuant to a statement on the new question of § 1.510 or § 1.913. Normally requests from patentability, including any proposed outside the Office that the Director un- amendments the patent owner wishes dertake reexamination on his own ini- to make. tiative will not be considered. Any de- (c) Any statement filed by the patent termination to initiate ex parte reex- owner shall clearly point out why the amination under this section will be- subject matter as claimed is not antici- come a part of the official file of the pated or rendered obvious by the prior

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art patents or printed publications, ei- celing the claim, without presentation ther alone or in any reasonable com- of the text of the claim. binations. Where the reexamination re- (3) Drawings. Any change to the pat- quest was filed by a third party re- ent drawings must be submitted as a quester, any statement filed by the sketch on a separate paper showing the patent owner must be served upon the proposed changes in red for approval by ex parte reexamination requester in ac- the examiner. Upon approval of the cordance with § 1.248. changes by the examiner, only new (d) Making amendments in a reexam- sheets of drawings including the ination proceeding. A proposed amend- changes and in compliance with § 1.84 ment in an ex parte or an inter partes re- must be filed. Amended figures must be examination proceeding is made by fil- identified as ‘‘Amended,’’ and any ing a paper directing that proposed added figure must be identified as specified changes be made to the pat- ‘‘New.’’ In the event a figure is can- ent specification, including the claims, celed, the figure must be surrounded by or to the drawings. An amendment brackets and identified as ‘‘Canceled.’’ paper directing that proposed specified (4) The formal requirements for pa- changes be made in a reexamination pers making up the reexamination pro- proceeding may be submitted as an ac- ceeding other than those set forth in companiment to a request filed by the this section are set out in § 1.52. patent owner in accordance with (e) Status of claims and support for § 1.510(e), as part of a patent owner claim changes. Whenever there is an statement in accordance with para- amendment to the claims pursuant to graph (b) of this section, or, where per- paragraph (d) of this section, there mitted, during the prosecution of the must also be supplied, on pages sepa- reexamination proceeding pursuant to rate from the pages containing the § 1.550(a) or § 1.937. changes, the status (i.e., pending or (1) Specification other than the claims. canceled), as of the date of the amend- Changes to the specification, other ment, of all patent claims and of all than to the claims, must be made by submission of the entire text of an added claims, and an explanation of the added or rewritten paragraph including support in the disclosure of the patent markings pursuant to paragraph (f) of for the changes to the claims made by this section, except that an entire the amendment paper. paragraph may be deleted by a state- (f) Changes shown by markings. Any ment deleting the paragraph, without changes relative to the patent being representation of the text of the para- examined which are made to the speci- graph. The precise point in the specification, including the claims, must in- fication must be identified where any clude the following markings: added or rewritten paragraph is lo- (1) The matter to be omitted by the cated. This paragraph applies whether reexamination proceeding must be en- the amendment is submitted on paper closed in brackets; and or compact disc (see §§ 1.96 and 1.825). (2) The matter to be added by the re- (2) Claims. An amendment paper must examination proceeding must be under- include the entire text of each patent lined. claim which is being proposed to be (g) Numbering of patent claims pre- changed by such amendment paper and served. Patent claims may not be re- of each new claim being proposed to be numbered. The numbering of any added by such amendment paper. For claims added in the reexamination pro- any claim changed by the amendment ceeding must follow the number of the paper, a parenthetical expression highest numbered patent claim. ‘‘amended,’’ ‘‘twice amended,’’ etc., (h) Amendment of disclosure may be re- should follow the claim number. Each quired. The disclosure must be amend- patent claim proposed to be changed ed, when required by the Office, to cor- and each proposed added claim must rect inaccuracies of description and include markings pursuant to para- definition, and to secure substantial graph (f) of this section, except that a correspondence between the claims, patent claim or proposed added claim the remainder of the specification, and should be canceled by a statement can- the drawings.

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(i) Amendments made relative to patent. § 1.535 Reply by third party requester All amendments must be made relative in ex parte reexamination. to the patent specification, including A reply to the patent owner’s state- the claims, and drawings, which are in ment under § 1.530 may be filed by the effect as of the date of filing the reex parte reexamination requester with- quest for reexamination. in two months from the date of service (j) No enlargement of claim scope. No of the patent owner’s statement. Any amendment may enlarge the scope of reply by the ex parte requester must be the claims of the patent or introduce served upon the patent owner in ac- new matter. No amendment may be cordance with § 1.248. If the patent proposed for entry in an expired pat- owner does not file a statement under ent. Moreover, no amendment, other § 1.530, no reply or other submission than the cancellation of claims, will be from the ex parte reexamination re- incorporated into the patent by a cer- quester will be considered. tificate issued after the expiration of [65 FR 76776, Dec. 7, 2000] the patent. (k) Amendments not effective until cer- § 1.540 Consideration of responses in tificate. Although the Office actions ex parte reexamination. will treat proposed amendments as The failure to timely file or serve the though they have been entered, the documents set forth in § 1.530 or in proposed amendments will not be effec- § 1.535 may result in their being refused tive until the reexamination certifi- consideration. No submissions other cate is issued and published. than the statement pursuant to § 1.530 (l) Correction of inventorship in an ex and the reply by the ex parte reexam- parte or inter partes reexamination pro- ination requester pursuant to § 1.535 ceeding. (1) When it appears in a patent will be considered prior to examina- being reexamined that the correct in- tion. ventor or inventors were not named, the Director may, on petition of all the [65 FR 76776, Dec. 7, 2000] parties set forth in § 1.324(b)(1) and § 1.550 Conduct of ex parte reexamina- (b)(2), including the assignees, and sat- tion proceedings. isfactory proof of the facts and payment of the fee set forth in § 1.20(b), or (a) All ex parte reexamination pro- on order of a court before which such ceedings, including any appeals to the matter is called in question, include in Board of Patent Appeals and Inter- ferences, will be conducted with special the reexamination certificate to be dispatch within the Office. After issued under § 1.570 or § 1.997 an amend- issuance of the ex parte reexamination ment naming only the actual inventor order and expiration of the time for or inventors. The petition must be sub- submitting any responses, the exam- mitted as part of the reexamination ination will be conducted in accord- proceeding and must satisfy the re- ance with §§ 1.104 through 1.116 and will quirements of § 1.324. result in the issuance of an ex parte re- (2) Notwithstanding paragraph (l)(1) examination certificate under § 1.570. of this section, if a petition to correct (b) The patent owner in an ex parte inventorship satisfying the require- reexamination proceeding will be given ments of § 1.324 is filed in a reexamina- at least thirty days to respond to any tion proceeding, and the reexamination Office action. In response to any rejec- proceeding is concluded other than by tion, such response may include fur- a reexamination certificate under ther statements and/or proposed § 1.570 or § 1.997, a certificate of correc- amendments or new claims to place the tion indicating the change of patent in a condition where all claims, inventorship stated in the petition will if amended as proposed, would be pat- be issued upon request by the patentee. entable. [46 FR 29185, May 29, 1981, as amended at 62 (c) The time for taking any action by FR 53200, Oct. 10, 1997; 65 FR 54678, Sept. 8, a patent owner in an ex parte reexam- 2000; 65 FR 76775, Dec. 7, 2000; 72 FR 18905, ination proceeding may be extended as Apr. 16, 2007; 77 FR 48825, Aug. 14, 2012] provided in this paragraph.

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(1) Any request for such an extension a certificate concluding the reexamina- must specify the requested period of tion proceeding under § 1.570 in accord- extension and be accompanied by the ance with the last action of the Office. petition fee set forth in § 1.17(g). (e) If a response by the patent owner (2) Any request for an extension in a is not timely filed in the Office, a peti- third party requested ex parte reexam- tion may be filed pursuant to § 1.137 to ination must be filed on or before the revive a reexamination prosecution day on which action by the patent terminated under paragraph (d) of this owner is due, and the mere filing of section if the delay in response was un- such a request for extension will not ef- intentional. fect the extension. A request for an ex- (f) The reexamination requester will tension in a third party requested ex parte reexamination will not be granted be sent copies of Office actions issued in the absence of sufficient cause or for during the ex parte reexamination pro- more than a reasonable time. ceeding. After filing of a request for ex (3) Any request for an extension in a parte reexamination by a third party patent owner requested or Director or- requester, any document filed by either dered ex parte reexamination for up to the patent owner or the third party re- two months from the time period set in quester must be served on the other the Office action must be filed no later party in the reexamination proceeding than two months from the expiration in the manner provided by § 1.248. The of the time period set in the Office ac- document must reflect service or the tion. A request for an extension in a document may be refused consideration patent owner requested or Director or- by the Office. dered ex parte reexamination for more (g) The active participation of the ex than two months from the time period parte reexamination requester ends set in the Office action must be filed on with the reply pursuant to § 1.535, and or before the day on which action by no further submissions on behalf of the the patent owner is due, and the mere reexamination requester will be ac- filing of a request for an extension for knowledged or considered. Further, no more than two months from the time submissions on behalf of any third par- period set in the Office action will not ties will be acknowledged or considered effect the extension. The time for tak- unless such submissions are: ing action in a patent owner requested or Director ordered ex parte reexamina- (1) in accordance with § 1.510 or § 1.535; tion will not be extended for more than or two months from the time period set in (2) entered in the patent file prior to the Office action in the absence of suf- the date of the order for ex parte reex- ficient cause or for more than a reason- amination pursuant to § 1.525. able time. (h) Submissions by third parties, (4) The reply or other action must in filed after the date of the order for ex any event be filed prior to the expira- parte reexamination pursuant to § 1.525, tion of the period of extension, but in must meet the requirements of and will no situation may a reply or other ac- be treated in accordance with § 1.501(a). tion be filed later than the maximum (i) A petition in an ex parte reexam- time period set by statute. ination proceeding must be accom- (5) See § 90.3(c) of this title for exten- panied by the fee set forth in sions of time for filing a notice of ap- § 1.20(c)(6), except for petitions under peal to the U.S. Court of Appeals for paragraph (c) of this section to extend the Federal Circuit or for commencing the period for response by a patent a civil action. owner, petitions under paragraph (e) of (d) If the patent owner fails to file a this section to accept a delayed re- timely and appropriate response to any sponse by a patent owner, petitions Office action or any written statement of an interview required under under § 1.78 to accept an unintention- § 1.560(b), the prosecution in the ex ally delayed benefit claim, and peti- parte reexamination proceeding will be tions under § 1.530(l) for correction of a terminated prosecution, and the Di- rector will proceed to issue and publish

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inventorship in a reexamination pro- ability in a reexamination proceeding. ceeding. Each individual associated with the patent owner in a reexamination pro- [65 FR 76776, Dec. 7, 2000, as amended at 69 FR 56545, Sept. 21, 2004; 72 FR 18905, Apr. 16, ceeding has a duty of candor and good 2007; 77 FR 48851, Aug. 14, 2012; 78 FR 62407, faith in dealing with the Office, which Oct. 21, 2013] includes a duty to disclose to the Office all information known to that indi- § 1.552 Scope of reexamination in ex vidual to be material to patentability parte reexamination proceedings. in a reexamination proceeding. The in- (a) Claims in an ex parte reexamina- dividuals who have a duty to disclose tion proceeding will be examined on to the Office all information known to the basis of patents or printed publica- them to be material to patentability in tions and, with respect to subject mat- a reexamination proceeding are the ter added or deleted in the reexamina- patent owner, each attorney or agent tion proceeding, on the basis of the re- who represents the patent owner, and quirements of 35 U.S.C. 112. every other individual who is sub- (b) Claims in an ex parte reexamina- stantively involved on behalf of the tion proceeding will not be permitted patent owner in a reexamination pro- to enlarge the scope of the claims of ceeding. The duty to disclose the infor- the patent. mation exists with respect to each (c) Issues other than those indicated claim pending in the reexamination in paragraphs (a) and (b) of this section proceeding until the claim is cancelled. will not be resolved in a reexamination Information material to the patent- proceeding. If such issues are raised by ability of a cancelled claim need not be the patent owner or third party resubmitted if the information is not ma- quester during a reexamination pro- terial to patentability of any claim re- ceeding, the existence of such issues maining under consideration in the re- will be noted by the examiner in the examination proceeding. The duty to next Office action, in which case the disclose all information known to be patent owner may consider the advis- material to patentability in a reexam- ability of filing a reissue application to ination proceeding is deemed to be sat- have such issues considered and re- isfied if all information known to be solved. material to patentability of any claim (d) Any statement of the patent in the patent after issuance of the reex- owner and any accompanying informa- amination certificate was cited by the tion submitted pursuant to § 1.501(a)(2) Office or submitted to the Office in an which is of record in the patent being information disclosure statement. reexamined (which includes any reex- However, the duties of candor, good amination files for the patent) may be faith, and disclosure have not been used after a reexamination proceeding complied with if any fraud on the Of- has been ordered to determine the fice was practiced or attempted or the proper meaning of a patent claim when duty of disclosure was violated through applying patents or printed publica- bad faith or intentional misconduct by, tions. or on behalf of, the patent owner in the [65 FR 76776, Dec. 7, 2000, as amended at 77 reexamination proceeding. Any infor- FR 46627, Aug. 6, 2012] mation disclosure statement must be filed with the items listed in § 1.98(a) as § 1.555 Information material to patent- applied to individuals associated with ability in ex parte reexamination the patent owner in a reexamination and inter partes reexamination pro- proceeding, and should be filed within ceedings. two months of the date of the order for (a) A patent by its very nature is af- reexamination, or as soon thereafter as fected with a public interest. The pub- possible. lic interest is best served, and the most (b) Under this section, information is effective reexamination occurs when, material to patentability in a reexam- at the time a reexamination pro- ination proceeding when it is not cu- ceeding is being conducted, the Office mulative to information of record or is aware of and evaluates the teachings being made of record in the reexamina- of all information material to patent- tion proceeding, and

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(1) It is a patent or printed publica- participate in interviews with exam- tion that establishes, by itself or in iners will not be granted. combination with other patents or (b) In every instance of an interview printed publications, a prima facie case with an examiner in an ex parte reex- of unpatentability of a claim; or amination proceeding, a complete writ- (2) It refutes, or is inconsistent with, ten statement of the reasons presented a position the patent owner takes in: at the interview as warranting favor- (i) Opposing an argument of able action must be filed by the patent unpatentability relied on by the Office, owner. An interview does not remove or the necessity for response to Office ac- (ii) Asserting an argument of patent- tions as specified in § 1.111. Patent own- ability. er’s response to an outstanding Office A prima facie case of unpatentability action after the interview does not re- of a claim pending in a reexamination move the necessity for filing the writ- proceeding is established when the in- ten statement. The written statement formation compels a conclusion that a must be filed as a separate part of a re- claim is unpatentable under the pre- sponse to an Office action outstanding ponderance of evidence, burden-of- at the time of the interview, or as a proof standard, giving each term in the separate paper within one month from claim its broadest reasonable construc- the date of the interview, whichever is tion consistent with the specification, later. and before any consideration is given [65 FR 76777, Dec. 7, 2000] to evidence which may be submitted in an attempt to establish a contrary con- § 1.565 Concurrent office proceedings clusion of patentability. which include an ex parte reexam- (c) The responsibility for compliance ination proceeding. with this section rests upon the indi- (a) In an ex parte reexamination pro- viduals designated in paragraph (a) of ceeding before the Office, the patent this section and no evaluation will be owner must inform the Office of any made by the Office in the reexamina- prior or concurrent proceedings in tion proceeding as to compliance with which the patent is or was involved this section. If questions of compliance such as interferences, reissues, ex parte with this section are raised by the pat- reexaminations, inter partes reexamina- ent owner or the third party requester tions, or litigation and the results of during a reexamination proceeding, such proceedings. See § 1.985 for notifi- they will be noted as unresolved ques- cation of prior or concurrent pro- tions in accordance with § 1.552(c). ceedings in an inter partes reexamina- [57 FR 2036, Jan. 17, 1992, as amended at 65 tion proceeding. FR 76776, Dec. 7, 2000] (b) If a patent in the process of ex parte reexamination is or becomes in- § 1.560 Interviews in ex parte reexam- volved in litigation, the Director shall ination proceedings. determine whether or not to suspend (a) Interviews in ex parte reexamina- the reexamination. See § 1.987 for inter tion proceedings pending before the Of- partes reexamination proceedings. fice between examiners and the owners (c) If ex parte reexamination is or- of such patents or their attorneys or dered while a prior ex parte reexamina- agents of record must be conducted in tion proceeding is pending and prosecu- the Office at such times, within Office tion in the prior ex parte reexamination hours, as the respective examiners may proceeding has not been terminated, designate. Interviews will not be per- the ex parte reexamination proceedings mitted at any other time or place with- will usually be merged and result in out the authority of the Director. the issuance and publication of a single Interviews for the discussion of the certificate under § 1.570. For merger of patentability of claims in patents in- inter partes reexamination proceedings, volved in ex parte reexamination pro- see § 1.989(a). For merger of ex parte re- ceedings will not be conducted prior to examination and inter partes reexam- the first official action. Interviews ination proceedings, see § 1.989(b). should be arranged in advance. Re- (d) If a reissue application and an ex quests that reexamination requesters parte reexamination proceeding on

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which an order pursuant to § 1.525 has and the content of the patent following been mailed are pending concurrently the ex parte reexamination proceeding. on a patent, a decision will usually be (b) An ex parte reexamination certifi- made to merge the two proceedings or cate will be issued and published in to suspend one of the two proceedings. each patent in which an ex parte reex- Where merger of a reissue application amination proceeding has been ordered and an ex parte reexamination pro- under § 1.525 and has not been merged ceeding is ordered, the merged exam- with any inter partes reexamination ination will be conducted in accord- proceeding pursuant to § 1.989(a). Any ance with §§ 1.171 through 1.179, and the statutory disclaimer filed by the pat- patent owner will be required to place ent owner will be made part of the ex and maintain the same claims in the parte reexamination certificate. reissue application and the ex parte re- (c) The ex parte reexamination cer- examination proceeding during the tificate will be mailed on the day of its pendency of the merged proceeding. date to the patent owner at the address The examiner’s actions and responses as provided for in § 1.33(c). A copy of by the patent owner in a merged pro- the ex parte reexamination certificate ceeding will apply to both the reissue will also be mailed to the requester of application and the ex parte reexamina- the ex parte reexamination proceeding. tion proceeding and will be physically (d) If an ex parte reexamination cer- entered into both files. Any ex parte re- tificate has been issued and published examination proceeding merged with a which cancels all of the claims of the reissue application shall be concluded patent, no further Office proceedings by the grant of the reissued patent. For will be conducted with that patent or merger of a reissue application and an any reissue applications or any reex- inter partes reexamination, see § 1.991. amination requests relating thereto. (e) If a patent in the process of ex (e) If the ex parte reexamination pro- parte reexamination is or becomes in- ceeding is terminated by the grant of a volved in an interference, the Director reissued patent as provided in § 1.565(d), may suspend the reexamination or the the reissued patent will constitute the interference. The Director will not con- ex parte reexamination certificate re- sider a request to suspend an inter- quired by this section and 35 U.S.C. 307. ference unless a motion (§ 41.121(a)(3) of (f) A notice of the issuance of each ex this title) to suspend the interference parte reexamination certificate under has been presented to, and denied by, this section will be published in the Of- an administrative patent judge, and ficial Gazette on its date of issuance. the request is filed within ten (10) days of a decision by an administrative pat- [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18905, Apr. 16, 2007] ent judge denying the motion for suspension or such other time as the administrative patent judge may set. For Subpart E—Supplemental concurrent inter partes reexamination Examination of Patents and interference of a patent, see § 1.993. SOURCE: 77 FR 48851, Aug. 14, 2012, unless [65 FR 76776, Dec. 7, 2000, as amended at 69 otherwise noted. FR 50001, Aug. 12, 2004; 72 FR 18905, Apr. 16, 2007] § 1.601 Filing of papers in supplemental examination. Ex Parte REEXAMINATION CERTIFICATE (a) A request for supplemental exam- § 1.570 Issuance and publication of ex ination of a patent must be filed by the parte reexamination certificate con- owner(s) of the entire right, title, and cludes ex parte reexamination pro- interest in the patent. ceeding. (b) Any party other than the patent (a) To conclude an ex parte reexam- owner (i.e., any third party) is prohib- ination proceeding, the Director will ited from filing papers or otherwise issue and publish an ex parte reexam- participating in any manner in a sup- ination certificate in accordance with plemental examination proceeding. 35 U.S.C. 307 setting forth the results of (c) A request for supplemental exam- the ex parte reexamination proceeding ination of a patent may be filed at any

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time during the period of enforce- (1) An identification of the number of ability of the patent. the patent for which supplemental examination is requested. § 1.605 Items of information. (2) A list of the items of information (a) Each request for supplemental ex- that are requested to be considered, re- amination may include no more than considered, or corrected. Where appro- twelve items of information believed to priate, the list must meet the require- be relevant to the patent. More than ments of § 1.98(b). one request for supplemental examina- (3) A list identifying any other prior tion of the same patent may be filed at or concurrent post-patent Office pro- any time during the period of enforce- ceedings involving the patent for which ability of the patent. supplemental examination is being re- (b) An item of information includes a quested, including an identification of document submitted as part of the re- the type of proceeding, the identifying quest that contains information, be- number of any such proceeding (e.g., a lieved to be relevant to the patent, control number or reissue application that the patent owner requests the Of- number), and the filing date of any fice to consider, reconsider, or correct. such proceeding. If the information to be considered, re- (4) An identification of each claim of considered, or corrected is not, at least the patent for which supplemental ex- in part, contained within or based on amination is requested. any document submitted as part of the (5) A separate, detailed explanation request, the discussion within the body of the relevance and manner of apply- of the request relative to the informa- ing each item of information to each tion will be considered as an item of in- claim of the patent for which supple- formation. mental examination is requested. (c) An item of information must be in (6) A copy of the patent for which writing in accordance with § 1.2. To be supplemental examination is requested considered, any audio or video record- and a copy of any disclaimer or certifi- ing must be submitted in the form of a cate issued for the patent. written transcript. (7) A copy of each item of informa- (d) If one item of information is com- tion listed in paragraph (b)(2) of this bined in the request with one or more section, accompanied by a written additional items of information, each English translation of all of the nec- item of information of the combination essary and pertinent parts of any non- may be separately counted. Exceptions English language item of information. include the combination of a non- The patent owner is not required to English language document and its submit copies of items of information translation, and the combination of a that form part of the discussion within document that is over 50 pages in the body of the request as specified in length and its summary pursuant to § 1.605(b), or copies of U.S. patents and § 1.610(b)(8). U.S. patent application publications. (8) A summary of the relevant por- § 1.610 Content of request for supple- tions of any submitted document, mental examination. other than the request, that is over 50 (a) A request for supplemental exam- pages in length. The summary must in- ination must be accompanied by the clude citations to the particular pages fee for filing a request for supple- containing the relevant portions. mental examination as set forth in (9) An identification of the owner(s) § 1.20(k)(1), the fee for reexamination of the entire right, title, and interest ordered as a result of a supplemental in the patent requested to be examined, examination proceeding as set forth in and a submission by the patent owner § 1.20(k)(2), and any applicable docu- in compliance with § 3.73(c) of this ment size fees as set forth in chapter establishing the entirety of the § 1.20(k)(3). ownership in the patent requested to be (b) A request for supplemental exam- examined. ination must include: (c) The request may also include:

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(1) A cover sheet itemizing each com- § 1.620 Conduct of supplemental exam- ponent submitted as part of the re- ination proceeding. quest; (a) Within three months after the fil- (2) A table of contents for the re- ing date of a request for supplemental quest; examination, the Office will determine (3) An explanation of how the claims patentably distinguish over the items whether a substantial new question of of information; and patentability affecting any claim of (4) An explanation of why each item the patent is raised by any of the items of information submitted with the re- of information presented in the request does or does not raise a substan- quest. The determination will gen- tial new question of patentability. erally be limited to a review of the (d) The filing date of a request for item(s) of information identified in the supplemental examination will not be request as applied to the identified granted if the request is not in compli- claim(s) of the patent. The determina- ance with §§ 1.605, 1.615, and this section will be based on the claims in ef- tion, subject to the discretion of the fect at the time of the determination Office. If the Office determines that the and will become a part of the official request, as originally submitted, is not record of the patent. entitled to a filing date, the patent (b) The Office may hold in abeyance owner will be so notified and will be action on any petition or other paper given an opportunity to complete the filed in a supplemental examination request within a specified time. If the proceeding until after the proceeding is patent owner does not timely comply concluded by the electronic issuance of with the notice, the request for supple- the supplemental examination certifi- mental examination will not be grant- cate as set forth in § 1.625. ed a filing date and the fee for reexamination as set forth in § 1.20(k)(2) will (c) If an unauthorized or otherwise be refunded. If the patent owner timely improper paper is filed in a supple- files a corrected request in response to mental examination proceeding, it will the notice that properly addresses all not be entered into the official file or of the defects set forth in the notice considered, or if inadvertently entered, and that otherwise complies with all of it will be expunged. the requirements of §§ 1.605, 1.615, and (d) The patent owner must, as soon as this section, the filing date of the sup- possible upon the discovery of any plemental examination request will be other prior or concurrent post-patent the receipt date of the corrected re- Office proceeding involving the patent quest. for which the current supplemental examination is requested, file a paper § 1.615 Format of papers filed in a sup- limited to notifying the Office of the plemental examination proceeding. post- patent Office proceeding, if such (a) All papers submitted in a supple- notice has not been previously provided mental examination proceeding must with the request. The notice shall be be formatted in accordance with § 1.52. limited to an identification of the post- (b) Court documents and non-patent patent Office proceeding, including the literature may be redacted, but must type of proceeding, the identifying otherwise be identical both in content number of any such proceeding (e.g., a and in format to the original docu- control number or reissue application ments, and, if a court document, to the number), and the filing date of any document submitted in court, and must not otherwise be reduced in size such proceeding, without any discus- or modified, particularly in terms of sion of the issues of the current supple- font type, font size, line spacing, and mental examination proceeding or of margins. Patents, patent application the identified post-patent Office pro- publications, and third-party-generated ceeding(s). affidavits or declarations must not be (e) Interviews are prohibited in a sup- reduced in size or otherwise modified plemental examination proceeding. in the manner described in this para- (f) No amendment may be filed in a graph. supplemental examination proceeding.

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(g) If the Office becomes aware, dur- (d) Any ex parte reexamination or- ing the course of supplemental exam- dered under 35 U.S.C. 257 will be con- ination or of any reexamination or- ducted in accordance with §§ 1.530 dered under 35 U.S.C. 257 as a result of through 1.570, which govern ex parte re- the supplemental examination pro- examination, except that: ceeding, that a material fraud on the (1) The patent owner will not have Office may have been committed in the right to file a statement pursuant connection with the patent requested to § 1.530, and the order will not set a to be examined, the supplemental ex- time period within which to file such a amination proceeding or any reexam- statement; ination proceeding ordered under 35 (2) Reexamination of any claim of the U.S.C. 257 will continue, and the mat- patent may be conducted on the basis ter will be referred to the U.S. Attor- of any item of information as set forth ney General in accordance with 35 in § 1.605, and is not limited to patents U.S.C. 257(e). and printed publications or to subject matter that has been added or deleted § 1.625 Conclusion of supplemental ex- during the reexamination proceeding, amination; publication of supple- notwithstanding § 1.552(a); mental examination certificate; pro- (3) Issues in addition to those raised cedure after conclusion. by patents and printed publications, (a) A supplemental examination pro- and by subject matter added or deleted ceeding will conclude with the elec- during a reexamination proceeding, tronic issuance of a supplemental ex- may be considered and resolved, not- amination certificate. The supple- withstanding § 1.552(c); and mental examination certificate will in- (4) Information material to patent- dicate the result of the determination ability will be defined by § 1.56(b), not- whether any of the items of informa- withstanding § 1.555(b). tion presented in the request raised a substantial new question of patent- Subpart F—Adjustment and ability. Extension of Patent Term (b) If the supplemental examination certificate states that a substantial new question of patentability is raised AUTHORITY: 35 U.S.C. 2(b)(2), 154, and 156. by one or more items of information in SOURCE: 52 FR 9394, Mar. 24, 1987, unless the request, ex parte reexamination of otherwise noted. the patent will be ordered under 35 ADJUSTMENT OF PATENT TERM DUE TO U.S.C. 257. Upon the conclusion of the EXAMINATION DELAY ex parte reexamination proceeding, an ex parte reexamination certificate, § 1.701 Extension of patent term due to which will include a statement speci- examination delay under the Uru- fying that ex parte reexamination was guay Round Agreements Act (origi- ordered under 35 U.S.C. 257, will be pub- nal applications, other than de- lished. The electronically issued sup- signs, filed on or after June 8, 1995, plemental examination certificate will and before May 29, 2000). remain as part of the public record of (a) A patent, other than for designs, the patent. issued on an application filed on or (c) If the supplemental examination after June 8, 1995, is entitled to exten- certificate indicates that no substan- sion of the patent term if the issuance tial new question of patentability is of the patent was delayed due to: raised by any of the items of informa- (1) Interference or derivation pro- tion in the request, and ex parte reex- ceedings under 35 U.S.C. 135(a); and/or amination is not ordered under 35 (2) The application being placed U.S.C. 257, the electronically issued under a secrecy order under 35 U.S.C. supplemental examination certificate 181; and/or will be published in due course. The fee (3) Appellate review by the Patent for reexamination ordered as a result Trial and Appeal Board or by a Federal of supplemental examination, as set court under 35 U.S.C. 141 or 145, if the forth in § 1.20(k)(2), will be refunded in patent was issued pursuant to a deci- accordance with § 1.26(c). sion in the review reversing an adverse

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determination of patentability and if terminated with respect to the applica- the patent is not subject to a terminal tion; and disclaimer due to the issuance of an- (ii) The number of days, if any, in the other patent claiming subject matter period beginning on the date prosecu- that is not patentably distinct from tion in the application was suspended that under appellate review. If an ap- by the Patent and Trademark Office plication is remanded by a panel of the due to interference or derivation pro- Patent Trial and Appeal Board and the ceedings under 35 U.S.C. 135(a) not in- remand is the last action by a panel of volving the application and ending on the Patent Trial and Appeal Board the date of the termination of the sus- prior to the mailing of a notice of al- pension. lowance under 35 U.S.C. 151 in the ap- (2) The period of delay under para- plication, the remand shall be consid- graph (a)(2) of this section for an appli- ered a decision in the review reversing cation is the sum of the following peri- an adverse determination of patent- ods, to the extent that the periods are ability as that phrase is used in 35 not overlapping: U.S.C. 154(b)(2) as amended by section (i) The number of days, if any, the 532(a) of the Uruguay Round Agree- application was maintained in a sealed ments Act, Public Law 103–465, 108 condition under 35 U.S.C. 181; Stat. 4809, 4983–85 (1994), and a final de- (ii) The number of days, if any, in the cision in favor of the applicant under period beginning on the date of mailing paragraph (c)(3) of this section. A re- of an examiner’s answer under § 41.39 of mand by a panel of the Patent Trial this title in the application under se- and Appeal Board shall not be consid- crecy order and ending on the date the ered a decision in the review reversing secrecy order and any renewal thereof an adverse determination of patent- was removed; ability as provided in this paragraph if (iii) The number of days, if any, in there is filed a request for continued the period beginning on the date appli- examination under 35 U.S.C. 132(b) that cant was notified that an interference or derivation proceeding would be in- was not first preceded by the mailing, stituted but for the secrecy order and after such remand, of at least one of an ending on the date the secrecy order action under 35 U.S.C. 132 or a notice of and any renewal thereof was removed; allowance under 35 U.S.C. 151. and (b) The term of a patent entitled to (iv) The number of days, if any, in extension under paragraph (a) of this the period beginning on the date of no- section shall be extended for the sum of tification under § 5.3(c) and ending on the periods of delay calculated under the date of mailing of the notice of al- paragraphs (c)(1), (c)(2), (c)(3) and (d) of lowance under § 1.311. this section, to the extent that these (3) The period of delay under para- periods are not overlapping, up to a graph (a)(3) of this section is the sum maximum of five years. The extension of the number of days, if any, in the pe- will run from the expiration date of the riod beginning on the date on which an patent. appeal to the Patent Trial and Appeal (c)(1) The period of delay under para- Board was filed under 35 U.S.C. 134 and graph (a)(1) of this section for an appli- ending on the date of a final decision in cation is the sum of the following peri- favor of the applicant by the Patent ods, to the extent that the periods are Trial and Appeal Board or by a Federal not overlapping: court in an appeal under 35 U.S.C. 141 (i) With respect to each interference or a civil action under 35 U.S.C. 145. or derivation proceeding in which the (d) The period of delay set forth in application was involved, the number paragraph (c)(3) shall be reduced by: of days, if any, in the period beginning (1) Any time during the period of ap- on the date the interference or deriva- pellate review that occurred before tion proceeding was instituted to in- three years from the filing date of the volve the application in the inter- first national application for patent ference or derivation proceeding and presented for examination; and ending on the date that the inter- (2) Any time during the period of ap- ference or derivation proceeding was pellate review, as determined by the

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Director, during which the applicant and all outstanding requirements were for patent did not act with due dili- satisfied. gence. In determining the due diligence (b) Three-year pendency. Subject to of an applicant, the Director may ex- the provisions of 35 U.S.C. 154(b) and amine the facts and circumstances of this subpart, the term of an original the applicant’s actions during the pe- patent shall be adjusted if the issuance riod of appellate review to determine of the patent was delayed due to the whether the applicant exhibited that failure of the Office to issue a patent degree of timeliness as may reasonably within three years after the date on be expected from, and which is ordi- which the application was filed under narily exercised by, a person during a 35 U.S.C. 111(a) or the national stage period of appellate review. commenced under 35 U.S.C. 371(b) or (f) (e) The provisions of this section in an international application, but not apply only to original patents, except including: for design patents, issued on applica- (1) Any time consumed by continued tions filed on or after June 8, 1995, and examination of the application under before May 29, 2000. 35 U.S.C. 132(b); (2) Any time consumed by an inter- [60 FR 20228, Apr. 25, 1995, as amended at 65 ference or derivation proceeding under FR 56391, Sept. 18, 2000; 69 FR 21710, Apr. 22, 2004; 69 FR 50001, Aug. 12, 2004; 77 FR 46627, 35 U.S.C. 135(a); Aug. 6, 2012] (3) Any time consumed by the imposition of a secrecy order under 35 § 1.702 Grounds for adjustment of pat- U.S.C. 181; ent term due to examination delay (4) Any time consumed by review by under the Patent Term Guarantee the Patent Trial and Appeal Board or a Act of 1999 (original applications, Federal court; or other than designs, filed on or after (5) Any delay in the processing of the May 29, 2000). application by the Office that was re- (a) Failure to take certain actions with- quested by the applicant. in specified time frames. Subject to the (c) Delays caused by interference and provisions of 35 U.S.C. 154(b) and this derivation proceedings. Subject to the subpart, the term of an original patent provisions of 35 U.S.C. 154(b) and this shall be adjusted if the issuance of the subpart, the term of an original patent patent was delayed due to the failure of shall be adjusted if the issuance of the the Office to: patent was delayed due to interference (1) Mail at least one of a notification or derivation proceedings under 35 under 35 U.S.C. 132 or a notice of allow- U.S.C. 135(a). ance under 35 U.S.C. 151 not later than (d) Delays caused by secrecy order. fourteen months after the date on Subject to the provisions of 35 U.S.C. which the application was filed under 154(b) and this subpart, the term of an 35 U.S.C. 111(a) or the date the national original patent shall be adjusted if the stage commenced under 35 U.S.C. 371(b) issuance of the patent was delayed due or (f) in an international application; to the application being placed under a (2) Respond to a reply under 35 U.S.C. secrecy order under 35 U.S.C. 181. 132 or to an appeal taken under 35 (e) Delays caused by successful appel- U.S.C. 134 not later than four months late review. Subject to the provisions of after the date on which the reply was 35 U.S.C. 154(b) and this subpart, the filed or the appeal was taken; term of an original patent shall be ad- (3) Act on an application not later justed if the issuance of the patent was than four months after the date of a delayed due to review by the Patent decision by the Patent Trial and Ap- Trial and Appeal Board under 35 U.S.C. peal Board under 35 U.S.C. 134 or 135 or 134 or by a Federal court under 35 a decision by a Federal court under 35 U.S.C. 141 or 145, if the patent was U.S.C. 141, 145, or 146 where at least one issued under a decision in the review allowable claim remains in the applica- reversing an adverse determination of tion; or patentability. If an application is re- (4) Issue a patent not later than four manded by a panel of the Patent Trial months after the date on which the and Appeal Board and the remand is issue fee was paid under 35 U.S.C. 151 the last action by a panel of the Patent

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Trial and Appeal Board prior to the (3) The number of days, if any, in the mailing of a notice of allowance under period beginning on the day after the 35 U.S.C. 151 in the application, the re- date that is four months after the date mand shall be considered a decision by a reply in compliance with § 1.113(c) the Patent Trial and Appeal Board as was filed and ending on the date of that phrase is used in 35 U.S.C. mailing of either an action under 35 154(b)(1)(A)(iii), a decision in the review U.S.C. 132, or a notice of allowance reversing an adverse determination of under 35 U.S.C. 151, whichever occurs patentability as that phrase is used in first; 35 U.S.C. 154(b)(1)(C)(iii), and a final de- (4) The number of days, if any, in the cision in favor of the applicant under period beginning on the day after the § 1.703(e). A remand by a panel of the date that is four months after the date Patent Trial and Appeal Board shall an appeal brief in compliance with not be considered a decision in the re- § 41.37 of this title was filed and ending view reversing an adverse determina- on the date of mailing of any of an ex- tion of patentability as provided in this aminer’s answer under § 41.39 of this paragraph if there is filed a request for title, an action under 35 U.S.C. 132, or continued examination under 35 U.S.C. a notice of allowance under 35 U.S.C. 132(b) that was not first preceded by 151, whichever occurs first; the mailing, after such remand, of at (5) The number of days, if any, in the least one of an action under 35 U.S.C. period beginning on the day after the 132 or a notice of allowance under 35 U.S.C. 151. date that is four months after the date of a final decision by the Patent Trial (f) The provisions of this section and and Appeal Board or by a Federal court §§ 1.703 through 1.705 apply only to original applications, except applica- in an appeal under 35 U.S.C. 141 or a tions for a design patent, filed on or civil action under 35 U.S.C. 145 or 146 after May 29, 2000, and patents issued where at least one allowable claim re- on such applications. mains in the application and ending on the date of mailing of either an action [65 FR 56391, Sept. 18, 2000, as amended at 69 under 35 U.S.C. 132 or a notice of allow- FR 21711, Apr. 22, 2004; 77 FR 46627, Aug. 6, ance under 35 U.S.C. 151, whichever oc- 2012; 78 FR 19420, Apr. 1, 2013] curs first; and § 1.703 Period of adjustment of patent (6) The number of days, if any, in the term due to examination delay. period beginning on the day after the date that is four months after the date (a) The period of adjustment under the issue fee was paid and all out- § 1.702(a) is the sum of the following pe- standing requirements were satisfied riods: and ending on the date a patent was (1) The number of days, if any, in the issued. period beginning on the day after the date that is fourteen months after the (b) The period of adjustment under date on which the application was filed § 1.702(b) is the number of days, if any, under 35 U.S.C. 111(a) or the date the in the period beginning on the day national stage commenced under 35 after the date that is three years after U.S.C. 371(b) or (f) in an international the date on which the application was application and ending on the date of filed under 35 U.S.C. 111(a) or the na- mailing of either an action under 35 tional stage commenced under 35 U.S.C. 132, or a notice of allowance U.S.C. 371(b) or (f) in an international under 35 U.S.C. 151, whichever occurs application and ending on the date a first; patent was issued, but not including (2) The number of days, if any, in the the sum of the following periods: period beginning on the day after the (1) The number of days, if any, in the date that is four months after the date period beginning on the date on which a reply under § 1.111 was filed and end- any request for continued examination ing on the date of mailing of either an of the application under 35 U.S.C. 132(b) action under 35 U.S.C. 132, or a notice was filed and ending on the date of of allowance under 35 U.S.C. 151, which- mailing of the notice of allowance ever occurs first; under 35 U.S.C. 151;

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(2)(i) The number of days, if any, in instituted to involve the application in the period beginning on the date an in- the interference or derivation pro- terference or derivation proceeding was ceeding under 35 U.S.C. 135(a) and end- instituted to involve the application in ing on the date that the interference or the interference or derivation pro- derivation proceeding was terminated ceeding under 35 U.S.C. 135(a) and end- with respect to the application; and ing on the date that the interference or (2) The number of days, if any, in the derivation proceeding was terminated period beginning on the date prosecu- with respect to the application; and tion in the application was suspended (ii) The number of days, if any, in the by the Office due to interference or period beginning on the date prosecu- derivation proceedings under 35 U.S.C. tion in the application was suspended 135(a) not involving the application and by the Office due to interference or ending on the date of the termination derivation proceedings under 35 U.S.C. of the suspension. 135(a) not involving the application and (d) The period of adjustment under ending on the date of the termination § 1.702(d) is the sum of the following pe- of the suspension; riods, to the extent that the periods (3)(i) The number of days, if any, the are not overlapping: application was maintained in a sealed (1) The number of days, if any, the condition under 35 U.S.C. 181; application was maintained in a sealed (ii) The number of days, if any, in the condition under 35 U.S.C. 181; period beginning on the date of mailing (2) The number of days, if any, in the of an examiner’s answer under § 41.39 of period beginning on the date of mailing this title in the application under se- of an examiner’s answer under § 41.39 of crecy order and ending on the date the this title in the application under se- secrecy order was removed; crecy order and ending on the date the (iii) The number of days, if any, in secrecy order was removed; the period beginning on the date appli- (3) The number of days, if any, in the cant was notified that an interference period beginning on the date applicant or derivation proceeding under 35 was notified that an interference or U.S.C. 135(a) would be instituted but derivation proceeding under 35 U.S.C. for the secrecy order and ending on the 135(a) would be instituted but for the date the secrecy order was removed; secrecy order and ending on the date and the secrecy order was removed; and (iv) The number of days, if any, in (4) The number of days, if any, in the the period beginning on the date of no- period beginning on the date of notifi- tification under § 5.3(c) of this chapter cation under § 5.3(c) of this chapter and and ending on the date of mailing of ending on the date of mailing of the no- the notice of allowance under 35 U.S.C. tice of allowance under 35 U.S.C. 151. 151; and, (e) The period of adjustment under (4) The number of days, if any, in the § 1.702(e) is the sum of the number of period beginning on the date on which days, if any, in the period beginning on jurisdiction over the application passes the date on which jurisdiction over the to the Patent Trial and Appeal Board application passes to the Patent Trial under § 41.35(a) of this chapter and end- and Appeal Board under § 41.35(a) of ing on the date that jurisdiction by the this chapter and ending on the date of Patent Trial and Appeal Board ends a final decision in favor of the appli- under § 41.35(b) of this chapter or the cant by the Patent Trial and Appeal date of the last decision by a Federal Board or by a Federal court in an ap- court in an appeal under 35 U.S.C. 141 peal under 35 U.S.C. 141 or a civil ac- or a civil action under 35 U.S.C. 145, tion under 35 U.S.C. 145. whichever is later. (f) The adjustment will run from the (c) The period of adjustment under expiration date of the patent as set § 1.702(c) is the sum of the following pe- forth in 35 U.S.C. 154(a)(2). To the ex- riods, to the extent that the periods tent that periods of delay attributable are not overlapping: to the grounds specified in § 1.702 over- (1) The number of days, if any, in the lap, the period of adjustment granted period beginning on the date an inter- under this section shall not exceed the ference or derivation proceeding was actual number of days the issuance of

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the patent was delayed. The term of a statutory period, for reply that is set patent entitled to adjustment under in the Office action or notice has no ef- § 1.702 and this section shall be adjusted fect on the three-month period set for the sum of the periods calculated forth in this paragraph. under paragraphs (a) through (e) of this (c) Circumstances that constitute a section, to the extent that such periods failure of the applicant to engage in are not overlapping, less the sum of the reasonable efforts to conclude proc- periods calculated under § 1.704. The essing or examination of an application date indicated on any certificate of also include the following cir- mailing or transmission under § 1.8 cumstances, which will result in the shall not be taken into account in this following reduction of the period of ad- calculation. justment set forth in § 1.703 to the ex- (g) No patent, the term of which has tent that the periods are not overlap- been disclaimed beyond a specified ping: date, shall be adjusted under § 1.702 and (1) Suspension of action under § 1.103 this section beyond the expiration date at the applicant’s request, in which specified in the disclaimer. case the period of adjustment set forth in § 1.703 shall be reduced by the num- [65 FR 56392, Sept. 18, 2000, as amended at 69 FR 21711, Apr. 22, 2004; 69 FR 50001, Aug. 12, ber of days, if any, beginning on the 2004; 77 FR 46628, Aug. 6, 2012; 77 FR 49360, date a request for suspension of action Aug. 16, 2012; 78 FR 19420, Apr. 1, 2013; 80 FR under § 1.103 was filed and ending on 1356, Jan. 9, 2015] the date of the termination of the suspension; § 1.704 Reduction of period of adjust- (2) Deferral of issuance of a patent ment of patent term. under § 1.314, in which case the period (a) The period of adjustment of the of adjustment set forth in § 1.703 shall term of a patent under §§ 1.703(a) be reduced by the number of days, if through (e) shall be reduced by a period any, beginning on the date a request equal to the period of time during for deferral of issuance of a patent which the applicant failed to engage in under § 1.314 was filed and ending on reasonable efforts to conclude prosecu- the date the patent was issued; tion (processing or examination) of the (3) Abandonment of the application application. or late payment of the issue fee, in (b) With respect to the grounds for which case the period of adjustment set adjustment set forth in §§ 1.702(a) forth in § 1.703 shall be reduced by the through (e), and in particular the number of days, if any, beginning on ground of adjustment set forth in the date of abandonment or the date § 1.702(b), an applicant shall be deemed after the date the issue fee was due and to have failed to engage in reasonable ending on the earlier of: efforts to conclude processing or exam- (i) The date of mailing of the decision ination of an application for the cumu- reviving the application or accepting lative total of any periods of time in late payment of the issue fee; or excess of three months that are taken (ii) The date that is four months to reply to any notice or action by the after the date the grantable petition to Office making any rejection, objection, revive the application or accept late argument, or other request, measuring payment of the issue fee was filed; such three-month period from the date (4) Failure to file a petition to with- the notice or action was mailed or draw the holding of abandonment or to given to the applicant, in which case revive an application within two the period of adjustment set forth in months from the mailing date of a no- § 1.703 shall be reduced by the number tice of abandonment, in which case the of days, if any, beginning on the day period of adjustment set forth in § 1.703 after the date that is three months shall be reduced by the number of days, after the date of mailing or trans- if any, beginning on the day after the mission of the Office communication date two months from the mailing date notifying the applicant of the rejec- of a notice of abandonment and ending tion, objection, argument, or other re- on the date a petition to withdraw the quest and ending on the date the reply holding of abandonment or to revive was filed. The period, or shortened the application was filed;

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(5) Conversion of a provisional appli- fore the mailing of an Office action cation under 35 U.S.C. 111(b) to a non- under 35 U.S.C. 132 or notice of allow- provisional application under 35 U.S.C. ance under 35 U.S.C. 151 that requires 111(a) pursuant to 35 U.S.C. 111(b)(5), in the mailing of a supplemental Office which case the period of adjustment set action or supplemental notice of allow- forth in § 1.703 shall be reduced by the ance, in which case the period of ad- number of days, if any, beginning on justment set forth in § 1.703 shall be re- the date the application was filed duced by the lesser of: under 35 U.S.C. 111(b) and ending on the (i) The number of days, if any, begin- date a request in compliance with ning on the day after the mailing date § 1.53(c)(3) to convert the provisional of the original Office action or notice application into a nonprovisional ap- of allowance and ending on the mailing plication was filed; date of the supplemental Office action (6) Submission of a preliminary or notice of allowance; or amendment or other preliminary paper (ii) Four months; less than one month before the mailing (10) Submission of an amendment of an Office action under 35 U.S.C. 132 under § 1.312 or other paper, other than or notice of allowance under 35 U.S.C. a request for continued examination in 151 that requires the mailing of a sup- compliance with § 1.114, after a notice plemental Office action or notice of al- of allowance has been given or mailed, lowance, in which case the period of ad- in which case the period of adjustment justment set forth in § 1.703 shall be reset forth in § 1.703 shall be reduced by duced by the lesser of: the lesser of: (i) The number of days, if any, begin- (i) The number of days, if any, beginning on the day after the mailing date ning on the date the amendment under of the original Office action or notice § 1.312 or other paper was filed and end- of allowance and ending on the date of ing on the mailing date of the Office mailing of the supplemental Office ac- action or notice in response to the tion or notice of allowance; or amendment under § 1.312 or such other (ii) Four months; paper; or (7) Submission of a reply having an (ii) Four months; omission (§ 1.135(c)), in which case the (11) Failure to file an appeal brief in period of adjustment set forth in § 1.703 compliance with § 41.37 of this chapter shall be reduced by the number of days, within three months from the date on if any, beginning on the day after the which a notice of appeal to the Patent date the reply having an omission was Trial and Appeal Board was filed under filed and ending on the date that the 35 U.S.C. 134 and § 41.31 of this chapter, reply or other paper correcting the in which case the period of adjustment omission was filed; set forth in § 1.703 shall be reduced by (8) Submission of a supplemental the number of days, if any, beginning reply or other paper, other than a sup- on the day after the date three months plemental reply or other paper ex- from the date on which a notice of ap- pressly requested by the examiner, peal to the Patent Trial and Appeal after a reply has been filed, in which Board was filed under 35 U.S.C. 134 and case the period of adjustment set forth § 41.31 of this chapter, and ending on in § 1.703 shall be reduced by the num- the date an appeal brief in compliance ber of days, if any, beginning on the with § 41.37 of this chapter or a request day after the date the initial reply was for continued examination in compli- filed and ending on the date that the ance with § 1.114 was filed; supplemental reply or other such paper (12) Submission of a request for con- was filed; tinued examination under 35 U.S.C. (9) Submission of an amendment or 132(b) after any notice of allowance other paper after a decision by the Pat- under 35 U.S.C. 151 has been mailed, in ent Trial and Appeal Board, other than which case the period of adjustment set a decision designated as containing a forth in § 1.703 shall be reduced by the new ground of rejection under § 41.50 (b) number of days, if any, beginning on of this title or statement under the day after the date of mailing of the § 41.50(c) of this title, or a decision by a notice of allowance under 35 U.S.C. 151 Federal court, less than one month be- and ending on the date the request for

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continued examination under 35 U.S.C. the information disclosure statement; 132(b) was filed; or (13) Failure to provide an application (ii) Is a communication that was in condition for examination as defined issued by a patent office in a counter- in paragraph (f) of this section within part foreign or international applica- eight months from either the date on tion or by the Office, and this commu- which the application was filed under nication was not received by any indi- 35 U.S.C. 111(a) or the date of com- vidual designated in § 1.56(c) more than mencement of the national stage under thirty days prior to the filing of the in- 35 U.S.C. 371(b) or (f) in an inter- formation disclosure statement. national application, in which case the (2) The thirty-day period set forth in period of adjustment set forth in § 1.703 paragraph (d)(1) of this section is not shall be reduced by the number of days, extendable. if any, beginning on the day after the (e) The submission of a request under date that is eight months from either § 1.705(c) for reinstatement of reduced the date on which the application was patent term adjustment will not be filed under 35 U.S.C. 111(a) or the date considered a failure to engage in rea- of commencement of the national stage sonable efforts to conclude prosecution under 35 U.S.C. 371(b) or (f) in an inter- (processing or examination) of the ap- national application and ending on the plication under paragraph (c)(10) of this date the application is in condition for section. examination as defined in paragraph (f) (f) An application filed under 35 of this section; and U.S.C. 111(a) is in condition for examination when the application includes a (14) Further prosecution via a con- specification, including at least one tinuing application, in which case the claim and an abstract (§ 1.72(b)), and period of adjustment set forth in § 1.703 has papers in compliance with § 1.52, shall not include any period that is drawings (if any) in compliance with prior to the actual filing date of the ap- § 1.84, any English translation required plication that resulted in the patent. by § 1.52(d) or § 1.57(a), a sequence list- (d)(1) A paper containing only an ining in compliance with § 1.821 through formation disclosure statement in § 1.825 (if applicable), the inventor’s compliance with §§ 1.97 and 1.98 will not oath or declaration or an application be considered a failure to engage in data sheet containing the information reasonable efforts to conclude prosecu- specified in § 1.63(b), the basic filing fee tion (processing or examination) of the (§ 1.16(a) or § 1.16(c)), the search fee application under paragraphs (c)(6), (§ 1.16(k) or § 1.16(m)), the examination (c)(8), (c)(9), or (c)(10) of this section, fee (§ 1.16(o) or § 1.16(q)), any certified and a request for continued examina- copy of the previously filed application tion in compliance with § 1.114 with no required by § 1.57(a), and any applica- submission other than an information tion size fee required by the Office disclosure statement in compliance under § 1.16(s). An international appli- with §§ 1.97 and 1.98 will not be consid- cation is in condition for examination ered a failure to engage in reasonable when the application has entered the efforts to conclude prosecution (proc- national stage as defined in § 1.491(b), essing or examination) of the applica- and includes a specification, including tion under paragraph (c)(12) of this sec- at least one claim and an abstract tion, if the paper or request for contin- (§ 1.72(b)), and has papers in compliance ued examination is accompanied by a with § 1.52, drawings (if any) in compli- statement that each item of informa- ance with § 1.84, a sequence listing in tion contained in the information dis- compliance with § 1.821 through § 1.825 closure statement: (if applicable), the inventor’s oath or (i) Was first cited in any communica- declaration or an application data tion from a patent office in a counter- sheet containing the information speci- part foreign or international applica- fied in § 1.63(b), the search fee tion or from the Office, and this com- (§ 1.492(b)), the examination fee munication was not received by any in- (§ 1.492(c)), and any application size fee dividual designated in § 1.56(c) more required by the Office under § 1.492(j). than thirty days prior to the filing of An application shall be considered as

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having papers in compliance with § 1.52, (4) Failure to file a petition to withdraw drawings (if any) in compliance with the holding of abandonment or to revive an § 1.84, and a sequence listing in compli- application within two months from the date of mailing of a notice of abandonment, in ance with § 1.821 through § 1.825 (if ap- which case the period of adjustment set forth plicable) for purposes of this paragraph in § 1.703 shall be reduced by the number of on the filing date of the latest reply (if days, if any, beginning on the day after the any) correcting the papers, drawings, date two months from the date of mailing of or sequence listing that is prior to the a notice of abandonment and ending on the date of mailing of either an action date a petition to withdraw the holding of under 35 U.S.C. 132 or a notice of allow- abandonment or to revive the application ance under 35 U.S.C. 151, whichever oc- was filed; (5) Conversion of a provisional application curs first. under 35 U.S.C. 111(b) to a nonprovisional ap- [65 FR 56393, Sept. 18, 2000, as amended at 69 plication under 35 U.S.C. 111(a) pursuant to FR 21711, Apr. 22, 2004; 69 FR 50002, Aug. 12, 35 U.S.C. 111(b)(5), in which case the period of 2004; 72 FR 46843, Aug. 21, 2007; 74 FR 52691, adjustment set forth in § 1.703 shall be re- Oct. 14, 2009; 76 FR 74702, Dec. 1, 2011; 77 FR duced by the number of days, if any, begin- 46628, Aug. 6, 2012; 77 FR 49360, Aug. 16, 2012; ning on the date the application was filed 78 FR 19420, Apr. 1, 2013; 78 FR 62408, Oct. 21, under 35 U.S.C. 111(b) and ending on the date 2013; 80 FR 1356, Jan. 9, 2015] a request in compliance with § 1.53(c)(3) to convert the provisional application into a EFFECTIVE DATE NOTE: At 85 FR 36341, June nonprovisional application was filed; 16, 2020, § 1.704 was amended by revising para- (6) Submission of a preliminary amend- graph (c), effective July 16, 2020. For the con- ment or other preliminary paper less than venience of the user, the revised text is set one month before the mailing of an Office ac- forth as follows: tion under 35 U.S.C. 132 or notice of allowance under 35 U.S.C. 151 that requires the § 1.704 Reduction of Period of Adjustment of mailing of a supplemental Office action or Patent Term. notice of allowance, in which case the period of adjustment set forth in § 1.703 shall be re- * * * * * duced by the number of days, if any, beginning on the day after the date that is eight (c) Circumstances that constitute a failure months from either the date on which the of the applicant to engage in reasonable ef- application was filed under 35 U.S.C. 111(a) or forts to conclude processing or examination the date of commencement of the national of an application also include the following stage under 35 U.S.C. 371(b) or (f) in an inter- circumstances, which will result in the fol- national application and ending on the date lowing reduction of the period of adjustment the preliminary amendment or other pre- set forth in § 1.703 to the extent that the peri- liminary paper was filed; ods are not overlapping: (7) Submission of a reply having an omis- (1) Suspension of action under § 1.103 at the sion (§ 1.135(c)), in which case the period of applicant’s request, in which case the period adjustment set forth in § 1.703 shall be re- of adjustment set forth in § 1.703 shall be reduced by the number of days, if any, begin- duced by the number of days, if any, beginning on the day after the date the reply hav- ning on the date a request for suspension of ing an omission was filed and ending on the action under § 1.103 was filed and ending on date that the reply or other paper correcting the date of the termination of the suspen- the omission was filed; sion; (8) Submission of a supplemental reply or (2) Deferral of issuance of a patent under other paper, other than a supplemental reply § 1.314, in which case the period of adjust- or other paper expressly requested by the ex- ment set forth in § 1.703 shall be reduced by aminer, after a reply has been filed, in which the number of days, if any, beginning on the case the period of adjustment set forth in date a request for deferral of issuance of a § 1.703 shall be reduced by the number of patent under § 1.314 was filed and ending on days, if any, beginning on the day after the the earlier of the date a request to terminate date the initial reply was filed and ending on the deferral was filed or the date the patent the date that the supplemental reply or was issued; other such paper was filed; (3) Abandonment of the application or late (9) Submission of an amendment or other payment of the issue fee, in which case the paper after a decision by the Patent Trial period of adjustment set forth in § 1.703 shall and Appeal Board, other than a decision des- be reduced by the number of days, if any, be- ignated as containing a new ground of rejec- ginning on the date of abandonment or the tion under § 41.50(b) of this title or statement day after the date the issue fee was due and under § 41.50(c) of this title, or a decision by ending on the date the grantable petition to a Federal court, less than one month before revive the application or accept late pay- the mailing of an Office action under 35 ment of the issue fee was filed; U.S.C. 132 or a notice of allowance under 35

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U.S.C. 151 that requires the mailing of a sup- (14) Further prosecution via a continuing plemental Office action or supplemental no- application, in which case the period of ad- tice of allowance, in which case the period of justment set forth in § 1.703 shall not include adjustment set forth in § 1.703 shall be re- any period that is prior to the actual filing duced by the number of days, if any, begin- date of the application that resulted in the ning on the day after the date of the decision patent. by the Patent Trial and Appeal Board or by a Federal court and ending on date the amendment or other paper was filed; * * * * * (10) Submission of an amendment under § 1.312 or other paper, other than an amend- § 1.705 Patent term adjustment deter- ment under § 1.312 or other paper expressly mination. requested by the Office or a request for continued examination in compliance with (a) The patent will include notifica- § 1.114, after a notice of allowance has been tion of any patent term adjustment given or mailed, in which case the period of under 35 U.S.C. 154(b). adjustment set forth in § 1.703 shall be re- (b) Any request for reconsideration of duced by the number of days, if any, begin- the patent term adjustment indicated ning on the day after the date of mailing of on the patent must be by way of an ap- the notice of allowance under 35 U.S.C. 151 and ending on the date the amendment under plication for patent term adjustment § 1.312 or other paper was filed; filed no later than two months from (11) Failure to file an appeal brief in com- the date the patent was granted. This pliance with § 41.37 of this chapter within two-month time period may be ex- three months from the date on which a no- tended under the provisions of tice of appeal to the Patent Trial and Appeal § 1.136(a). An application for patent Board was filed under 35 U.S.C. 134 and § 41.31 term adjustment under this section of this chapter, in which case the period of adjustment set forth in § 1.703 shall be re- must be accompanied by: duced by the number of days, if any, begin- (1) The fee set forth in § 1.18(e); and ning on the day after the date three months (2) A statement of the facts involved, from the date on which a notice of appeal to specifying: the Patent Trial and Appeal Board was filed (i) The correct patent term adjust- under 35 U.S.C. 134 and § 41.31 of this chapter, and ending on the date an appeal brief in ment and the basis or bases under compliance with § 41.37 of this chapter or a § 1.702 for the adjustment; request for continued examination in com- (ii) The relevant dates as specified in pliance with § 1.114 was filed; §§ 1.703(a) through (e) for which an ad- (12) Submission of a request for continued justment is sought and the adjustment examination under 35 U.S.C. 132(b) after any as specified in § 1.703(f) to which the notice of allowance under 35 U.S.C. 151 has been mailed, in which case the period of ad- patent is entitled; justment set forth in § 1.703 shall be reduced (iii) Whether the patent is subject to by the number of days, if any, beginning on a terminal disclaimer and any expira- the day after the date of mailing of the no- tion date specified in the terminal dis- tice of allowance under 35 U.S.C. 151 and end- claimer; and ing on the date the request for continued examination under 35 U.S.C. 132(b) was filed; (iv)(A) Any circumstances during the (13) Failure to provide an application in prosecution of the application result- condition for examination as defined in para- ing in the patent that constitute a fail- graph (f) of this section within eight months ure to engage in reasonable efforts to from either the date on which the applica- conclude processing or examination of tion was filed under 35 U.S.C. 111(a) or the such application as set forth in § 1.704; date of commencement of the national stage or under 35 U.S.C. 371(b) or (f) in an international application, in which case the pe- (B) That there were no circumstances riod of adjustment set forth in § 1.703 shall be constituting a failure to engage in rea- reduced by the number of days, if any, begin- sonable efforts to conclude processing ning on the day after the date that is eight or examination of such application as months from either the date on which the set forth in § 1.704. application was filed under 35 U.S.C. 111(a) or (c) Any request for reinstatement of the date of commencement of the national all or part of the period of adjustment stage under 35 U.S.C. 371(b) or (f) in an international application and ending on the date reduced pursuant to § 1.704(b) for failing the application is in condition for examina- to reply to a rejection, objection, argu- tion as defined in paragraph (f) of this sec- ment, or other request within three tion; and months of the date of mailing of the

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Office communication notifying the ap- biological product (as those terms are plicant of the rejection, objection, ar- used in the Federal Food, Drug, and gument, or other request must be filed Cosmetic Act and the Public Health prior to the issuance of the patent. Service Act) including any salt or ester This time period is not extendable. Any of the active ingredient, as a single en- request for reinstatement of all or part tity or in combination with another ac- of the period of adjustment reduced tive ingredient; or pursuant to § 1.704(b) under this para- (2) The active ingredient of a new graph must also be accompanied by: animal drug or veterinary biological (1) The fee set forth in § 1.18(f); and product (as those terms are used in the (2) A showing to the satisfaction of Federal Food, Drug, and Cosmetic Act the Director that, in spite of all due and the Virus-Serum-Toxin Act) that is care, the applicant was unable to reply not primarily manufactured using re- to the rejection, objection, argument, combinant DNA, recombinant RNA, or other request within three months hybridoma technology, or other proc- of the date of mailing of the Office esses including site specific genetic communication notifying the applicant manipulation techniques, including of the rejection, objection, argument, any salt or ester of the active ingre- or other request. The Office shall not dient, as a single entity or in combina- grant any request for reinstatement for tion with another active ingredient; or more than three additional months for (3) Any medical device, food additive, each reply beyond three months from or color additive subject to regulation the date of mailing of the Office com- under the Federal Food, Drug, and Cos- munication notifying the applicant of metic Act. the rejection, objection, argument, or other request. [54 FR 30379, July 20, 1989] (d) No submission or petition on be- § 1.720 Conditions for extension of pat- half of a third party concerning patent ent term. term adjustment under 35 U.S.C. 154(b) will be considered by the Office. Any The term of a patent may be ex- such submission or petition will be re- tended if: turned to the third party, or otherwise (a) The patent claims a product or a disposed of, at the convenience of the method of using or manufacturing a Office. product as defined in § 1.710; (b) The term of the patent has never [65 FR 56394, Sept. 18, 2000, as amended at 69 been previously extended, except for FR 21711, Apr. 22, 2004; 78 FR 19420, Apr. 1, extensions issued pursuant to §§ 1.701, 2013] 1.760, or § 1.790; EXTENSION OF PATENT TERM DUE TO (c) An application for extension is REGULATORY REVIEW submitted in compliance with § 1.740; (d) The product has been subject to a § 1.710 Patents subject to extension of regulatory review period as defined in the patent term. 35 U.S.C. 156(g) before its commercial (a) A patent is eligible for extension marketing or use; of the patent term if the patent claims (e) The product has received permis- a product as defined in paragraph (b) of sion for commercial marketing or use this section, either alone or in com- and— bination with other ingredients that (1) The permission for the commer- read on a composition that received cial marketing or use of the product is permission for commercial marketing the first received permission for com- or use, or a method of using such a mercial marketing or use under the product, or a method of manufacturing provision of law under which the appli- such a product, and meets all other cable regulatory review occurred, or conditions and requirements of this (2) In the case of a patent other than subpart. one directed to subject matter within (b) The term product referred to in § 1.710(b)(2) claiming a method of manu- paragraph (a) of this section means— facturing the product that primarily (1) The active ingredient of a new uses recombinant DNA technology in human drug, antibiotic drug, or human the manufacture of the product, the

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permission for the commercial mar- (h) No other patent term has been ex- keting or use is the first received per- tended for the same regulatory review mission for the commercial marketing period for the product. or use of a product manufactured under [52 FR 9394, Mar. 24, 1987, as amended at 54 the process claimed in the patent, or FR 30380, July 20, 1989; 65 FR 54679, Sept. 8, (3) In the case of a patent claiming a 2000] new animal drug or a veterinary biological product that is not covered by § 1.730 Applicant for extension of pat- the claims in any other patent that has ent term; signature requirements. been extended, and has received per- (a) Any application for extension of a mission for the commercial marketing patent term must be submitted by the or use in non-food-producing animals owner of record of the patent or its and in food-producing animals, and was agent and must comply with the re- not extended on the basis of the regu- quirements of § 1.740. latory review period for use in non- (b) If the application is submitted by food-producing animals, the permission the patent owner, the application must for the commercial marketing or use of be signed either by: the drug or product after the regu- (1) The patent owner in compliance latory review period for use in food- with § 3.73(c) of this chapter; or (2) A registered practitioner on be- producing animals is the first per- half of the patent owner. mitted commercial marketing or use of (c) If the application is submitted on the drug or product for administration behalf of the patent owner by an agent to a food-producing animal. of the patent owner (e.g., a licensee of (f) The application is submitted with- the patent owner), the application in the sixty-day period beginning on must be signed by a registered practi- the date the product first received per- tioner on behalf of the agent. The Of- mission for commercial marketing or fice may require proof that the agent is use under the provisions of law under authorized to act on behalf of the pat- which the applicable regulatory review ent owner. period occurred; or in the case of a pat- (d) If the application is signed by a ent claiming a method of manufac- registered practitioner, the Office may turing the product which primarily require proof that the practitioner is uses recombinant DNA technology in authorized to act on behalf of the pat- the manufacture of the product, the ap- ent owner or agent of the patent plication for extension is submitted owner. within the sixty-day period beginning on the date of the first permitted com- [65 FR 54679, Sept. 8, 2000, as amended at 77 mercial marketing or use of a product FR 48825, Aug. 14, 2012] manufactured under the process § 1.740 Formal requirements for appli- claimed in the patent; or in the case of cation for extension of patent term; a patent that claims a new animal drug correction of informalities. or a veterinary biological product that (a) An application for extension of is not covered by the claims in any patent term must be made in writing other patent that has been extended, to the Director. A formal application and said drug or product has received for the extension of patent term must permission for the commercial mar- include: keting or use in non-food-producing (1) A complete identification of the animals, the application for extension approved product as by appropriate is submitted within the sixty-day pe- chemical and generic name, physical riod beginning on the date of the first structure or characteristics; permitted commercial marketing or (2) A complete identification of the use of the drug or product for adminis- Federal statute including the applica- tration to a food-producing animal; ble provision of law under which the (g) The term of the patent, including regulatory review occurred; any interim extension issued pursuant (3) An identification of the date on to § 1.790, has not expired before the which the product received permission submission of an application in compli- for commercial marketing or use under ance with § 1.741; and the provision of law under which the

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applicable regulatory review period oc- order to enable the Secretary of Health curred; and Human Services or the Secretary (4) In the case of a drug product, an of Agriculture, as appropriate, to de- identification of each active ingredient termine the applicable regulatory rein the product and as to each active in- view period as follows: gredient, a statement that it has not (i) For a patent claiming a human been previously approved for commer- drug, antibiotic, or human biological cial marketing or use under the Fed- product: eral Food, Drug, and Cosmetic Act, the (A) The effective date of the inves- Public Health Service Act, or the tigational new drug (IND) application Virus-Serum-Toxin Act, or a statement and the IND number; of when the active ingredient was ap- (B) The date on which a new drug approved for commercial marketing or plication (NDA) or a Product License use (either alone or in combination Application (PLA) was initially sub- with other active ingredients), the use mitted and the NDA or PLA number; for which it was approved, and the pro- and vision of law under which it was ap- (C) The date on which the NDA was proved. approved or the Product License (5) A statement that the application issued; is being submitted within the sixty day (ii) For a patent claiming a new ani- period permitted for submission pursu- mal drug: ant to § 1.720(f) and an identification of (A) The date a major health or envi- the date of the last day on which the ronmental effects test on the drug was application could be submitted; initiated, and any available substan- (6) A complete identification of the tiation of that date, or the date of an patent for which an extension is being exemption under subsection (j) of Sec- sought by the name of the inventor, tion 512 of the Federal Food, Drug, and the patent number, the date of issue, Cosmetic Act became effective for such and the date of expiration; animal drug; (7) A copy of the patent for which an (B) The date on which a new animal extension is being sought, including drug application (NADA) was initially the entire specification (including submitted and the NADA number; and claims) and drawings; (C) The date on which the NADA was (8) A copy of any disclaimer, certifi- approved; cate of correction, receipt of maintenance fee payment, or reexamination (iii) For a patent claiming a veteri- certificate issued in the patent; nary biological product: (9) A statement that the patent (A) The date the authority to prepare claims the approved product, or a an experimental biological product method of using or manufacturing the under the Virus-Serum-Toxin Act be- approved product, and a showing which came effective; lists each applicable patent claim and (B) The date an application for a li- demonstrates the manner in which at cense was submitted under the Virus- least one such patent claim reads on: Serum-Toxin Act; and (i) The approved product, if the listed (C) The date the license issued; claims include any claim to the ap- (iv) For a patent claiming a food or proved product; color additive: (ii) The method of using the approved (A) The date a major health or envi- product, if the listed claims include ronmental effects test on the additive any claim to the method of using the was initiated and any available sub- approved product; and stantiation of that date; (iii) The method of manufacturing (B) The date on which a petition for the approved product, if the listed product approval under the Federal claims include any claim to the meth- Food, Drug and Cosmetic Act was ini- od of manufacturing the approved prod- tially submitted and the petition num- uct; ber; and (10) A statement beginning on a new (C) The date on which the FDA pub- page of the relevant dates and informa- lished a FEDERAL REGISTER notice list- tion pursuant to 35 U.S.C. 156(g) in ing the additive for use;

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(v) For a patent claiming a medical from the mail date of the notice, or device: such time as is set in the notice, within (A) The effective date of the inves- which to correct the informality. Un- tigational device exemption (IDE) and less the notice indicates otherwise, this the IDE number, if applicable, or the time period may be extended under the date on which the applicant began the provisions of § 1.136. first clinical investigation involving [54 FR 9394, Mar. 24, 1987, as amended at 54 the device, if no IDE was submitted, FR 30380, July 20, 1989; 56 FR 65155, Dec. 13, and any available substantiation of 1991; 65 FR 54679, Sept. 8, 2000; 68 FR 14337, that date; Mar. 25, 2003] (B) The date on which the application for product approval or notice of com- § 1.741 Complete application given a pletion of a product development pro- filing date; petition procedure. tocol under Section 515 of the Federal (a) The filing date of an application Food, Drug and Cosmetic Act was ini- for extension of a patent term is the tially submitted and the number of the date on which a complete application application; and is received in the Office or filed pursu- (C) The date on which the application ant to the procedures set forth in § 1.8 was approved or the protocol declared or § 1.10. A complete application must to be completed; include: (11) A brief description beginning on (1) An identification of the approved a new page of the significant activities product; undertaken by the marketing applicant (2) An identification of each Federal during the applicable regulatory re- statute under which regulatory review view period with respect to the ap- occurred; proved product and the significant (3) An identification of the patent for dates applicable to such activities; which an extension is being sought; (12) A statement beginning on a new (4) An identification of each claim of page that in the opinion of the appli- the patent which claims the approved cant the patent is eligible for the ex- product or a method of using or manu- tension and a statement as to the facturing the approved product; length of extension claimed, including (5) Sufficient information to enable how the length of extension was deter- the Director to determine under sub- mined; sections (a) and (b) of 35 U.S.C. 156 the (13) A statement that applicant ac- eligibility of a patent for extension, knowledges a duty to disclose to the and the rights that will be derived from Director of the United States Patent the extension, and information to en- and Trademark Office and the Sec- able the Director and the Secretary of retary of Health and Human Services Health and Human Services or the Sec- or the Secretary of Agriculture any in- retary of Agriculture to determine the formation which is material to the de- length of the regulatory review period; termination of entitlement to the ex- and tension sought (see § 1.765); (6) A brief description of the activi- (14) The prescribed fee for receiving ties undertaken by the marketing ap- and acting upon the application for ex- plicant during the applicable regu- tension (see § 1.20(j)); and latory review period with respect to (15) The name, address, and telephone the approved product and the signifi- number of the person to whom inquir- cant dates applicable to such activi- ies and correspondence relating to the ties. application for patent term extension (b) If an application for extension of are to be directed. patent term is incomplete under this (b) The application under this section section, the Office will so notify the must be accompanied by two additional applicant. If applicant requests review copies of such application (for a total of a notice that an application is in- of three copies). complete, or review of the filing date (c) If an application for extension of accorded an application under this sec- patent term is informal under this section, applicant must file a petition pur- tion, the Office will so notify the appli- suant to this paragraph accompanied cant. The applicant has two months by the fee set forth in § 1.17(f) within

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two months of the mail date of the no- filed at least three months prior to the tice that the application is incomplete, expiration date of the patent. The Di- or the notice according the filing date rector may issue interim extensions, complained of. Unless the notice indi- without a request by the applicant, for cates otherwise, this time period may periods of up to one year each until a be extended under the provisions of final determination is made. The pat- § 1.136. ent owner or agent will be notified when an interim extension is granted [52 FR 9394, Mar. 24, 1987, as amended at 59 FR 54503, Oct. 22, 1993; 61 FR 64028, Dec. 3, and notice of the extension will be pub- 1996; 65 FR 54680, Sept. 8, 2000; 69 FR 56546, lished in the Official Gazette of the Sept. 21, 2004] United States Patent and Trademark Of- fice. The notice will be recorded in the § 1.750 Determination of eligibility for official file of the patent and will be extension of patent term. considered as part of the original pat- A determination as to whether a patent. In no event will the interim exten- ent is eligible for extension may be sions granted under this section be made by the Director solely on the longer than the maximum period for basis of the representations contained extension to which the applicant would in the application for extension filed in be eligible. compliance with § 1.740 or § 1.790. This [65 FR 54680, Sept. 8, 2000] determination may be delegated to appropriate Patent and Trademark Office § 1.765 Duty of disclosure in patent officials and may be made at any time term extension proceedings. before the certificate of extension is (a) A duty of candor and good faith issued. The Director or other appro- toward the Patent and Trademark Of- priate officials may require from appli- fice and the Secretary of Health and cant further information or make such Human Services or the Secretary of independent inquiries as desired before Agriculture rests on the patent owner a final determination is made on or its agent, on each attorney or agent whether a patent is eligible for exten- who represents the patent owner and sion. In an application for extension on every other individual who is sub- filed in compliance with § 1.740, a no- stantively involved on behalf of the tice will be mailed to applicant con- patent owner in a patent term exten- taining the determination as to the eli- sion proceeding. All such individuals gibility of the patent for extension and who are aware, or become aware, of the period of time of the extension, if material information adverse to a de- any. This notice shall constitute the termination of entitlement to the ex- final determination as to the eligi- tension sought, which has not been pre- bility and any period of extension of viously made of record in the patent the patent. A single request for recon- term extension proceeding must bring sideration of a final determination such information to the attention of may be made if filed by the applicant the Office or the Secretary, as appro- within such time as may be set in the priate, in accordance with paragraph notice of final determination or, if no (b) of this section, as soon as it is prac- time is set, within one month from the tical to do so after the individual be- date of the final determination. The comes aware of the information. Infor- time periods set forth herein are sub- mation is material where there is a ject to the provisions of § 1.136. substantial likelihood that the Office [60 FR 25618, May 12, 1995] or the Secretary would consider it im- portant in determinations to be made § 1.760 Interim extension of patent in the patent term extension pro- term under 35 U.S.C. 156(e)(2). ceeding. An applicant who has filed a formal (b) Disclosures pursuant to this sec- application for extension in compliance tion must be accompanied by a copy of with § 1.740 may request one or more in- each written document which is being terim extensions for periods of up to disclosed. The disclosure must be made one year each pending a final deter- to the Office or the Secretary, as ap- mination on the application pursuant propriate, unless the disclosure is ma- to § 1.750. Any such request should be terial to determinations to be made by

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both the Office and the Secretary, in duplicate, a written declaration of which case duplicate copies, certified withdrawal signed by the owner of as such, must be filed in the Office and record of the patent or its agent. An with the Secretary. Disclosures pursu- application may not be expressly with- ant to this section may be made to the drawn after the date permitted for Office or the Secretary, as appropriate, reply to the final determination on the through an attorney or agent having application. An express withdrawal responsibility on behalf of the patent pursuant to this section is effective owner or its agent for the patent term when acknowledged in writing by the extension proceeding or through a pat- Office. The filing of an express with- ent owner acting on his or her own be- drawal pursuant to this section and its half. Disclosure to such an attorney, acceptance by the Office does not enti- agent or patent owner shall satisfy the tle applicant to a refund of the filing duty of any other individual. Such an fee (§ 1.20(j)) or any portion thereof. attorney, agent or patent owner has no duty to transmit information which is [62 FR 53201, Oct. 10, 1997] not material to the determination of entitlement to the extension sought. § 1.775 Calculation of patent term ex- (c) No patent will be determined eli- tension for a human drug, antibiotic drug or human biological gible for extension and no extension product. will be issued if it is determined that fraud on the Office or the Secretary (a) If a determination is made pursu- was practiced or attempted or the duty ant to § 1.750 that a patent for a human of disclosure was violated through bad drug, antibiotic drug or human biologi- faith or gross negligence in connection cal product is eligible for extension, with the patent term extension pro- the term shall be extended by the time ceeding. If it is established by clear and as calculated in days in the manner in- convincing evidence that any fraud was dicated by this section. The patent practiced or attempted on the Office or term extension will run from the origi- the Secretary in connection with the nal expiration date of the patent or patent term extension proceeding or any earlier date set by terminal dis- that there was any violation of the claimer (§ 1.321). duty of disclosure through bad faith or (b) The term of the patent for a gross negligence in connection with the human drug, antibiotic drug or human patent term extension proceeding, a biological product will be extended by final determination will be made pur- the length of the regulatory review pe- suant to § 1.750 that the patent is not riod for the product as determined by eligible for extension. the Secretary of Health and Human (d) The duty of disclosure pursuant Services, reduced as appropriate pursu- to this section rests on the individuals ant to paragraphs (d)(1) through (d)(6) identified in paragraph (a) of this sec- of this section. tion and no submission on behalf of (c) The length of the regulatory re- third parties, in the form of protests or view period for a human drug, anti- otherwise, will be considered by the Of- biotic drug or human biological prod- fice. Any such submissions by third uct will be determined by the Sec- parties to the Office will be returned to retary of Health and Human Services. the party making the submission, or Under 35 U.S.C. 156(g)(1)(B), it is the otherwise disposed of, without consid- sum of— eration by the Office. (1) The number of days in the period [24 FR 10332, Dec. 22, 1959, as amended at 54 beginning on the date an exemption FR 30381, July 20, 1989; 60 FR 25618, May 12, under subsection (i) of section 505 or 1995] subsection (d) of section 507 of the Fed- eral Food, Drug, and Cosmetic Act be- § 1.770 Express withdrawal of applica- came effective for the approved prod- tion for extension of patent term. uct and ending on the date the applica- An application for extension of pat- tion was initially submitted for such ent term may be expressly withdrawn product under those sections or under before a determination is made pursu- section 351 of the Public Health Service ant to § 1.750 by filing in the Office, in Act; and

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(2) The number of days in the period (d)(5)(i) of this section with each other beginning on the date the application and selecting the earlier date; was initially submitted for the ap- (6) If the original patent was issued proved product under section 351 of the before September 24, 1984, and Public Health Service Act, subsection (i) If no request was submitted for an (b) of section 505 or section 507 of the exemption under subsection (i) of sec- Federal Food, Drug, and Cosmetic Act tion 505 or subsection (d) of section 507 and ending on the date such applica- of the Federal Food, Drug, and Cos- tion was approved under such section. metic Act before September 24, 1984, (d) The term of the patent as ex- by— tended for a human drug, antibiotic (A) Adding 5 years to the original ex- drug or human biological product will piration date of the patent or earlier be determined by— date set by terminal disclaimer; and (1) Subtracting from the number of (B) By comparing the dates obtained days determined by the Secretary of pursuant to paragraphs (d)(4) and Health and Human Services to be in (d)(6)(i)(A) of this section with each the regulatory review period: other and selecting the earlier date; or (i) The number of days in the periods (ii) If a request was submitted for an of paragraphs (c)(1) and (c)(2) of this exemption under subsection (i) of sec- section which were on and before the tion 505 or subsection (d) of section 507 date on which the patent issued; of the Federal Food, Drug, or Cosmetic (ii) The number of days in the periods Act before September 24, 1984 and the of paragraphs (c)(1) and (c)(2) of this commercial marketing or use of the section during which it is determined product was not approved before Sep- under 35 U.S.C. 156(d)(2)(B) by the Sec- tember 24, 1984, by— retary of Health and Human Services (A) Adding 2 years to the original ex- that applicant did not act with due piration date of the patent or earlier diligence; date set by terminal disclaimer, and (iii) One-half the number of days re- (B) By comparing the dates obtained maining in the period defined by para- pursuant to paragraphs (d)(4) and graph (c)(1) of this section after that (d)(6)(ii)(A) of this section with each period is reduced in accordance with other and selecting the earlier date. paragraphs (d)(1) (i) and (ii) of this section; half days will be ignored for pur- [52 FR 9394, Mar. 24, 1987, as amended at 54 poses of subtraction; FR 30381, July 20, 1989] (2) By adding the number of days determined in paragraph (d)(1) of this sec- § 1.776 Calculation of patent term ex- tion to the original term of the patent tension for a food additive or color additive. as shortened by any terminal disclaimer; (a) If a determination is made pursu- (3) By adding 14 years to the date of ant to § 1.750 that a patent for a food approval of the application under sec- additive or color additive is eligible for tion 351 of the Public Health Service extension, the term shall be extended Act, or subsection (b) of section 505 or by the time as calculated in days in the section 507 of the Federal Food, Drug, manner indicated by this section. The and Cosmetic Act; patent term extension will run from (4) By comparing the dates for the the original expiration date of the pat- ends of the periods obtained pursuant ent or earlier date set by terminal dis- to paragraphs (d)(2) and (d)(3) of this claimer (§ 1.321). section with each other and selecting (b) The term of the patent for a food the earlier date; additive or color additive will be ex- (5) If the original patent was issued tended by the length of the regulatory after September 24, 1984, review period for the product as deter- (i) By adding 5 years to the original mined by the Secretary of Health and expiration date of the patent or any Human Services, reduced as appro- earlier date set by terminal disclaimer; priate pursuant to paragraphs (d)(1) and through (d)(6) of this section. (ii) By comparing the dates obtained (c) The length of the regulatory re- pursuant to paragraphs (d)(4) and view period for a food additive or color

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additive will be determined by the Sec- (2) By adding the number of days de- retary of Health and Human Services. termined in paragraph (d)(1) of this sec- Under 35 U.S.C. 156(g)(2)(B), it is the tion to the original term of the patent sum of— as shortened by any terminal dis- (1) The number of days in the period claimer; beginning on the date a major health (3) By adding 14 years to the date a or environmental effects test on the regulation for use of the product be- additive was initiated and ending on came effective or, if objections were the date a petition was initially sub- filed to such regulation, to the date mitted with respect to the approved such objections were resolved and com- product under the Federal Food, Drug, mercial marketing was permitted or, if and Cosmetic Act requesting the commercial marketing was permitted issuance of a regulation for use of the and later revoked pending further pro- product; and ceedings as a result of such objections, (2) The number of days in the period to the date such proceedings were fi- beginning on the date a petition was nally resolved and commercial mar- initially submitted with respect to the keting was permitted; approved product under the Federal (4) By comparing the dates for the Food, Drug, and Cosmetic Act request- ends of the periods obtained pursuant ing the issuance of a regulation for use to paragraphs (d)(2) and (d)(3) of this of the product, and ending on the date section with each other and selecting such regulation became effective or, if the earlier date; objections were filed to such regula- (5) If the original patent was issued tion, ending on the date such objec- after September 24, 1984, tions were resolved and commercial (i) By adding 5 years to the original marketing was permitted or, if com- expiration date of the patent or earlier mercial marketing was permitted and date set by terminal disclaimer; and later revoked pending further pro- (ii) By comparing the dates obtained ceedings as a result of such objections, pursuant to paragraphs (d)(4) and ending on the date such proceedings (d)(5)(i) of this section with each other were finally resolved and commercial and selecting the earlier date; marketing was permitted. (6) If the original patent was issued (d) The term of the patent as ex- before September 24, 1984, and tended for a food additive or color addi- (i) If no major health or environ- tive will be determined by mental effects test was initiated and (1) Subtracting from the number of no petition for a regulation or applica- days determined by the Secretary of tion for registration was submitted be- Health and Human Services to be in fore September 24, 1984, by— the regulatory review period: (A) Adding 5 years to the original ex- (i) The number of days in the periods piration date of the patent or earlier of paragraphs (c)(1) and (c)(2) of this date set by terminal disclaimer, and section which were on and before the (B) By comparing the dates obtained date on which the patent issued; pursuant to paragraphs (d)(4) and (ii) The number of days in the periods (d)(6)(i)(A) of this section with each of paragraphs (c)(1) and (c)(2) of this other and selecting the earlier date; or section during which it is determined (ii) If a major health or environ- under 35 U.S.C. 156(d)(2)(B) by the Sec- mental effects test was initiated or a retary of Health and Human Services petition for a regulation or application that applicant did not act with due for registration was submitted by Sep- diligence; tember 24, 1984, and the commercial (iii) The number of days equal to one- marketing or use of the product was half the number of days remaining in not approved before September 24, 1984, the period defined by paragraph (c)(1) by— of this section after that period is re- (A) Adding 2 years to the original ex- duced in accordance with paragraphs piration date of the patent or earlier (d)(1) (i) and (ii) of this section; half date set by terminal disclaimer, and days will be ignored for purposes of (B) By comparing the dates obtained subtraction; pursuant to paragraphs (d)(4) and

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(d)(6)(ii)(A) of this section with each (i) The number of days in the periods other and selecting the earlier date. of paragraphs (c)(1) and (c)(2) of this section which were on and before the § 1.777 Calculation of patent term ex- date on which the patent issued; tension for a medical device. (ii) The number of days in the periods (a) If a determination is made pursu- of paragraphs (c)(1) and (c)(2) of this ant to § 1.750 that a patent for a med- section during which it is determined ical device is eligible for extension, the under 35 U.S.C. 156(d)(2)(B) by the Sec- term shall be extended by the time as retary of Health and Human Services calculated in days in the manner indi- that applicant did not act with due cated by this section. The patent term diligence; extension will run from the original ex- (iii) One-half the number of days re- piration date of the patent or earlier maining in the period defined by para- date as set by terminal disclaimer graph (c)(1) of this section after that (§ 1.321). period is reduced in accordance with (b) The term of the patent for a med- paragraphs (d)(1) (i) and (ii) of this sec- ical device will be extended by the tion; half days will be ignored for pur- length of the regulatory review period poses of subtraction; for the product as determined by the (2) By adding the number of days de- Secretary of Health and Human Serv- termined in paragraph (d)(1) of this sec- ices, reduced as appropriate pursuant tion to the original term of the patent to paragraphs (d)(1) through (d)(6) of as shortened by any terminal dis- this section. claimer; (c) The length of the regulatory re- (3) By adding 14 years to the date of view period for a medical device will be approval of the application under sec- determined by the Secretary of Health tion 515 of the Federal Food, Drug, and and Human Services. Under 35 U.S.C. Cosmetic Act or the date a product de- 156(g)(3)(B), it is the sum of velopment protocol was declared com- (1) The number of days in the period pleted under section 515(f)(6) of the Act; beginning on the date a clinical inves- (4) By comparing the dates for the tigation on humans involving the de- ends of the periods obtained pursuant vice was begun and ending on the date to paragraphs (d)(2) and (d)(3) of this an application was initially submitted section with each other and selecting with respect to the device under sec- the earlier date; tion 515 of the Federal Food, Drug, and (5) If the original patent was issued Cosmetic Act; and after September 24, 1984, (2) The number of days in the period (i) By adding 5 years to the original beginning on the date the application expiration date of the patent or earlier was initially submitted with respect to date set by terminal disclaimer; and the device under section 515 of the Fed- (ii) By comparing the dates obtained eral Food, Drug, and Cosmetic Act, and pursuant to paragraphs (d)(4) and ending on the date such application (d)(5)(i) of this section with each other was approved under such Act or the pe- and selecting the earlier date; riod beginning on the date a notice of (6) If the original patent was issued completion of a product development before September 24, 1984, and protocol was initially submitted under (i) If no clinical investigation on hu- section 515(f)(5) of the Act and ending mans involving the device was begun or on the date the protocol was declared no product development protocol was completed under section 515(f)(6) of the submitted under section 515(f)(5) of the Act. Federal Food, Drug, and Cosmetic Act (d) The term of the patent as ex- before September 24, 1984, by— tended for a medical device will be de- (A) Adding 5 years to the original ex- termined by— piration date of the patent or earlier (1) Substracting from the number of date set by terminal disclaimer and days determined by the Secretary of (B) By comparing the dates obtained Health and Human Services to be in pursuant to paragraphs (d)(4) and the regulatory review period pursuant (d)(6)(i)(A) of this section with each to paragraph (c) of this section: other and selecting the earlier date; or

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(ii) If a clinical investigation on hu- Drug, and Cosmetic Act and ending on mans involving the device was begun or the date such application was approved a product development protocol was under such section. submitted under section 515(f)(5) of the (d) The term of the patent as ex- Federal Food, Drug, and Cosmetic Act tended for an animal drug will be de- before September 24, 1984 and the com- termined by— mercial marketing or use of the prod- (1) Subtracting from the number of uct was not approved before September days determined by the Secretary of 24, 1984, by Health and Human Services to be in (A) Adding 2 years to the original ex- the regulatory review period: piration date of the patent or earlier (i) The number of days in the periods date set by terminal disclaimer, and of paragraphs (c)(1) and (c)(2) of this (B) By comparing the dates obtained section that were on and before the pursuant to paragraphs (d)(4) and date on which the patent issued; (d)(6)(ii)(A) of this section with each (ii) The number of days in the periods other and selecting the earlier date. of paragraphs (c)(1) and (c)(2) of this section during which it is determined § 1.778 Calculation of patent term ex- under 35 U.S.C. 156(d)(2)(B) by the Sec- tension for an animal drug product. retary of Health and Human Services (a) If a determination is made pursu- that applicant did not act with due ant to § 1.750 that a patent for an ani- diligence; mal drug is eligible for extension, the (iii) One-half the number of days re- term shall be extended by the time as maining in the period defined by para- calculated in days in the manner indi- graph (c)(1) of this section after that cated by this section. The patent term period is reduced in accordance with extension will run from the original ex- paragraphs (d)(1) (i) and (ii) of this sec- piration date of the patent or any ear- tion; half days will be ignored for pur- lier date set by terminal disclaimer poses of subtraction; (§ 1.321). (2) By adding the number of days de- (b) The term of the patent for an ani- termined in paragraph (d)(1) of this sec- mal drug will be extended by the tion to the original term of the patent length of the regulatory review period as shortened by any terminal dis- for the drug as determined by the Sec- claimer; retary of Health and Human Services, (3) By adding 14 years to the date of reduced as appropriate pursuant to approval of the application under sec- paragraphs (d)(1) through (d)(6) of this tion 512 of the Federal Food, Drug, and section. Cosmetic Act; (c) The length of the regulatory re- (4) By comparing the dates for the view period for an animal drug will be ends of the periods obtained pursuant determined by the Secretary of Health to paragraphs (d)(2) and (d)(3) of this and Human Services. Under 35 U.S.C. section with each other and selecting 156(g)(4)(B), it is the sum of— the earlier date; (1) The number of days in the period (5) If the original patent was issued beginning on the earlier of the date a after November 16, 1988, by— major health or environmental effects (i) Adding 5 years to the original ex- test on the drug was initiated or the piration date of the patent or any ear- date an exemption under subsection (j) lier date set by terminal disclaimer; of section 512 of the Federal Food, and Drug, and Cosmetic Act became effec- (ii) Comparing the dates obtained tive for the approved animal drug and pursuant to paragraphs (d)(4) and ending on the date an application was (d)(5)(i) of this section with each other initially submitted for such animal and selecting the earlier date; drug under section 512 of the Federal (6) If the original patent was issued Food, Drug, and Cosmetic Act; and before November 16, 1988, and (2) The number of days in the period (i) If no major health or environ- beginning on the date the application mental effects test on the drug was ini- was initially submitted for the ap- tiated and no request was submitted proved animal drug under subsection for an exemption under subsection (j) (b) of section 512 of the Federal Food, of section 512 of the Federal Food,

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Drug, and Cosmetic Act before Novem- date an application for a license was ber 16, 1988, by— submitted under the Virus-Serum- (A) Adding 5 years to the original ex- Toxin Act; and piration date of the patent or earlier (2) The number of days in the period date set by terminal disclaimer; and beginning on the date an application (B) Comparing the dates obtained for a license was initially submitted pursuant to paragraphs (d)(4) and for approval under the Virus-Serum- (d)(6)(i)(A) of this section with each Toxin Act and ending on the date such other and selecting the earlier date; or license was issued. (ii) If a major health or environ- (d) The term of the patent as ex- mental effects test was initiated or a tended for a veterinary biological prod- request for an exemption under sub- uct will be determined by— section (j) of section 512 of the Federal (1) Subtracting from the number of Food, Drug, and Cosmetic Act was sub- days determined by the Secretary of mitted before November 16, 1988, and Agriculture to be in the regulatory re- the application for commercial mar- view period: keting or use of the animal drug was (i) The number of days in the periods not approved before November 16, 1988, of paragraphs (c)(1) and (c)(2) of this by— section that were on and before the (A) Adding 3 years to the original ex- date on which the patent issued; piration date of the patent or earlier date set by terminal disclaimer, and (ii) The number of days in the periods (B) Comparing the dates obtained of paragraphs (c)(1) and (c)(2) of this pursuant to paragraphs (d)(4) and section during which it is determined (d)(6)(ii)(A) of this section with each under 35 U.S.C. 156(d)(2)(B) by the Sec- other and selecting the earlier date. retary of Agriculture that applicant did not act with due diligence; [54 FR 30381, July 20, 1989] (iii) One-half the number of days remaining in the period defined by para- § 1.779 Calculation of patent term ex- graph (c)(1) of this section after that tension for a veterinary biological product. period is reduced in accordance with paragraphs (d)(1) (i) and (ii) of this sec- (a) If a determination is made pursu- tion; half days will be ignored for pur- ant to § 1.750 that a patent for a veteri- poses of subtraction; nary biological product is eligible for (2) By adding the number of days de- extension, the term shall be extended termined in paragraph (d)(1) of this sec- by the time as calculated in days in the tion to the original term of the patent manner indicated by this section. The as shortened by any terminal dis- patent term extension will run from claimer; the original expiration date of the pat- (3) By adding 14 years to the date of ent or any earlier date set by terminal the issuance of a license under the disclaimer (§ 1.321). (b) The term of the patent for a vet- Virus-Serum-Toxin Act; erinary biological product will be ex- (4) By comparing the dates for the tended by the length of the regulatory ends of the periods obtained pursuant review period for the product as deter- to paragraphs (d)(2) and (d)(3) of this mined by the Secretary of Agriculture, section with each other and selecting reduced as appropriate pursuant to the earlier date; paragraphs (d)(1) through (d)(6) of this (5) If the original patent was issued section. after November 16, 1988, by— (c) The length of the regulatory re- (i) Adding 5 years to the original ex- view period for a veterinary biological piration date of the patent or any ear- product will be determined by the Sec- lier date set by terminal disclaimer; retary of Agriculture. Under 35 U.S.C. and 156(g)(5)(B), it is the sum of— (ii) Comparing the dates obtained (1) The number of days in the period pursuant to paragraphs (d)(4) and beginning on the date the authority to (d)(5)(i) of this section with each other prepare an experimental biological and selecting the earlier date; product under the Virus-Serum-Toxin (6) If the original patent was issued Act became effective and ending on the before November 16, 1988, and

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(i) If no request for the authority to tension. In such situations, the final prepare an experimental biological determination made pursuant to § 1.750 product under the Virus-Serum-Toxin will indicate that no certificate or Act was submitted before November 16, order will issue. 1988, by— [65 FR 54680, Sept. 8, 2000] (A) Adding 5 years to the original expiration date of the patent or earlier § 1.785 Multiple applications for exten- date set by terminal disclaimer; and sion of term of the same patent or (B) Comparing the dates obtained of different patents for the same pursuant to paragraphs (d)(4) and regulatory review period for a (d)(6)(i)(A) of this section with each product. other and selecting the earlier date; or (a) Only one patent may be extended (ii) If a request for the authority to for a regulatory review period for any prepare an experimental biological product (§ 1.720(h)). If more than one product under the Virus-Serum-Toxin application for extension of the same Act was submitted before November 16, patent is filed, the certificate of exten- 1988, and the commercial marketing or sion of patent term, if appropriate, will use of the product was not approved be- be issued based upon the first filed ap- fore November 16, 1988, by— plication for extension. (A) Adding 3 years to the original ex- (b) If more than one application for piration date of the patent or earlier extension is filed by a single applicant date set by terminal disclaimer; and which seeks the extension of the term (B) Comparing the dates obtained of two or more patents based upon the pursuant to paragraphs (d)(4) and same regulatory review period, and the (d)(6)(ii)(A) of this section with each patents are otherwise eligible for ex- other and selecting the earlier date. tension pursuant to the requirements [52 FR 9394, Mar. 24, 1987, as amended at 54 of this subpart, in the absence of an FR 30382, July 20, 1989] election by the applicant, the certificate of extension of patent term, if ap- § 1.780 Certificate or order of exten- propriate, will be issued upon the appli- sion of patent term. cation for extension of the patent term If a determination is made pursuant having the earliest date of issuance of to § 1.750 that a patent is eligible for ex- those patents for which extension is tension and that the term of the patent sought. is to be extended, a certificate of ex- (c) If an application for extension is tension, under seal, or an order grant- filed which seeks the extension of the ing interim extension under 35 U.S.C. term of a patent based upon the same 156(d)(5), will be issued to the applicant regulatory review period as that relied for the extension of the patent term. upon in one or more applications for Such certificate or order will be re- extension pursuant to the require- corded in the official file of the patent ments of this subpart, the certificate of and will be considered as part of the extension of patent term will be issued original patent. Notification of the on the application only if the patent issuance of the certificate or order of owner or its agent is the holder of the extension will be published in the Offi- regulatory approval granted with re- cial Gazette of the United States Patent spect to the regulatory review period. and Trademark Office. Notification of (d) An application for extension shall the issuance of the order granting an be considered complete and formal re- interim extension under 35 U.S.C. gardless of whether it contains the 156(d)(5), including the identity of the identification of the holder of the regu- product currently under regulatory re- latory approval granted with respect to view, will be published in the Official the regulatory review period. When an Gazette of the United States Patent and application contains such information, Trademark Office and in the FEDERAL or is amended to contain such informa- REGISTER. No certificate of, or order tion, it will be considered in deter- granting, an extension will be issued if mining whether an application is eligi- the term of the patent cannot be ex- ble for an extension under this section. tended, even though the patent is oth- A request may be made of any appli- erwise determined to be eligible for ex- cant to supply such information within

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a non-extendable period of not less (c) The content of each subsequent than one month whenever multiple ap- interim extension application may be plications for extension of more than limited to a request for a subsequent one patent are received and rely upon interim extension along with a state- the same regulatory review period. ment that the regulatory review period Failure to provide such information has not been completed along with any within the period for reply set shall be materials or information required regarded as conclusively establishing under §§ 1.740 and 1.741 that are not that the applicant is not the holder of present in the preceding interim exten- the regulatory approval. sion application. (e) Determinations made under this section shall be included in the notice [60 FR 25619, May 12, 1995] of final determination of eligibility for extension of the patent term pursuant § 1.791 Termination of interim extension granted prior to regulatory ap- to § 1.750 and shall be regarded as part proval of a product for commercial of that determination. marketing or use. [60 FR 25618, May 12, 1995, as amended at 62 Any interim extension granted under FR 53201, Oct. 10, 1997] 35 U.S.C. 156(d)(5) terminates at the end of the 60-day period beginning on the § 1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5). date on which the product involved receives permission for commercial mar- (a) An owner of record of a patent or keting or use. If within that 60-day pe- its agent who reasonably expects that riod the patent owner or its agent files the applicable regulatory review period an application for extension under described in paragraph (1)(B)(ii), §§ 1.740 and 1.741 including any addi- (2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or tional information required under 35 (5)(B)(ii) of subsection (g) that began U.S.C. 156(d)(1) not contained in the ap- for a product that is the subject of such patent may extend beyond the expira- plication for interim extension, the tion of the patent term in effect may patent shall be further extended in ac- submit one or more applications for in- cordance with the provisions of 35 terim extensions for periods of up to U.S.C. 156. one year each. The initial application [60 FR 25619, May 12, 1995] for interim extension must be filed during the period beginning 6 months and ending 15 days before the patent term Subpart G—Biotechnology is due to expire. Each subsequent appli- Invention Disclosures cation for interim extension must be filed during the period beginning 60 DEPOSIT OF BIOLOGICAL MATERIAL days before and ending 30 days before the expiration of the preceding interim SOURCE: 54 FR 34880, Aug. 22, 1989, unless extension. In no event will the interim otherwise noted. extensions granted under this section § 1.801 Biological material. be longer than the maximum period of extension to which the applicant would For the purposes of these regulations be entitled under 35 U.S.C. 156(c). pertaining to the deposit of biological (b) A complete application for in- material for purposes of patents for interim extension under this section ventions under 35 U.S.C. 101, the term shall include all of the information re- biological material shall include mate- quired for a formal application under rial that is capable of self-replication § 1.740 and a complete application under either directly or indirectly. Rep- § 1.741. Sections (a)(1), (a)(2), (a)(4), and resentative examples include bacteria, (a)(6)–(a)(17) of § 1.740 and § 1.741 shall be fungi including yeast, algae, protozoa, read in the context of a product cur- eukaryotic cells, cell lines, rently undergoing regulatory review. hybridomas, plasmids, viruses, plant Sections (a)(3) and (a)(5) of § 1.740 are tissue cells, lichens and seeds. Viruses, not applicable to an application for in- vectors, cell organelles and other non- terim extension under this section.

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living material existing in and repro- terms and conditions applicable to de- ducible from a living cell may be de- posits for patent purposes. The Direc- posited by deposit of the host cell capa- tor may seek the advice of impartial ble of reproducing the non-living mate- consultants on the suitability of a de- rial. pository. The depository must: (i) Have a continuous existence; § 1.802 Need or opportunity to make a (ii) Exist independent of the control deposit. of the depositor; (a) Where an invention is, or relies (iii) Possess the staff and facilities on, a biological material, the disclo- sufficient to examine the viability of a sure may include reference to a deposit deposit and store the deposit in a man- of such biological material. ner which ensures that it is kept viable (b) Biological material need not be and uncontaminated; deposited unless access to such mate- (iv) Provide for sufficient safety rial is necessary for the satisfaction of measures to minimize the risk of los- the statutory requirements for patenting biological material deposited with ability under 35 U.S.C. 112. If a deposit it; is necessary, it shall be acceptable if (v) Be impartial and objective; made in accordance with these regula- (vi) Furnish samples of the deposited tions. Biological material need not be material in an expeditious and proper deposited, inter alia, if it is known and manner; and readily avaliable to the public or can (vii) Promptly notify depositors of its be made or isolated without undue ex- inability to furnish samples, and the perimentation. Once deposited in a de- reasons why. pository complying with these regula- (b) A depository seeking status under tions, a biological material will be con- paragraph (a)(2) of this section must di- sidered to be readily available even rect a communication to the Director though some requirement of law or reg- which shall: ulation of the United States or of the (1) Indicate the name and address of country in which the depository insti- the depository to which the commu- tution is located permits access to the nication relates; material only under conditions im- (2) Contain detailed information as to posed for safety, public health or simi- the capacity of the depository to com- lar reasons. ply with the requirements of paragraph (c) The reference to a biological ma- (a)(2) of this section, including infor- terial in a specification disclosure or mation on its legal status, scientific the actual deposit of such material by standing, staff and facilities; an applicant or patent owner does not (3) Indicate that the depository in- create any presumption that such ma- tends to be available, for the purposes terial is necessary to satisfy 35 U.S.C. of deposit, to any depositor under these 112 or that deposit in accordance with same conditions; these regulations is or was required. (4) Where the depository intends to accept for deposit only certain kinds of § 1.803 Acceptable depository. biological material, specify such kinds; (a) A deposit shall be recognized for (5) Indicate the amount of any fees the purposes of these regulations if that the depository will, upon acquir- made in ing the status of suitable depository (1) Any International Depositary Au- under paragraph (a)(2) of this section, thority (IDA) as established under the charge for storage, viability state- Budapest Treaty on the International ments and furnishings of samples of Recognition of the Deposit of Micro- the deposit. organisms for the Purposes of Patent (c) A depository having status under Procedure, or paragraph (a)(2) of this section limited (2) Any other depository recognized to certain kinds of biological material to be suitable by the Office. Suitability may extend such status to additional will be determined by the Director on kinds of biological material by direct- the basis of the administrative and ing a communication to the Director in technical competence, and agreement accordance with paragraph (b) of this of the depository to comply with the section. If a previous communication

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under paragraph (b) of this section is of the need for making an original deposit record, items in common with the pre- under the provisions set forth in vious communication may be incor- § 1.802(b). A replacement or supple- porated by reference. mental deposit made during the pend- (d) Once a depository is recognized to ency of an application for patent shall be suitable by the Director or has de- not be accepted unless it meets the re- faulted or discontinued its performance quirements for making an original de- under this section, notice thereof will posit under these regulations, includ- be published in the Office Gazette of ing the requirement set forth under the Patent and Trademark Office. § 1.804(b). A replacement or supplemental deposit made in connection § 1.804 Time of making an original de- with a patent, whether or not made posit. during the pendency of an application (a) Whenever a biological material is for reissue patent or a reexamination specifically identified in an application proceeding or both, shall not be accept- for patent as filed, an original deposit ed unless a certificate of correction thereof may be made at any time be- under § 1.323 is requested by the patent fore filing the application for patent owner which meets the terms of para- or, subject to § 1.809, during pendency graphs (b) and (c) of this section. of the application for patent. (b) A request for certificate of correc- (b) When the original deposit is made tion under this section shall not be after the effective filing date of an ap- granted unless the certificate identi- plication for patent, the applicant fies: must promptly submit a statement (1) The accession number for the re- from a person in a position to corrobo- placement or supplemental deposit; rate the fact, stating that the biologi- (2) The date of the deposit; and cal material which is deposited is a bi- (3) The name and address of the de- ological material specifically identified pository. in the application as filed. (c) A request for a certificate of cor- [54 FR 34880, Aug. 22, 1989, as amended at 62 rection under this section shall not be FR 53202, Oct. 10, 1997] granted unless the request is made promptly after the replacement or sup- § 1.805 Replacement or supplement of plemental deposit has been made and deposit. the request: (a) A depositor, after receiving notice (1) Includes a statement of the reason during the pendency of an application for making the replacement or supple- for patent, application for reissue pat- mental deposit; ent or reexamination proceeding, that (2) Includes a statement from a per- the depository possessing a deposit ei- son in a position to corroborate the ther cannot furnish samples thereof or fact, and stating that the replacement can furnish samples thereof but the de- or supplemental deposit is of a biologi- posit has become contaminated or has cal material which is identical to that lost its capability to function as de- originally deposited; scribed in the specification, shall no- (3) Includes a showing that the pat- tify the Office in writing, in each appli- ent owner acted diligently— cation for patent or patent affected. In (i) In the case of a replacement de- such a case, or where the Office other- posit, in making the deposit after re- wise learns, during the pendency of an ceiving notice that samples could no application for patent, application for longer be furnished from an earlier de- reissue patent or reexamination pro- posit; or ceeding, that the depository possessing (ii) In the case of a supplemental de- a deposit either cannot furnish samples posit, in making the deposit after re- thereof or can furnish samples thereof ceiving notice that the earlier deposit but the deposit has become contami- had become contaminated or had lost nated or has lost its capability to func- its capability to function as described tion as described in the specification, in the specification; the need for making a replacement or (4) Includes a statement that the supplemental deposit will be governed term of the replacement or supple- by the same considerations governing mental deposit expires no earlier than

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the term of the deposit being replaced agreements that would make them or supplemented; and available beyond the enforceable life of (5) Otherwise establishes compliance the patent for which the deposit was with these regulations. made. (d) A depositor’s failure to replace a deposit, or in the case of a patent, to § 1.807 Viability of deposit. diligently replace a deposit and (a) A deposit of biological material promptly thereafter request a certificate of correction which meets the that is capable of self-replication ei- terms of paragraphs (b) and (c) of this ther directly or indirectly must be via- section, after being notified that the ble at the time of deposit and during depository possessing the deposit can- the term of deposit. Viability may be not furnish samples thereof, shall tested by the depository. The test must cause the application or patent in- conclude only that the deposited mate- volved to be treated in any Office pro- rial is capable of reproduction. No evi- ceeding as if no deposit were made. dence is necessarily required regarding (e) In the event a deposit is replaced the ability of the deposited material to according to these regulations, the Of- perform any function described in the fice will apply a rebuttable presump- patent application. tion of identity between the original (b) A viability statement for each de- and the replacement deposit where a posit of a biological material defined in patent making reference to the deposit paragraph (a) of this section not made is relied upon during any Office under the Budapest Treaty on the proceeeding. International Recognition of the De- (f) A replacement or supplement deposit of Microorganisms for the Pur- posit made during the pendency of an application for patent may be made for poses of Patent Procedure must be filed any reason. in the application and must contain: (g) In no case is a replacement or (1) The name and address of the de- supplemental deposit of a biological pository; material necessary where the biologi- (2) The name and address of the de- cal material, in accordance with positor; § 1.802(b), need not be deposited. (3) The date of deposit; (h) No replacement deposit of a bio- (4) The identity of the deposit and logical material is necessary where a the accession number given by the de- depository can furnish samples thereof pository; but the depository for national secu- (5) The date of the viability test; rity, health or environmental safety (6) The procedures used to obtain a reasons is unable to provide samples to sample if the test is not done by the de- requesters outside of the jurisdiction pository; and where the depository is located. (i) The Office will not recognize in (7) A statement that the deposit is any Office proceeding a replacement capable of reproduction. deposit of a biological material made (c) If a viability test indicates that by a patent owner where the depository the deposit is not viable upon receipt, could furnish samples of the deposit or the examiner cannot, for scientific being replaced. or other valid reasons, accept the statement of viability received from [54 FR 34880, Aug. 22, 1989, as amended at 62 FR 53202, Oct. 10, 1997] the applicant, the examiner shall proceed as if no deposit has been made. § 1.806 Term of deposit. The examiner will accept the conclu- A deposit made before or during sion set forth in a viability statement pendency of an application for patent issued by a depository recognized under shall be made for a term of at least § 1.803(a). thirty (30) years and at least five (5) years after the most recent request for § 1.808 Furnishing of samples. the furnishing of a sample of the de- (a) A deposit must be made under posit was received by the depository. In conditions that assure that: any case, samples must be stored under

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(1) Access to the deposit will be avail- posit is needed and/or why a deposit ac- able during pendency of the patent ap- tually made cannot be accepted. plication making reference to the de- (b) The applicant for patent or patent posit to one determined by the Direc- owner shall reply to a rejection under tor to be entitled thereto under § 1.14 paragraph (a) of this section by— and 35 U.S.C. 122, and (1) In the case of an applicant for pat- (2) Subject to paragraph (b) of this ent, either making an acceptable origi- section, all restrictions imposed by the nal, replacement, or supplemental de- depositor on the availability to the posit, or assuring the Office in writing public of the deposited material will be that an acceptable deposit will be irrevocably removed upon the granting made; or, in the case of a patent owner, of the patent. requesting a certificate of correction of (b) The depositor may contract with the patent which meets the terms of the depository to require that samples paragraphs (b) and (c) of § 1.805, or of a deposited biological material shall (2) Arguing why a deposit is not need- be furnished only if a request for a ed under the circumstances of the ap- sample, during the term of the patent: (1) Is in writing or other tangible plication or patent considered and/or form and dated; why a deposit actually made should be (2) Contains the name and address of accepted. Other replies to the exam- the requesting party and the accession iner’s action shall be considered non- number of the deposit; and responsive. The rejection will be re- (3) Is communicated in writing by the peated until either paragraph (b)(1) of depository to the depositor along with this section is satisfied or the examiner the date on which the sample was fur- is convinced that a deposit is not need- nished and the name and address of the ed. party to whom the sample was fur- (c) If an application for patent is oth- nished. erwise in condition for allowance ex- (c) Upon request made to the Office, cept for a needed deposit and the Office the Office will certify whether a de- has received a written assurance that posit has been stated to have been an acceptable deposit will be made, the made under conditions which make it Office may notify the applicant in a no- available to the public as of the issue tice of allowability and set a three- date of the patent grant provided the month period of time from the mailing request contains: date of the notice of allowability with- (1) The name and address of the de- in which the deposit must be made in pository; order to avoid abandonment. This time (2) The accession number given to the period is not extendable under § 1.136 deposit; (see § 1.136(c)). (3) The patent number and issue date (d) For each deposit made pursuant of the patent referring to the deposit; to these regulations, the specification and shall contain: (4) The name and address of the re- (1) The accession number for the de- questing party. posit; § 1.809 Examination procedures. (2) The date of the deposit; (3) A description of the deposited bio- (a) The examiner shall determine logical material sufficient to specifi- pursuant to § 1.104 in each application cally identify it and to permit exam- for patent, application for reissue pat- ination; and ent or reexamination proceeding if a (4) The name and address of the de- deposit is needed, and if needed, if a depository. posit actually made is acceptable for patent purposes. If a deposit is needed (e) Any amendment required by para- and has not been made or replaced or graphs (d)(1), (d)(2) or (d)(4) of this sec- supplemented in accordance with these tion must be filed before or with the regulations, the examiner, where ap- payment of the issue fee (see § 1.312). propriate, shall reject the affected [54 FR 34880, Aug. 22, 1989, as amended at 66 claims under the appropriate provision FR 21092, Apr. 27, 2001; 78 FR 62408, Oct. 21, of 35 U.S.C. 112, explaining why a de- 2013]

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APPLICATION DISCLOSURES CONTAINING Standard ST.25 (1998), Appendix 2, NUCLEOTIDE AND/OR AMINO ACID SE- Table 2, but shall not be shown explic- QUENCES itly in the nucleotide sequence. (2) Amino acids: Amino acids are SOURCE: Sections 1.821 through 1.825 appear those L-amino acids commonly found at 55 FR 18245, May 1, 1990, unless otherwise in naturally occurring proteins and are noted. listed in WIPO Standard ST.25 (1998), Appendix 2, Table 3. Those amino acid § 1.821 Nucleotide and/or amino acid sequence disclosures in patent ap- sequences containing D-amino acids plications. are not intended to be embraced by this definition. Any amino acid se- (a) Nucleotide and/or amino acid sequence that contains post- quences as used in §§ 1.821 through 1.825 translationally modified amino acids are interpreted to mean an unbranched may be described as the amino acid se- sequence of four or more amino acids quence that is initially translated or an unbranched sequence of ten or using the symbols shown in WIPO more nucleotides. Branched sequences Standard ST.25 (1998), Appendix 2, are specifically excluded from this defi- Table 3 with the modified positions; nition. Sequences with fewer than four e.g., hydroxylations or glycosylations, specifically defined nucleotides or amino acids are specifically excluded being described as set forth in WIPO from this section. ‘‘Specifically de- Standard ST.25 (1998), Appendix 2, fined’’ means those amino acids other Table 4, but these modifications shall than ‘‘Xaa’’ and those nucleotide bases not be shown explicitly in the amino other than ‘‘n’’defined in accordance acid sequence. Any peptide or protein with the World Intellectual Property that can be expressed as a sequence Organization (WIPO) Handbook on In- using the symbols in WIPO Standard dustrial Property Information and Doc- ST.25 (1998), Appendix 2, Table 3 in con- umentation, Standard ST.25: Standard junction with a description in the Fea- for the Presentation of Nucleotide and ture section to describe, for example, Amino Acid Sequence Listings in Pat- modified linkages, cross links and end ent Applications (1998), including Ta- caps, non-peptidyl bonds, etc., is em- bles 1 through 6 in Appendix 2, herein braced by this definition. incorporated by reference. (Hereinafter (b) Patent applications which contain ‘‘WIPO Standard ST.25 (1998)’’). This disclosures of nucleotide and/or amino incorporation by reference was ap- acid sequences, in accordance with the proved by the Director of the Federal definition in paragraph (a) of this sec- Register in accordance with 5 U.S.C. tion, shall, with regard to the manner 552(a) and 1 CFR part 51. Copies of in which the nucleotide and/or amino WIPO Standard ST.25 (1998) may be ob- acid sequences are presented and de- tained from the World Intellectual scribed, conform exclusively to the re- Property Organization; 34 chemin des quirements of §§ 1.821 through 1.825. Colombettes; 1211 Geneva 20 Switzer- (c) Patent applications which contain land. Copies may also be inspected at disclosures of nucleotide and/or amino the National Archives and Records Ad- acid sequences must contain, as a sepa- ministration (NARA). For information rate part of the disclosure, a paper or on the availability of this material at compact disc copy (see § 1.52(e)) dis- NARA, call 202–741–6030, or go to: http:// closing the nucleotide and/or amino www.archives.gov/federallregister/ acid sequences and associated informa- codeloflfederallregulations/ tion using the symbols and format in ibrllocations.html. Nucleotides and accordance with the requirements of amino acids are further defined as fol- §§ 1.822 and 1.823. This paper or compact lows: disc copy is referred to elsewhere in (1) Nucleotides: Nucleotides are in- this subpart as the ‘‘Sequence List- tended to embrace only those nucleo- ing.’’ Each sequence disclosed must ap- tides that can be represented using the pear separately in the ‘‘Sequence List- symbols set forth in WIPO Standard ing.’’ Each sequence set forth in the ST.25 (1998), Appendix 2, Table 1. Modi- ‘‘Sequence Listing’’ must be assigned a fications, e.g., methylated bases, may separate sequence identifier. The se- be described as set forth in WIPO quence identifiers must begin with 1

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and increase sequentially by integers. paper or compact disc copy and the If no sequence is present for a sequence computer readable copy are the same identifier, the code ‘‘000’’ must be used must be submitted with the computer in place of the sequence. The response readable form, e.g., a statement that for the numeric identifier <160>must ‘‘the sequence listing information re- include the total number of SEQ ID corded in computer readable form is NOs, whether followed by a sequence or identical to the written (on paper or by the code ‘‘000.’’ compact disc) sequence listing.’’ (d) Where the description or claims of (g) If any of the requirements of a patent application discuss a sequence paragraphs (b) through (f) of this sec- that is set forth in the ‘‘Sequence List- tion are not satisfied at the time of filing’’ in accordance with paragraph (c) ing under 35 U.S.C. 111(a) or at the time of this section, reference must be made to the sequence by use of the sequence of entering the national stage under 35 identifier, preceded by ‘‘SEQ ID NO:’’ U.S.C. 371, applicant will be notified in the text of the description or claims, and given a period of time within even if the sequence is also embedded which to comply with such require- in the text of the description or claims ments in order to prevent abandon- of the patent application. ment of the application. Any submis- (e) A copy of the ‘‘Sequence Listing’’ sion in reply to a requirement under referred to in paragraph (c) of this sec- this paragraph must be accompanied tion must also be submitted in com- by a statement that the submission in- puter readable form (CRF) in accord- cludes no new matter. ance with the requirements of § 1.824. (h) If any of the requirements of The computer readable form must be a paragraphs (b) through (f) of this sec- copy of the ‘‘Sequence Listing’’ and tion are not satisfied at the time of fil- may not be retained as a part of the ing an international application under patent application file. If the computer the Patent Cooperation Treaty (PCT), readable form of a new application is to which application is to be searched by be identical with the computer read- the United States International able form of another application of the Searching Authority or examined by applicant on file in the Office, ref- the United States International Pre- erence may be made to the other appli- liminary Examining Authority, application and computer readable form in cant will be sent a notice necessitating lieu of filing a duplicate computer compliance with the requirements readable form in the new application if the computer readable form in the within a prescribed time period. Any other application was compliant with submission in reply to a requirement all of the requirements of this subpart. under this paragraph must be accom- The new application must be accompanied by a statement that the submis- panied by a letter making such ref- sion does not include matter which erence to the other application and goes beyond the disclosure in the inter- computer readable form, both of which national application as filed. If appli- shall be completely identified. In the cant fails to timely provide the re- new application, applicant must also quired computer readable form, the request the use of the compliant com- United States International Searching puter readable ‘‘Sequence Listing’’ Authority shall search only to the ex- that is already on file for the other ap- tent that a meaningful search can be plication and must state that the paper performed without the computer read- or compact disc copy of the ‘‘Sequence able form and the United States Inter- Listing’’ in the new application is iden- national Preliminary Examining Au- tical to the computer readable copy thority shall examine only to the ex- filed for the other application. tent that a meaningful examination (f) In addition to the paper or com- can be performed without the computer pact disc copy required by paragraph readable form. (c) of this section and the computer readable form required by paragraph [63 FR 29634, June 1, 1998, as amended at 65 (e) of this section, a statement that the FR 54680, Sept. 8, 2000; 69 FR 18803, Apr. 9, ‘‘Sequence Listing’’ content of the 2004; 70 FR 10489, Mar. 4, 2005]

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§ 1.822 Symbols and format to be used (2) The bases in a nucleotide sequence for nucleotide and/or amino acid se- (including introns) shall be listed in quence data. groups of 10 bases except in the coding (a) The symbols and format to be parts of the sequence. Leftover bases, used for nucleotide and/or amino acid fewer than 10 in number, at the end of sequence data shall conform to the re- noncoding parts of a sequence shall be quirements of paragraphs (b) through grouped together and separated from (e) of this section. adjacent groups of 10 or 3 bases by a space. (b) The code for representing the nu- (3) The bases in the coding parts of a cleotide and/or amino acid sequence nucleotide sequence shall be listed as characters shall conform to the code triplets (codons). The amino acids cor- set forth in the tables in WIPO Stand- responding to the codons in the coding ard ST.25 (1998), Appendix 2, Tables 1 parts of a nucleotide sequence shall be and 3. This incorporation by reference typed immediately below the cor- was approved by the Director of the responding codons. Where a codon Federal Register in accordance with 5 spans an intron, the amino acid symbol U.S.C. 552(a) and 1 CFR part 51. Copies shall be typed below the portion of the of ST.25 may be obtained from the codon containing two nucleotides. World Intellectual Property Organiza- (4) A nucleotide sequence shall be tion; 34 chemin des Colombettes; 1211 listed with a maximum of 16 codons or Geneva 20 Switzerland. Copies may also 60 bases per line, with a space provided be inspected at the National Archives between each codon or group of 10 and Records Administration (NARA). bases. For information on the availability of (5) A nucleotide sequence shall be this material at NARA, call 202–741– presented, only by a single strand, in 6030, or go to: http://www.archives.gov/ the 5 to 3 direction, from left to right. federallregister/ (6) The enumeration of nucleotide codeloflfederallregulations/ bases shall start at the first base of the ibrllocations.html. No code other than sequence with number 1. The enumera- that specified in these sections shall be tion shall be continuous through the used in nucleotide and amino acid se- whole sequence in the direction 5 to 3. quences. A modified base or modified The enumeration shall be marked in or unusual amino acid may be pre- the right margin, next to the line con- sented in a given sequence as the cor- taining the one-letter codes for the responding unmodified base or amino bases, and giving the number of the acid if the modified base or modified or last base of that line. unusual amino acid is one of those list- (7) For those nucleotide sequences ed in WIPO Standard ST.25 (1998), Ap- that are circular in configuration, the pendix 2, Tables 2 and 4, and the modi- enumeration method set forth in para- fication is also set forth in the Feature graph (c)(6) of this section remains ap- section. Otherwise, each occurrence of plicable with the exception that the a base or amino acid not appearing in designation of the first base of the nu- WIPO Standard ST.25 (1998), Appendix cleotide sequence may be made at the 2, Tables 1 and 3, shall be listed in a option of the applicant. given sequence as ‘‘n’’ or ‘‘Xaa,’’ re- (d) Representation of amino acids. (1) spectively, with further information, The amino acids in a protein or peptide as appropriate, given in the Feature sequence shall be listed using the section, preferably by including one or three-letter abbreviation with the first more feature keys listed in WIPO letter as an upper case character, as in Standard ST.25 (1998), Appendix 2, Ta- WIPO Standard ST.25 (1998), Appendix bles 5 and 6. 2, Table 3. (c) Format representation of nucleo- (2) A protein or peptide sequence tides. (1) A nucleotide sequence shall be shall be listed with a maximum of 16 listed using the lower-case letter for amino acids per line, with a space pro- representing the one-letter code for the vided between each amino acid. nucleotide bases set forth in WIPO (3) An amino acid sequence shall be Standard ST.25 (1998), Appendix 2, presented in the amino to carboxy di- Table 1. rection, from left to right, and the

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amino and carboxy groups shall not be pages of the ‘‘Sequence Listing’’ pref- presented in the sequence. erably should be numbered independ- (4) The enumeration of amino acids ently of the numbering of the remain- may start at the first amino acid of the der of the application. Each page of the first mature protein, with the number ‘‘Sequence Listing’’ shall contain no 1. When presented, the amino acids pre- more than 66 lines and each line shall ceding the mature protein, e.g., pre-se- contain no more than 72 characters. quences, pro-sequences, pre-pro-se- The sheet or sheets presenting a sequences and signal sequences, shall quence listing may not include mate- have negative numbers, counting back- rial other than part of the sequence wards starting with the amino acid listing. A fixed-width font should be next to number 1. Otherwise, the enu- used exclusively throughout the ‘‘Se- meration of amino acids shall start at quence Listing.’’ the first amino acid at the amino ter- (2) If the ‘‘Sequence Listing’’ re- minal as number 1. It shall be marked quired by § 1.821(c) is submitted on below the sequence every 5 amino compact disc: The ‘‘Sequence Listing’’ acids. The enumeration method for must be submitted on a compact disc amino acid sequences that is set forth in compliance with § 1.52(e). The com- in this section remains applicable for pact disc may also contain table infor- amino acid sequences that are circular mation if the application contains in configuration, with the exception table information that may be sub- that the designation of the first amino acid of the sequence may be made at mitted on a compact disc the option of the applicant. (§ 1.52(e)(1)(iii)). The specification must (5) An amino acid sequence that con- contain an incorporation-by-reference tains internal terminator symbols of the Sequence Listing as required by (e.g., ‘‘Ter’’, ‘‘*’’, or ‘‘.’’, etc.) may not § 1.52(e)(5). The presentation of the be represented as a single amino acid ‘‘Sequence Listing’’ and other mate- sequence, but shall be presented as sep- rials on compact disc under § 1.821(c) arate amino acid sequences. does not substitute for the Computer (e) A sequence with a gap or gaps Readable Form that must be submitted shall be presented as a plurality of sep- on disk, compact disc, or tape in ac- arate sequences, with separate se- cordance with § 1.824. quence identifiers, with the number of (b) The ‘‘Sequence Listing’’ shall, ex- separate sequences being equal in num- cept as otherwise indicated, include the ber to the number of continuous actual nucleotide and/or amino acid se- strings of sequence data. A sequence quence, the numeric identifiers and that is made up of one or more non- their accompanying information as contiguous segments of a larger se- shown in the following table. The nu- quence or segments from different se- meric identifier shall be used only in quences shall be presented as a sepa- the ‘‘Sequence Listing.’’ The order and rate sequence. presentation of the items of informa- [63 FR 29635, June 1, 1998, as amended at 69 tion in the ‘‘Sequence Listing’’ shall FR 18803, Apr. 9, 2004; 70 FR 10489, Mar. 4, conform to the arrangement given 2005] below. Each item of information shall begin on a new line and shall begin § 1.823 Requirements for nucleotide with the numeric identifier enclosed in and/or amino acid sequences as angle brackets as shown. The submis- part of the application. sion of those items of information des- (a)(1) If the ‘‘Sequence Listing’’ re- ignated with an ‘‘M’’ is mandatory. quired by § 1.821(c) is submitted on The submission of those items of infor- paper: The ‘‘Sequence Listing,’’ setting mation designated with an ‘‘O’’ is op- forth the nucleotide and/or amino acid tional. Numeric identifiers sequence and associated information in <110>through <170>shall only be set accordance with paragraph (b) of this forth at the beginning of the ‘‘Se- section, must begin on a new page and quence Listing.’’ The following table il- must be titled ‘‘Sequence Listing.’’ The lustrates the numeric identifiers.

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Numeric identifier Definition Comments and format Mandatory (M) or optional (O).

<110> ...... Applicant ...... Preferably max. of 10 names; one name M. per line; preferable format: Surname, Other Names and/or Initials. <120> ...... Title of Invention ...... M. <130> ...... File Reference ...... Personal file reference ...... M when filed prior to assignment of appl. number. <140> ...... Current Application Specify as: US 07/999,999 or PCT/ M, if available. Number. US96/99999. <141> ...... Current Filing Date Specify as: yyyy-mm-dd ...... M, if available. <150> ...... Prior Application Specify as: US 07/999,999 or PCT/ M, if applicable include priority docu- Number. US96/99999. ments under 35 USC 119 and 120. <151> ...... Prior Application Fil- Specify as: yyyy-mm-dd ...... M, if applicable. ing Date. <160> ...... Number of SEQ ID Count includes total number of SEQ ID M. NOs. NOs. <170> ...... Software ...... Name of software used to create the Se- O. quence Listing. <210> ...... SEQ ID NO:#:...... Response shall be an integer rep- M. resenting the SEQ ID NO shown. <211> ...... Length ...... Respond with an integer expressing the M. number of bases or amino acid residues. <212> ...... Type ...... Whether presented sequence molecule M. is DNA, RNA, or PRT (protein). If a nucleotide sequence contains both DNA and RNA fragments, the type shall be ‘‘DNA.’’ In addition, the combined DNA/RNA molecule shall be further described in the <220>to <223>feature section. <213> ...... Organism ...... Scientific name, i.e., Genus/ species, M Unknown or Artificial Sequence. In addition, the ‘‘Unknown’’ or ‘‘Artificial Se- quence’’ organisms shall be further described in the <220>to <223>feature section. <220> ...... Feature ...... Leave blank after <220>. <221– M, under the following conditions: if ‘‘n,’’ 223>provide for a description of points ‘‘Xaa,’’ or a modified or unusual L- of biological significance in the se- amino acid or modified base was used quence.. in a sequence; if ORGANISM is ‘‘Arti- ficial Sequence’’ or ‘‘Unknown’’; if molecule is combined DNA/RNA’’ <221> ...... Name/Key ...... Provide appropriate identifier for feature, M, under the following conditions: if ‘‘n,’’ preferably from WIPO Standard ST.25 ‘‘Xaa,’’ or a modified or unusual L- (1998), Appendix 2, Tables 5 and 6. amino acid or modified base was used in a sequence. <222> ...... Location ...... Specify location within sequence; where M, under the following conditions: if ‘‘n,’’ appropriate state number of first and ‘‘Xaa,’’ or a modified or unusual L- last bases/amino acids in feature. amino acid or modified base was used in a sequence. <223> ...... Other Information ... Other relevant information; four lines M, under the following conditions: if ‘‘n,’’ maximum. ‘‘Xaa,’’ or a modified or unusual L- amino acid or modified base was used in a sequence; if ORGANISM is ‘‘Arti- ficial Sequence’’ or ‘‘Unknown’’; if molecule is combined DNA/RNA. <300> ...... Publication Informa- Leave blank after <300> ...... O. tion. <301> ...... Authors ...... Preferably max of ten named authors of O. publication; specify one name per line; preferable format: Surname, Other Names and/or Initials. <302> ...... Title ...... O. <303> ...... Journal ...... O. <304> ...... Volume ...... O. <305> ...... Issue ...... O. <306> ...... Pages ...... O. <307> ...... Date ...... Journal date on which data published; O. specify as yyyy-mm-dd, MMM-yyyy or Season-yyyy. <308> ...... Database Accession Accession number assigned by data- O. Number. base including database name. <309> ...... Database Entry Date of entry in database; specify as O. Date. yyyy-mm-dd or MMM-yyyy.

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Numeric identifier Definition Comments and format Mandatory (M) or optional (O).

<310> ...... Patent Document Document number; for patent-type cita- O. Number. tions only. Specify as, for example, US 07/999,999. <311> ...... Patent Filing Date ... Document filing date, for patent-type ci- O. tations only; specify as yyyy-mm-dd. <312> ...... Publication Date ..... Document publication date, for patent- O. type citations only; specify as yyyy- mm-dd. <313> ...... Relevant Residues FROM (position) TO (position) ...... O. <400> ...... Sequence ...... SEQ ID NO should follow the numeric M. identifier and should appear on the line preceding the actual sequence.

[63 FR 29636, June 1, 1998, as amended at 65 FR 54681, Sept. 8, 2000; 68 FR 38630, June 30, 2003]

§ 1.824 Form and format for nucleotide (b) Computer readable form submis- and/or amino acid sequence submissions must meet these format require- sions in computer readable form. ments: (a) The computer readable form re- (1) Computer Compatibility: IBM PC/ quired by § 1.821(e) shall meet the fol- XT/AT or Apple Macintosh; lowing requirements: (2) Operating System Compatibility: (1) The computer readable form shall MS-DOS, MS-Windows, Unix or Mac- contain a single ‘‘Sequence Listing’’ as intosh; either a diskette, series of diskettes, or (3) Line Terminator: ASCII Carriage other permissible media outlined in Return plus ASCII Line Feed; and paragraph (c) of this section. (4) Pagination: Continuous file (no (2) The ‘‘Sequence Listing’’ in para- ‘‘hard page break’’ codes permitted). graph (a)(l) of this section shall be sub- (c) Computer readable form files submitted in American Standard Code for mitted may be in any of the following Information Interchange (ASCII) text. media: No other formats shall be allowed. (1) Diskette: 3.50 inch, 1.44 Mb stor- (3) The computer readable form may age; 3.50 inch, 720 Kb storage; 5.25 inch, be created by any means, such as word 1.2 Mb storage; 5.25 inch, 360 Kb stor- processors, nucleotide/amino acid se- age. quence editors’ or other custom com- (2) Magnetic tape: 0.5 inch, up to puter programs; however, it shall con- 24000 feet; Density: 1600 or 6250 bits per form to all requirements detailed in inch, 9 track; Format: Unix tar com- this section. mand; specify blocking factor (not (4) File compression is acceptable ‘‘block size’’); Line Terminator: ASCII when using diskette media, so long as Carriage Return plus ASCII Line Feed. the compressed file is in a self-extract- (3) 8mm Data Cartridge: Format: ing format that will decompress on one Unix tar command; specify blocking of the systems described in paragraph factor (not ‘‘block size’’); Line Termi- (b) of this section. nator: ASCII Carriage Return plus (5) Page numbering must not appear ASCII Line Feed. within the computer readable form (4) Compact disc: Format: ISO 9660 or version of the ‘‘Sequence Listing’’ file. High Sierra Format. (6) All computer readable forms must (5) Magneto Optical Disk: Size/Stor- have a label permanently affixed there- age Specifications: 5.25 inch, 640 Mb. to on which has been hand-printed or (d) Computer readable forms that are typed: the name of the applicant, the submitted to the Office will not be re- title of the invention, the date on turned to the applicant. which the data were recorded on the [65 FR 54681, Sept. 8, 2000] computer readable form, the operating system used, a reference number, and § 1.825 Amendments to or replacement an application number and filing date, of sequence listing and computer if known. If multiple diskettes are sub- readable copy thereof. mitted, the diskette labels must indi- (a) Any amendment to a paper copy cate their order (e.g., ‘‘1 of X’’). of the ‘‘Sequence Listing’’ (§ 1.821(c))

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must be made by the submission of accompanied by a statement that the substitute sheets and include a state- copy in computer readable form is the ment that the substitute sheets include same as the substitute copy of the no new matter. Any amendment to a ‘‘Sequence Listing.’’ compact disc copy of the ‘‘Sequence (c) Any appropriate amendments to Listing’’ (§ 1.821(c)) must be made by the ‘‘Sequence Listing’’ in a patent; the submission of a replacement com- e.g., by reason of reissue or certificate pact disc (2 copies) in compliance with of correction, must comply with the re- § 1.52(e). Amendments must also be ac- quirements of paragraphs (a) and (b) of companied by a statement that indi- this section. cates support for the amendment in the (d) If, upon receipt, the computer application, as filed, and a statement readable form is found to be damaged that the replacement compact disc in- or unreadable, applicant must provide, cludes no new matter. within such time as set by the Direc- (b) Any amendment to the paper or tor, a substitute copy of the data in compact disc copy of the ‘‘Sequence computer readable form accompanied Listing,’’ in accordance with paragraph by a statement that the substitute (a) of this section, must be accompanied by a substitute copy of the com- data is identical to that originally puter readable form (§ 1.821(e)) includ- filed. ing all previously submitted data with [63 FR 29638, June 1, 1998, as amended at 65 the amendment incorporated therein, FR 54681, Sept. 8, 2000]

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APPENDIX A TO SUBPART G OF PART 1—SAMPLE SEQUENCE LISTING

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[63 FR 29639, June 1, 1998]

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Subpart H—Inter Partes Reexam- § 1.904 Notice of inter partes reexamination of Patents That Issued ination in Official Gazette. From an Original Application A notice of the filing of an inter Filed in the United States on or partes reexamination request will be After November 29, 1999 published in the Official Gazette. The notice published in the Official Gazette under § 1.11(c) will be considered to be SOURCE: 65 FR 76777, Dec. 7, 2000, unless otherwise noted. constructive notice of the inter partes reexamination proceeding and inter PRIOR ART CITATIONS partes reexamination will proceed.

§ 1.902 Processing of prior art cita- § 1.905 Submission of papers by the tions during an inter partes reex- public in inter partes reexamina- amination proceeding. tion. Citations by the patent owner in ac- Unless specifically provided for, no cordance with § 1.933 and by an inter submissions on behalf of any third par- partes reexamination third party re- ties other than third party requesters quester under § 1.915 or § 1.948 will be as defined in 35 U.S.C. 100(e) will be entered in the inter partes reexamina- considered unless such submissions are tion file. The entry in the patent file of in accordance with § 1.915 or entered in other citations submitted after the the patent file prior to the date of the date of an order for reexamination pur- order for reexamination pursuant to suant to § 1.931 by persons other than § 1.931. Submissions by third parties, the patent owner, or the third party re- other than third party requesters, filed quester under either § 1.913 or § 1.948, after the date of the order for reexam- will be delayed until the inter partes re- ination pursuant to § 1.931, must meet examination proceeding has been con- the requirements of § 1.501 and will be cluded by the issuance and publication treated in accordance with § 1.902. Sub- of a reexamination certificate. See missions which do not meet the re- § 1.502 for processing of prior art cita- quirements of § 1.501 will be returned. tions in patent and reexamination files during an ex parte reexamination pro- § 1.906 Scope of reexamination in inter ceeding filed under § 1.510. partes reexamination proceeding. [72 FR 18906, Apr. 16, 2007] (a) Claims in an inter partes reexamination proceeding will be examined on REQUIREMENTS FOR Inter Partes the basis of patents or printed publica- REEXAMINATION PROCEEDINGS tions and, with respect to subject matter added or deleted in the reexamina- § 1.903 Service of papers on parties in tion proceeding, on the basis of the re- inter partes reexamination. quirements of 35 U.S.C. 112. The patent owner and the third party (b) Claims in an inter partes reexam- requester will be sent copies of Office ination proceeding will not be per- actions issued during the inter partes mitted to enlarge the scope of the reexamination proceeding. After filing claims of the patent. of a request for inter partes reexamina- (c) Issues other than those indicated tion by a third party requester, any in paragraphs (a) and (b) of this section document filed by either the patent will not be resolved in an inter partes owner or the third party requester reexamination proceeding. If such must be served on every other party in issues are raised by the patent owner the reexamination proceeding in the or the third party requester during a manner provided in § 1.248. Any docu- reexamination proceeding, the exist- ment must reflect service or the docu- ence of such issues will be noted by the ment may be refused consideration by examiner in the next Office action, in the Office. The failure of the patent which case the patent owner may de- owner or the third party requester to sire to consider the advisability of fil- serve documents may result in their ing a reissue application to have such being refused consideration. issues considered and resolved.

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§ 1.907 Inter partes reexamination pro- filing date, and any such request will hibited. not be granted. (a) Once an order to reexamine has [76 FR 59057, Sept. 23, 2011] been issued under § 1.931, neither the third party requester, nor its privies, § 1.915 Content of request for inter may file a subsequent request for inter partes reexamination. partes reexamination of the patent (a) The request must be accompanied until an inter partes reexamination cer- by the fee for requesting inter partes re- tificate is issued under § 1.997, unless examination set forth in § 1.20(c)(2). authorized by the Director. (b) A request for inter partes reexam- (b) Once a final decision has been en- ination must include the following tered against a party in a civil action parts: arising in whole or in part under 28 (1) An identification of the patent by U.S.C. 1338 that the party has not sus- patent number and every claim for tained its burden of proving invalidity which reexamination is requested. of any patent claim-in-suit, then nei- (2) A citation of the patents and ther that party nor its privies may printed publications which are pre- thereafter request inter partes reexam- sented to provide a showing that there ination of any such patent claim on the is a reasonable likelihood that the re- basis of issues which that party, or its quester will prevail with respect to at privies, raised or could have raised in least one of the claims challenged in such civil action, and an inter partes re- the request. examination requested by that party, (3) A statement pointing out, based or its privies, on the basis of such on the cited patents and printed publi- issues may not thereafter be main- cations, each showing of a reasonable tained by the Office. likelihood that the requester will pre- (c) If a final decision in an inter partes vail with respect to at least one of the claims challenged in the request, and a reexamination proceeding instituted detailed explanation of the pertinency by a third party requester is favorable and manner of applying the patents to patentability of any original, pro- and printed publications to every claim posed amended, or new claims of the for which reexamination is requested. patent, then neither that party nor its (4) A copy of every patent or printed privies may thereafter request inter publication relied upon or referred to partes reexamination of any such pat- in paragraphs (b)(1) through (3) of this ent claims on the basis of issues which section, accompanied by an English that party, or its privies, raised or language translation of all the nec- could have raised in such inter partes essary and pertinent parts of any non- reexamination proceeding. English language document. (5) A copy of the entire patent includ- § 1.913 Persons eligible to file, and time for filing, a request for inter ing the front face, drawings, and speci- partes reexamination. fication/claims (in double column format) for which reexamination is re- (a) Except as provided for in § 1.907 quested, and a copy of any disclaimer, and in paragraph (b) of this section, certificate of correction, or reexamina- any person other than the patent tion certificate issued in the patent. owner or its privies may, at any time All copies must have each page plainly during the period of enforceability of a written on only one side of a sheet of patent which issued from an original paper. application filed in the United States (6) A certification by the third party on or after November 29, 1999, file a re- requester that a copy of the request quest for inter partes reexamination by has been served in its entirety on the the Office of any claim of the patent on patent owner at the address provided the basis of prior art patents or printed for in § 1.33(c). The name and address of publications cited under § 1.501. the party served must be indicated. If (b) Any request for an inter partes re- service was not possible, a duplicate examination submitted on or after Sep- copy of the request must be supplied to tember 16, 2012, will not be accorded a the Office.

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(7) A certification by the third party reexamination under § 1.915, the exam- requester that the estoppel provisions iner will consider the request and de- of § 1.907 do not prohibit the inter partes termine whether or not the request and reexamination. the prior art establish a reasonable (8) A statement identifying the real likelihood that the requester will pre- party in interest to the extent nec- vail with respect to at least one of the essary for a subsequent person filing an claims challenged in the request. The inter partes reexamination request to examiner’s determination will be based determine whether that person is a on the claims in effect at the time of privy. the determination, will become a part (c) If an inter partes request is filed by of the official file of the patent, and an attorney or agent identifying an- will be mailed to the patent owner at other party on whose behalf the re- the address as provided for in § 1.33(c) quest is being filed, the attorney or and to the third party requester. If the agent must have a power of attorney examiner determines that the request from that party or be acting in a rep- has not established a reasonable likeli- resentative capacity pursuant to § 1.34. hood that the requester will prevail (d) If the inter partes request does not with respect to at least one of the chal- include the fee for requesting inter lenged claims, the examiner shall partes reexamination required by para- refuse the request and shall not order graph (a) of this section and meet all inter partes reexamination. the requirements of paragraph (b) of [76 FR 59058, Sept. 23, 2011] this section, then the person identified as requesting inter partes reexamina- § 1.925 Partial refund if request for tion will be so notified and will gen- inter partes reexamination is not erally be given an opportunity to com- ordered. plete the request within a specified Where inter partes reexamination is time. Failure to comply with the no- not ordered, a refund of a portion of tice will result in the inter partes reex- the fee for requesting inter partes reexamination request not being granted a amination will be made to the re- filing date, and will result in place- quester in accordance with § 1.26(c). ment of the request in the patent file as a citation if it complies with the re- § 1.927 Petition to review refusal to quirements of § 1.501. order inter partes reexamination. [65 FR 76777, Dec. 7, 2000, as amended at 71 The third party requester may seek FR 9262, Feb. 23, 2006; 71 FR 44223, Aug. 4, review by a petition to the Director 2006; 72 FR 18906, Apr. 16, 2007; 76 FR 59058, under § 1.181 within one month of the Sept. 23, 2011] mailing date of the examiner’s determination refusing to order inter partes § 1.919 Filing date of request for inter reexamination. Any such petition must partes reexamination. comply with § 1.181(b). If no petition is (a) The filing date of a request for timely filed or if the decision on peti- inter partes reexamination is the date tion affirms that a reasonable likeli- on which the request satisfies all the hood that the requester will prevail requirements for the request set forth with respect to at least one of the in § 1.915. claims challenged in the request has (b) If the request is not granted a fil- not been established, the determina- ing date, the request will be placed in tion shall be final and nonappealable. the patent file as a citation of prior art [76 FR 59058, Sept. 23, 2011] if it complies with the requirements of § 1.501. Inter Partes REEXAMINATION OF PATENTS [65 FR 76777, Dec. 7, 2000, as amended at 71 FR 9262, Feb. 23, 2006] § 1.931 Order for inter partes reexamination. § 1.923 Examiner’s determination on (a) If it is found that there is a rea- the request for inter partes reexam- sonable likelihood that the requester ination. will prevail with respect to at least one Within three months following the of the claims challenged in the request, filing date of a request for inter partes the determination will include an order

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for inter partes reexamination of the § 1.937 Conduct of inter partes reexam- patent for resolution of the question of ination. whether the requester will prevail. (a) All inter partes reexamination pro- (b) If the order for inter partes reex- ceedings, including any appeals to the amination resulted from a petition pur- Patent Trial and Appeal Board, will be suant to § 1.927, the inter partes reexam- conducted with special dispatch within ination will ordinarily be conducted by the Office, unless the Director makes a an examiner other than the examiner determination that there is good cause responsible for the initial determina- for suspending the reexamination pro- tion under § 1.923. ceeding. [65 FR 76777, Dec. 7, 2000, as amended at 76 (b) The inter partes reexamination FR 59058, Sept. 23, 2011] proceeding will be conducted in accordance with §§ 1.104 through 1.116, the sec- INFORMATION DISCLOSURE IN Inter Partes tions governing the application exam- REEXAMINATION ination process, and will result in the issuance of an inter partes reexamina- § 1.933 Patent owner duty of disclosure in inter partes reexamination tion certificate under § 1.997, except as proceedings. otherwise provided. (a) Each individual associated with (c) All communications between the the patent owner in an inter partes re- Office and the parties to the inter partes examination proceeding has a duty of reexamination which are directed to candor and good faith in dealing with the merits of the proceeding must be in the Office, which includes a duty to writing and filed with the Office for disclose to the Office all information entry into the record of the proceeding. known to that individual to be mate- (d) A petition in an inter partes reex- rial to patentability in a reexamina- amination proceeding must be accom- tion proceeding as set forth in § 1.555(a) panied by the fee set forth in and (b). The duty to disclose all infor- § 1.20(c)(6), except for petitions under mation known to be material to pat- § 1.956 to extend the period for response entability in an inter partes reexamina- by a patent owner, petitions under tion proceeding is deemed to be satis- § 1.958 to accept a delayed response by a fied by filing a paper in compliance patent owner, petitions under § 1.78 to with the requirements set forth in accept an unintentionally delayed ben- § 1.555(a) and (b). efit claim, and petitions under § 1.530(l) (b) The responsibility for compliance for correction of inventorship in a reex- with this section rests upon the indi- amination proceeding. viduals designated in paragraph (a) of [65 FR 76777, as amended at 77 FR 46628, Aug. this section, and no evaluation will be 6, 2012; 77 FR 48853, Aug. 14, 2012] made by the Office in the reexamination proceeding as to compliance with § 1.939 Unauthorized papers in inter this section. If questions of compliance partes reexamination. with this section are raised by the pat- (a) If an unauthorized paper is filed ent owner or the third party requester by any party at any time during the during a reexamination proceeding, inter partes reexamination proceeding they will be noted as unresolved ques- it will not be considered and may be re- tions in accordance with § 1.906(c). turned. OFFICE ACTIONS AND RESPONSES (BE- (b) Unless otherwise authorized, no FORE THE EXAMINER) IN Inter Partes paper shall be filed prior to the initial REEXAMINATION Office action on the merits of the inter partes reexamination. § 1.935 Initial Office action usually accompanies order for inter partes re- § 1.941 Amendments by patent owner examination. in inter partes reexamination. The order for inter partes reexamina- Amendments by patent owner in inter tion will usually be accompanied by partes reexamination proceedings are the initial Office action on the merits made by filing a paper in compliance of the reexamination. with §§ 1.530(d)–(k) and 1.943.

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§ 1.943 Requirements of responses, ments within a period of 30 days from written comments, and briefs in the date of service of the patent own- inter partes reexamination. er’s response. These comments shall be (a) The form of responses, written limited to issues raised by the Office comments, briefs, appendices, and action or the patent owner’s response. other papers must be in accordance The time for submitting comments by with the requirements of § 1.52. the third party requester may not be (b) Responses by the patent owner extended. For the purpose of filing the and written comments by the third written comments by the third party party requester shall not exceed 50 requester, the comments will be con- pages in length, excluding amend- sidered as having been received in the ments, appendices of claims, and ref- Office as of the date of deposit specified erence materials such as prior art ref- in the certificate under § 1.8. erences. (c) Appellant’s briefs filed by the pat- § 1.948 Limitations on submission of ent owner and the third party re- prior art by third party requester quester shall not exceed thirty pages or following the order for inter partes reexamination. 14,000 words in length, excluding appendices of claims and reference materials (a) After the inter partes reexamina- such as prior art references. All other tion order, the third party requester briefs filed by any party shall not ex- may only cite additional prior art as ceed fifteen pages in length or 7,000 defined under § 1.501 if it is filed as part words. If the page limit for any brief is of a comments submission under § 1.947 exceeded, a certificate is required stat- or § 1.951(b) and is limited to prior art: ing the number of words contained in (1) which is necessary to rebut a find- the brief. ing of fact by the examiner; (2) which is necessary to rebut a re- § 1.945 Response to Office action by sponse of the patent owner; or patent owner in inter partes reex- (3) which for the first time became amination. known or available to the third party (a) The patent owner will be given at requester after the filing of the request least thirty days to file a response to for inter partes reexamination pro- any Office action on the merits of the ceeding. Prior art submitted under inter partes reexamination. paragraph (a)(3) of this section must be (b) Any supplemental response to the accompanied by a statement as to Office action will be entered only when the prior art first became known where the supplemental response is ac- or available to the third party re- companied by a showing of sufficient quester and must include a discussion cause why the supplemental response of the pertinency of each reference to should be entered. The showing of suffi- the patentability of at least one claim. cient cause must include: (b) [Reserved] (1) An explanation of how the requirements of § 1.111(a)(2)(i) are satis- § 1.949 Examiner’s Office action clos- fied; ing prosecution in inter partes reex- (2) An explanation of why the supple- amination. mental response was not presented to- Upon consideration of the issues a gether with the original response to second or subsequent time, or upon a the Office action; and determination of patentability of all (3) A compelling reason to enter the claims, the examiner shall issue an Of- supplemental response. fice action treating all claims present [72 FR 18906, Apr. 16, 2007] in the inter partes reexamination, which may be an action closing prosecution. § 1.947 Comments by third party re- The Office action shall set forth all requester to patent owner’s response jections and determinations not to in inter partes reexamination. make a proposed rejection, and the Each time the patent owner files a grounds therefor. An Office action will response to an Office action on the not usually close prosecution if it in- merits pursuant to § 1.945, a third party cludes a new ground of rejection which requester may once file written com- was not previously addressed by the

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patent owner, unless the new ground of Appeal Notice limited to the identi- was necessitated by an amendment. fied issues shall be issued. (c) The Right of Appeal Notice shall § 1.951 Options after Office action clos- be a final action, which comprises a ing prosecution in inter partes reex- final rejection setting forth each amination. ground of rejection and/or final deci- (a) After an Office action closing sion favorable to patentability includ- prosecution in an inter partes reexam- ing each determination not to make a ination, the patent owner may once file proposed rejection, an identification of comments limited to the issues raised the status of each claim, and the rea- in the Office action closing prosecu- sons for decisions favorable to patent- tion. The comments can include a pro- ability and/or the grounds of rejection posed amendment to the claims, which for each claim. No amendment can be amendment will be subject to the cri- made in response to the Right of Ap- teria of § 1.116 as to whether or not it peal Notice. The Right of Appeal No- shall be admitted. The comments must tice shall set a one-month time period be filed within the time set for re- for either party to appeal. If no notice sponse in the Office action closing of appeal is filed, prosecution in the prosecution. inter partes reexamination proceeding (b) When the patent owner does file will be terminated, and the Director comments, a third party requester may will proceed to issue and publish a cer- once file comments responsive to the tificate under § 1.997 in accordance with patent owner’s comments within 30 the Right of Appeal Notice. days from the date of service of patent [65 FR 76777, Dec. 7, 2000, as amended at 72 owner’s comments on the third party FR 18906, Apr. 16, 2007] requester. INTERVIEWS PROHIBITED IN Inter Partes § 1.953 Examiner’s Right of Appeal No- REEXAMINATION tice in inter partes reexamination. (a) Upon considering the comments § 1.955 Interviews prohibited in inter of the patent owner and the third party partes reexamination proceedings. requester subsequent to the Office ac- There will be no interviews in an tion closing prosecution in an inter inter partes reexamination proceeding partes reexamination, or upon expira- which discuss the merits of the pro- tion of the time for submitting such ceeding. comments, the examiner shall issue a Right of Appeal Notice, unless the ex- EXTENSIONS OF TIME, TERMINATING OF aminer reopens prosecution and issues REEXAMINATION PROSECUTION, AND another Office action on the merits. PETITIONS TO REVIVE IN Inter Partes (b) Expedited Right of Appeal Notice: REEXAMINATION At any time after the patent owner’s § 1.956 Patent owner extensions of response to the initial Office action on time in inter partes reexamination. the merits in an inter partes reexamination, the patent owner and all third The time for taking any action by a party requesters may stipulate that patent owner in an inter partes reexam- the issues are appropriate for a final ination proceeding will be extended action, which would include a final re- only for sufficient cause and for a rea- jection and/or a final determination fa- sonable time specified. Any request for vorable to patentability, and may re- such extension must be filed on or be- quest the issuance of a Right of Appeal fore the day on which action by the Notice. The request must have the con- patent owner is due, but in no case will currence of the patent owner and all the mere filing of a request effect any third party requesters present in the extension. Any request for such exten- proceeding and must identify all of the sion must be accompanied by the peti- appealable issues and the positions of tion fee set forth in § 1.17(g). See the patent owner and all third party § 1.304(a) for extensions of time for fil- requesters on those issues. If the exam- ing a notice of appeal to the U.S. Court iner determines that no other issues of Appeals for the Federal Circuit. are present or should be raised, a Right [69 FR 56546, Sept. 21, 2004]

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§ 1.957 Failure to file a timely, appro- APPEAL TO THE PATENT TRIAL AND AP- priate or complete response or com- PEAL BOARD IN Inter Partes REEXAM- ment in inter partes reexamination. INATION (a) If the third party requester files an untimely or inappropriate com- § 1.959 Appeal in inter partes reexamination. ment, notice of appeal or brief in an inter partes reexamination, the paper Appeals to the Patent Trial and Ap- will be refused consideration. peal Board under 35 U.S.C. 134(c) are (b) If no claims are found patentable, conducted according to part 41 of this and the patent owner fails to file a title. timely and appropriate response in an [77 FR 46628, Aug. 6, 2012] inter partes reexamination proceeding, the prosecution in the reexamination §§ 1.961–1.977 [Reserved] proceeding will be a terminated prosecution and the Director will proceed § 1.979 Return of Jurisdiction from the to issue and publish a certificate con- Patent Trial and Appeal Board; ter- cluding the reexamination proceeding mination of appeal proceedings. under § 1.997 in accordance with the (a) Jurisdiction over an inter partes last action of the Office. reexamination proceeding passes to the (c) If claims are found patentable and examiner after a decision by the Pat- the patent owner fails to file a timely ent Trial and Appeal Board upon trans- and appropriate response to any Office mittal of the file to the examiner, sub- action in an inter partes reexamination ject to each appellant’s right of appeal proceeding, further prosecution will be or other review, for such further action limited to the claims found patentable as the condition of the inter partes reex- at the time of the failure to respond, amination proceeding may require, to and to any claims added thereafter carry into effect the decision of the which do not expand the scope of the Patent Trial and Appeal Board. claims which were found patentable at (b) Upon judgment in the appeal be- that time. fore the Patent Trial and Appeal (d) When action by the patent owner Board, if no further appeal has been is a bona fide attempt to respond and to taken (§ 1.983), the prosecution in the advance the prosecution and is sub- inter partes reexamination proceeding stantially a complete response to the will be terminated and the Director Office action, but consideration of will issue and publish a certificate some matter or compliance with some under § 1.997 concluding the proceeding. requirement has been inadvertently If an appeal to the U.S. Court of Ap- omitted, an opportunity to explain and peals for the Federal Circuit has been supply the omission may be given. filed, that appeal is considered terminated when the mandate is issued by [65 FR 76777, Dec. 7, 2000, as amended at 72 the Court. FR 18906, Apr. 16, 2007] [77 FR 46628, Aug. 6, 2012] § 1.958 Petition to revive inter partes reexamination prosecution termi- § 1.981 Reopening after a final deci- nated for lack of patent owner re- sion of the Patent Trial and Appeal sponse. Board. If a response by the patent owner is When a decision by the Patent Trial not timely filed in the Office, a peti- and Appeal Board on appeal has be- tion may be filed pursuant to § 1.137 to come final for judicial review, prosecu- revive a reexamination prosecution tion of the inter partes reexamination terminated under § 1.957(b) or limited proceeding will not be reopened or re- under § 1.957(c) if the delay in response considered by the primary examiner was unintentional. except under the provisions of § 41.77 of [78 FR 62408, Oct. 21, 2013] this title without the written authority of the Director, and then only for

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the consideration of matters not al- lant’s notice of appeal under paragraph ready adjudicated, sufficient cause (b) of this section, or notice of cross ap- being shown. peal under paragraphs (c) or (d) of this section, take the following steps: [77 FR 46628, Aug. 6, 2012] (1) In the U.S. Patent and Trademark APPEAL TO THE UNITED STATES COURT Office, timely file a written notice di- OF APPEALS FOR THE FEDERAL CIRCUIT rected to the Director electing to par- IN Inter Partes REEXAMINATION ticipate in the appellant’s appeal to the U.S. Court of Appeals for the Federal § 1.983 Appeal to the United States Circuit by mail to, or hand service on, Court of Appeals for the Federal the General Counsel as provided in Circuit in inter partes reexamina- § 104.2; tion. (2) In the U.S. Court of Appeals for (a) The patent owner or third party the Federal Circuit, file a copy of the requester in an inter partes reexamina- notice electing to participate in action proceeding who is a party to an cordance with the rules of the U.S. appeal to the Patent Trial and Appeal Court of Appeals for the Federal Cir- Board and who is dissatisfied with the cuit; and decision of the Patent Trial and Appeal (3) Serve a copy of the notice electing Board may, subject to § 41.81, appeal to to participate on every other party in the U.S. Court of Appeals for the Fed- the reexamination proceeding in the eral Circuit and may be a party to any manner provided in § 1.248. appeal thereto taken from a reexamination decision of the Patent Trial (f) Notwithstanding any provision of and Appeal Board. the rules, in any reexamination pro- (b) The appellant must take the fol- ceeding commenced prior to November lowing steps in such an appeal: 2, 2002, the third party requester is pre- (1) In the U.S. Patent and Trademark cluded from appealing and cross ap- Office, timely file a written notice of pealing any decision of the Patent appeal directed to the Director in ac- Trial and Appeal Board to the U.S. cordance with §§ 1.302 and 1.304; Court of Appeals for the Federal Cir- (2) In the U.S. Court of Appeals for cuit, and the third party requester is the Federal Circuit, file a copy of the precluded from participating in any ap- notice of appeal and pay the fee, as pro- peal taken by the patent owner to the vided for in the rules of the U.S. Court U.S. Court of Appeals for the Federal of Appeals for the Federal Circuit; and Circuit. (3) Serve a copy of the notice of ap- [68 FR 71008, Dec. 22, 2003, as amended at 72 peal on every other party in the reex- FR 18907, Apr. 16, 2007; 77 FR 46628, Aug. 6, amination proceeding in the manner 2012] provided in § 1.248. (c) If the patent owner has filed a no- CONCURRENT PROCEEDINGS INVOLVING tice of appeal to the U.S. Court of Ap- SAME PATENT IN Inter Partes REEXAM- peals for the Federal Circuit, the third INATION party requester may cross appeal to the U.S. Court of Appeals for the Fed- § 1.985 Notification of prior or concur- eral Circuit if also dissatisfied with the rent proceedings in inter partes reexamination. decision of the Patent Trial and Appeal Board. (a) In any inter partes reexamination (d) If the third party requester has proceeding, the patent owner shall call filed a notice of appeal to the U.S. the attention of the Office to any prior Court of Appeals for the Federal Cir- or concurrent proceedings in which the cuit, the patent owner may cross ap- patent is or was involved, including but peal to the U.S. Court of Appeals for not limited to interference or trial be- the Federal Circuit if also dissatisfied fore the Patent Trial and Appeal with the decision of the Patent Trial Board, reissue, reexamination, or liti- and Appeal Board. gation and the results of such pro- (e) A party electing to participate in ceedings. an appellant’s appeal must, within (b) Notwithstanding any provision of fourteen days of service of the appel- the rules, any person at any time may

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file a paper in an inter partes reexam- on a patent, a decision may be made to ination proceeding notifying the Office merge the two proceedings or to sus- of a prior or concurrent proceeding in pend one of the two proceedings. Where which the same patent is or was in- merger of a reissue application and an volved, including but not limited to in- inter partes reexamination proceeding terference or trial before the Patent is ordered, the merged proceeding will Trial and Appeal Board, reissue, reex- be conducted in accordance with §§ 1.171 amination, or litigation and the results through 1.179, and the patent owner of such proceedings. Such paper must will be required to place and maintain be limited to merely providing notice the same claims in the reissue applica- of the other proceeding without discus- tion and the inter partes reexamination sion of issues of the current inter partes proceeding during the pendency of the reexamination proceeding. merged proceeding. In a merged proceeding the third party requester may [77 FR 46629, Aug. 6, 2012] participate to the extent provided § 1.987 Suspension of inter partes reex- under §§ 1.902 through 1.997 and 41.60 amination proceeding due to litiga- through 41.81, except that such partici- tion. pation shall be limited to issues within If a patent in the process of inter the scope of inter partes reexamination. partes reexamination is or becomes in- The examiner’s actions and any re- volved in litigation, the Director shall sponses by the patent owner or third determine whether or not to suspend party requester in a merged proceeding the inter partes reexamination pro- will apply to both the reissue applica- ceeding. tion and the inter partes reexamination proceeding and be physically entered § 1.989 Merger of concurrent reexam- into both files. Any inter partes reexamination proceedings. ination proceeding merged with a re- (a) If any reexamination is ordered issue application shall be concluded by while a prior inter partes reexamination the grant of the reissued patent. proceeding is pending for the same pat- [72 FR 18907, Apr. 16, 2007] ent and prosecution in the prior inter partes reexamination proceeding has § 1.993 Suspension of concurrent inter- not been terminated, a decision may be ference and inter partes reexamina- made to merge the two proceedings or tion proceeding. to suspend one of the two proceedings. If a patent in the process of inter Where merger is ordered, the merged partes reexamination is or becomes in- examination will normally result in volved in an interference or trial before the issuance and publication of a single the Patent Trial and Appeal Board, the reexamination certificate under § 1.997. Director may suspend the inter partes (b) An inter partes reexamination pro- reexamination, interference, or trial. ceeding filed under § 1.913 which is The Director will not consider a re- merged with an ex parte reexamination quest to suspend an interference or proceeding filed under § 1.510 will result trial unless a motion under § 41.121(a)(3) in the merged proceeding being gov- of this title to suspend the interference erned by §§ 1.902 through 1.997, except or trial has been presented to, and de- that the rights of any third party re- nied by, an administrative patent judge quester of the ex parte reexamination and the request is filed within ten (10) shall be governed by §§ 1.510 through days of a decision by an administrative 1.560. patent judge denying the motion for suspension or such other time as the [65 FR 76777, Dec. 7, 2000, as amended at 72 FR 18907, Apr. 16, 2007] administrative patent judge may set. [77 FR 46629, Aug. 6, 2012] § 1.991 Merger of concurrent reissue application and inter partes reex- § 1.995 Third party requester’s partici- amination proceeding. pation rights preserved in merged If a reissue application and an inter proceeding. partes reexamination proceeding on When a third party requester is in- which an order pursuant to § 1.931 has volved in one or more proceedings, in- been mailed are pending concurrently cluding an inter partes reexamination

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proceeding, the merger of such pro- Subpart I—International Design ceedings will be accomplished so as to Application preserve the third party requester’s right to participate to the extent specifically provided for in these regula- SOURCE: 80 FR 17964, Apr. 2, 2015, unless otherwise noted. tions. In merged proceedings involving different requesters, any paper filed by GENERAL INFORMATION one party in the merged proceeding shall be served on all other parties of § 1.1001 Definitions related to inter- the merged proceeding. national design applications. (a) Article as used in this subpart REEXAMINATION CERTIFICATE IN Inter means an article of the Hague Agree- Partes REEXAMINATION ment; (b) Regulations as used in this sub- § 1.997 Issuance and publication of inter partes reexamination certifi- part, when capitalized, means the cate concludes inter partes reexam- ‘‘Common Regulations Under the 1999 ination proceeding. Act and the 1960 Act of the Hague (a) To conclude an inter partes reex- Agreement’’; (c) as used in this subpart, when amination proceeding, the Director Rule capitalized, means one of the Regula- will issue and publish an inter partes re- tions; examination certificate in accordance (d) Administrative Instructions as used with 35 U.S.C. 316 setting forth the rein this subpart means the Administra- sults of the inter partes reexamination tive Instructions referred to in Rule 34; proceeding and the content of the pat- (e) 1960 Act as used in this subpart ent following the inter partes reexam- means the Act signed at the Hague on ination proceeding. November 28, 1960, of the Hague Agree- (b) A certificate will be issued and ment; published in each patent in which an (f) Other terms and expressions in inter partes reexamination proceeding subpart I not defined in this section are has been ordered under § 1.931. Any as defined in Article 1, Rule 1, and 35 statutory disclaimer filed by the pat- U.S.C. 381. ent owner will be made part of the certificate. § 1.1002 The United States Patent and (c) The certificate will be sent to the Trademark Office as an office of in- patent owner at the address as pro- direct filing. vided for in § 1.33(c). A copy of the cer- (a) The United States Patent and tificate will also be sent to the third Trademark Office, as an office of indi- party requester of the inter partes reex- rect filing, shall accept international amination proceeding. design applications where the appli- (d) If a certificate has been issued cant’s Contracting Party is the United and published which cancels all of the States. claims of the patent, no further Office (b) The major functions of the United proceedings will be conducted with States Patent and Trademark Office as that patent or any reissue applications an office of indirect filing include: or any reexamination requests relating (1) Receiving and according a receipt thereto. date to international design applica- (e) If the inter partes reexamination tions; proceeding is terminated by the grant (2) Collecting and, when required, of a reissued patent as provided in transmitting fees due for processing § 1.991, the reissued patent will con- international design applications; stitute the reexamination certificate (3) Determining compliance with ap- required by this section and 35 U.S.C. plicable requirements of part 5 of this 316. chapter; and (f) A notice of the issuance of each (4) Transmitting an international de- certificate under this section will be sign application to the International published in the Official Gazette. Bureau, unless prescriptions con- [65 FR 76777, Dec. 7, 2000, as amended at 72 cerning national security prevent the FR 18907, Apr. 16, 2007] application from being transmitted.

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§ 1.1003 The United States Patent and § 1.1005 Display of currently valid con- Trademark Office as a designated trol number under the Paperwork office. Reduction Act. (a) The United States Patent and (a) Pursuant to the Paperwork Re- Trademark Office will act as a des- duction Act of 1995 (44 U.S.C. 3501 et ignated office (‘‘United States Des- seq.), the collection of information in ignated Office’’) for international de- this subpart has been reviewed and ap- sign applications in which the United proved by the Office of Management States has been designated as a Con- and Budget under control number 0651– tracting Party in which protection is 0075. sought. (b) Notwithstanding any other provi- (b) The major functions of the United sion of law, no person is required to re- States Designated Office include: spond to nor shall a person be subject (1) Accepting for national examina- to a penalty for failure to comply with tion international design applications a collection of information subject to which satisfy the requirements of the the requirements of the Paperwork Re- Hague Agreement, the Regulations, duction Act unless that collection of and the regulations; information displays a currently valid (2) Performing an examination of the Office of Management and Budget con- international design application in ac- trol number. This section constitutes cordance with 35 U.S.C. chapter 16; and the display required by 44 U.S.C. 3512(a) (3) Communicating the results of ex- and 5 CFR 1320.5(b)(2)(i) for the collec- amination to the International Bureau. tion of information under Office of Management and Budget control num- § 1.1004 The International Bureau. ber 0651–0075 (see 5 CFR 1320.5(b)(2)(ii)(D)). (a) The International Bureau is the World Intellectual Property Organiza- WHO MAY FILE AN INTERNATIONAL tion located at Geneva, Switzerland. It DESIGN APPLICATION is the international intergovernmental organization which acts as the coordi- § 1.1011 Applicant for international de- nating body under the Hague Agree- sign application. ment and the Regulations. (a) Only persons who are nationals of (b) The major functions of the Inter- the United States or who have a domi- national Bureau include: cile, a habitual residence, or a real and (1) Receiving international design ap- effective industrial or commercial es- plications directly from applicants and tablishment in the territory of the indirectly from an office of indirect fil- United States may file international ing; design applications through the United (2) Collecting required fees and cred- States Patent and Trademark Office. iting designation fees to the accounts (b) Although the United States Pat- of the Contracting Parties concerned; ent and Trademark Office will accept (3) Reviewing international design international design applications filed applications for compliance with pre- by any person referred to in paragraph scribed formal requirements; (a) of this section, an international de- (4) Translating international design sign application designating the United applications into the required lan- States may be refused by the Office as guages for recordation and publication; a designated office if the applicant is (5) Registering international designs not a person qualified under 35 U.S.C. in the International Register where the chapter 11 to be an applicant. international design application complies with the applicable requirements; § 1.1012 Applicant’s Contracting Party. (6) Publishing international registra- In order to file an international de- tions in the International Designs Bul- sign application through the United letin; and States Patent and Trademark Office as (7) Sending copies of the publication an office of indirect filing, the United of the international registration to States must be applicant’s Contracting each designated office. Party (Articles 4 and 1(xiv)).

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THE INTERNATIONAL DESIGN ment or giving the instructions (Rule APPLICATION 7(3)(vii)); and (10) An indication of applicant’s Con- § 1.1021 Contents of the international tracting Party as required under Rule design application. 7(4)(a). (a) Mandatory contents. The inter- (b) Additional mandatory contents re- national design application shall be in quired by certain Contracting Parties. (1) English, French, or Spanish (Rule 6(1)) Where the international design appli- and shall contain or be accompanied cation contains the designation of a by: Contracting Party that requires, pur- (1) A request for international reg- suant to Article 5(2), any of the fol- istration under the Hague Agreement lowing elements, then the inter- (Article 5(1)(i)); national design application shall con- (2) The prescribed data concerning tain such required element(s): the applicant (Article 5(1)(ii) and Rule (i) Indications concerning the iden- 7(3)(i) and (ii)); tity of the creator of the industrial de- (3) The prescribed number of copies of sign that is the subject of that applica- a reproduction or, at the choice of the tion (Rule 11(1)); applicant, of several different repro- (ii) A brief description of the reproductions of the industrial design that duction or of the characteristic fea- is the subject of the international de- tures of the industrial design that is sign application, presented in the pre- the subject of that application (Rule scribed manner; however, where the in- 11(2)); dustrial design is two-dimensional and (iii) A claim (Rule 11(3)). a request for deferment of publication (2) Where the international design is made in accordance with Article 5(5), application contains the designation of the international design application a Contracting Party that has made a may, instead of containing reproduc- declaration under Rule 8(1), then the tions, be accompanied by the pre- international application shall contain scribed number of specimens of the in- the statement, document, oath or dec- dustrial design (Article 5(1)(iii)); laration specified in that declaration (4) An indication of the product or (Rule 7(4)(c)). products that constitute the industrial (c) Optional contents. The inter- design or in relation to which the in- national design application may con- dustrial design is to be used, as pre- tain: scribed (Article 5(1)(iv) and Rule (1) Two or more industrial designs, 7(3)(iv)); subject to the prescribed conditions (5) An indication of the designated (Article 5(4) and Rule 7(7)); Contracting Parties (Article 5(1)(v)); (2) A request for deferment of publi- (6) The prescribed fees (Article cation (Article 5(5) and Rule 7(5)(e)) or 5(1)(vi) and Rule 12(1)); a request for immediate publication (7) The Contracting Party or Parties (Rule 17); in respect of which the applicant ful- (3) An element referred to in item (i) fills the conditions to be the holder of or (ii) of Article 5(2)(b) of the Hague an international registration (Rule Agreement or in Article 8(4)(a) of the 7(3)(iii)); 1960 Act even where that element is not (8) The number of industrial designs required in consequence of a notifica- included in the international design ap- tion in accordance with Article 5(2)(a) plication, which may not exceed 100, of the Hague Agreement or in con- and the number of reproductions or sequence of a requirement under Arti- specimens of the industrial designs ac- cle 8(4)(a) of the 1960 Act (Rule 7(5)(a)); companying the international design (4) The name and address of appli- application (Rule 7(3)(v)); cant’s representative, as prescribed (9) The amount of the fees being paid (Rule 7(5)(b)); and the method of payment, or instruc- (5) A claim of priority of one or more tions to debit the required amount of earlier filed applications in accordance fees to an account opened with the with Article 6 and Rule 7(5)(c); International Bureau, and the identi- (6) A declaration, for purposes of Ar- fication of the party effecting the pay- ticle 11 of the Paris Convention, that

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the product or products which con- § 1.1022 Form and signature. stitute the industrial design or in (a) The international design applica- which the industrial design is incor- tion shall be presented on the official porated have been shown at an official form (Rules 7(1) and 1(vi)). or officially recognized international (b) The international design applica- exhibition, together with the place tion shall be signed by the applicant. where the exhibition was held and the date on which the product or products § 1.1023 Filing date of an international were first exhibited there and, where design application in the United States. less than all the industrial designs contained in the international design ap- (a) Subject to paragraph (b) of this plication are concerned, the indication section, the filing date of an inter- of those industrial designs to which the national design application in the declaration relates or does not relate United States is the date of international registration determined by (Rule 7(5)(d)); the International Bureau under the (7) Any declaration, statement or Hague Agreement (35 U.S.C. 384 and other relevant indication as may be 381(a)(5)). specified in the Administrative In- (b) Where the applicant believes the structions (Rule 7(5)(f)); international design application is en- (8) A statement that identifies infor- titled under the Hague Agreement to a mation known by the applicant to be filing date in the United States other material to the eligibility for protec- than the date of international registration of the industrial design concerned tion, the applicant may petition the (Rule 7(5)(g)); Director under this paragraph to ac- (9) A proposed translation of any text cord the international design applica- matter contained in the international tion a filing date in the United States design application for purposes of re- other than the date of international cording and publication (Rule 6(4)). registration. Such petition must be accompanied by the fee set forth in (d) Required contents where the United § 1.17(f) and include a showing to the States is designated. In addition to the satisfaction of the Director that the mandatory requirements set forth in international design application is en- paragraph (a) of this section, an inter- titled to such filing date. national design application that designates the United States shall contain § 1.1024 The description. or be accompanied by: An international design application (1) A claim (§§ 1.1021(b)(1)(iii) and designating the United States must in- 1.1025); clude a specification as prescribed by (2) Indications concerning the iden- 35 U.S.C. 112 and preferably include a tity of the creator (i.e., the inventor, brief description of the reproduction see § 1.9(d)) in accordance with Rule pursuant to Rule 7(5)(a) describing the 11(1); and view or views of the reproductions. (3) The inventor’s oath or declaration § 1.1025 The claim. (§§ 1.63 and 1.64). The requirements in §§ 1.63(b) and 1.64(b)(4) to identify each The specific wording of the claim in inventor by his or her legal name, an international design application mailing address, and residence, if an in- designating the United States shall be ventor lives at a location which is dif- in formal terms to the ornamental design for the article (specifying name of ferent from the mailing address, and article) as shown, or as shown and de- the requirement in § 1.64(b)(2) to iden- scribed. More than one claim is neither tify the residence and mailing address required nor permitted for purposes of of the person signing the substitute the United States. statement will be considered satisfied by the presentation of such informa- § 1.1026 Reproductions. tion in the international design appli- Reproductions shall comply with the cation prior to international registra- requirements of Rule 9 and Part Four tion. of the Administrative Instructions.

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§ 1.1027 Specimens. (1) Directly to the International Bu- Where a request for deferment of pub- reau in Swiss currency (see Administra- lication has been filed in respect of a tive Instruction 801); or two-dimensional industrial design, the (2) Through the Office as an office of international design application may indirect filing, provided such fees are include specimens of the design in ac- paid no later than the date of payment cordance with Rule 10 and Part Four of of the transmittal fee required under the Administrative Instructions. Speci- paragraph (a) of this section. Any pay- mens are not permitted in an inter- ment through the Office must be in national design application that des- U.S. dollars. Applicants paying the fees ignates the United States or any other in paragraph (c) of this section through Contracting Party which does not per- the Office may be subject to a require- mit deferment of publication. ment by the International Bureau to pay additional amounts where the con- § 1.1028 Deferment of publication. version from U.S. dollars to Swiss cur- The international design application rency results in the International Bu- may contain a request for deferment of reau receiving less than the prescribed publication, provided the application amounts. does not designate the United States or (e) Payment of the fees referred to in any other Contracting Party which Article 17 and Rule 24 for renewing an does not permit deferment of publica- international registration (‘‘renewal tion. fees’’) is not required to maintain a U.S. patent issuing on an international FEES design application in force. Renewal fees, if required, must be submitted di- § 1.1031 International design applica- rectly to the International Bureau. tion fees. Any renewal fee submitted to the Of- (a) International design applications fice will not be transmitted to the filed through the Office as an office of International Bureau. indirect filing are subject to payment (f) The designation fee for the United of a transmittal fee (35 U.S.C. 382(b) States shall consist of: and Article 4(2)) in the amount of: (1) A first part established in Swiss currency pursuant to Hague Rule 28 By a micro entity (§ 1.29) ...... $30.00 based on the combined amounts of the By a small entity (§ 1.27(a)) ...... 60.00 basic filing fee (§ 1.16(b)), search fee By other than a small or micro entity ...... 120.00 (§ 1.16(l)), and examination fee (§ 1.16(p)) for a design application. The first part (b) The Schedule of Fees annexed to is payable at the time of filing the the Regulations (Rule 27(1)), a list of international design application; and individual designation fee amounts, (2) A second part (issue fee) as pro- and a fee calculator may be viewed on vided in § 1.18(b). The second part is the Web site of the World Intellectual payable within the period specified in a Property Organization, currently avail- notice of allowance (§ 1.311). able at http://www.wipo.int/hague. (c) The following fees required by the [80 FR 17964, Apr. 2, 2015, as amended at 82 International Bureau may be paid ei- FR 52816, Nov. 14, 2017] ther directly to the International Bu- reau or through the Office as an office REPRESENTATION of indirect filing in the amounts specified on the World Intellectual Property § 1.1041 Representation in an international design application. Organization Web site described in paragraph (b) of this section: (a) The applicant may appoint a rep- (1) International application fees resentative before the International (Rule 12(1)); and Bureau in accordance with Rule 3. (2) Fee for descriptions exceeding 100 (b) Applicants of international design words (Rule 11(2)). applications may be represented before (d) The fees referred to in paragraph the Office as an office of indirect filing (c) of this section may be paid as fol- by a practitioner registered (§ 11.6) or lows: granted limited recognition (§ 11.9(a) or

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(b)) to practice before the Office in pat- designated office, or other foreign au- ent matters. Such practitioner may act thority by the Office or the applicant, pursuant to § 1.34 or pursuant to ap- unless the applicable requirements of pointment by the applicant. The ap- part 5 of this chapter have been satis- pointment must be in writing signed by fied. the applicant, must give the practi- (c) Once transmittal of the inter- tioner power to act on behalf of the ap- national design application has been plicant, and must specify the name and effected under paragraph (a) of this sec- registration number or limited rection, except for matters properly before ognition number of each practitioner. the United States Patent and Trade- An appointment of a representative mark Office as an office of indirect fil- made in the international design appli- ing or as a designated office, all further cation pursuant to Rule 3(2) that com- correspondence concerning the applica- plies with the requirements of this tion should be sent directly to the paragraph will be effective as an ap- International Bureau. The United pointment before the Office as an office States Patent and Trademark Office of indirect filing. will generally not forward communications to the International Bureau re- § 1.1042 Correspondence respecting ceived after transmittal of the applica- international design applications filed with the Office as an office of tion to the International Bureau. Any indirect filing. reply to an invitation sent to the applicant by the International Bureau must The applicant may specify a cor- be filed directly with the International respondence address for correspondence Bureau, and not with the Office, to sent by the Office as an office of indi- avoid abandonment or other loss of rect filing. Where no such address has rights under Article 8. been specified, the Office will use as the correspondence address the address RELIEF FROM PRESCRIBED TIME LIMITS; of applicant’s appointed representative CONVERSION TO A DESIGN APPLICATION (§ 1.1041) or, where no representative is UNDER 35 U.S.C. CHAPTER 16 appointed, the address as specified in Administrative Instruction 302. § 1.1051 Relief from prescribed time limits. TRANSMITTAL OF INTERNATIONAL DESIGN APPLICATION TO THE INTERNATIONAL (a) If the delay in an applicant’s fail- BUREAU ure to act within prescribed time limits under the Hague Agreement in con- § 1.1045 Procedures for transmittal of nection with requirements pertaining international design application to to an international design application the International Bureau. was unintentional, a petition may be (a) Subject to paragraph (b) of this filed pursuant to this section to excuse section and payment of the transmittal the failure to act as to the United fee set forth in § 1.1031(a), transmittal States. A grantable petition pursuant of the international design application to this section must be accompanied to the International Bureau shall be by: made by the Office as provided by Rule (1) A copy of any invitation sent from 13(1). At the same time as it transmits the International Bureau setting a pre- the international design application to scribed time limit for which applicant the International Bureau, the Office failed to timely act; shall notify the International Bureau (2) The reply required under para- of the date on which it received the ap- graph (c) of this section, unless pre- plication. The Office shall also notify viously filed; the applicant of the date on which it (3) The fee as set forth in § 1.17(m); received the application and of the (4) A certified copy of the originally transmittal of the international design filed international design application, application to the International Bu- unless a copy of the international de- reau. sign application was previously com- (b) No copy of an international de- municated to the Office from the Inter- sign application may be transmitted to national Bureau or the international the International Bureau, a foreign design application was filed with the

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Office as an office of indirect filing, § 1.1052 Conversion to a design appli- and a translation thereof into the cation under 35 U.S.C. chapter 16. English language if it was filed in an- (a) An international design applica- other language; tion designating the United States (5) A statement that the entire delay filed with the Office as an office of in- in filing the required reply from the direct filing and meeting the require- due date for the reply until the filing of ments under § 1.53(b) for a filing date a grantable petition pursuant to this for an application for a design patent paragraph was unintentional. The Di- rector may require additional informa- may, on petition under this section, be tion where there is a question whether converted to an application for a de- the delay was unintentional; and sign patent under § 1.53(b) and accorded (6) A terminal disclaimer (and fee as a filing date as provided therein. A pe- set forth in § 1.20(d)) required pursuant tition under this section must be ac- to paragraph (d) of this section. companied by the fee set forth in (b) Any request for reconsideration § 1.17(t) and be filed prior to publication or review of a decision refusing to ex- of the international registration under cuse the applicant’s failure to act with- Article 10(3). The conversion of an in prescribed time limits in connection international design application to an with requirements pertaining to an application for a design patent under international design application upon § 1.53(b) will not entitle applicant to a petition filed pursuant to this section, refund of the transmittal fee or any fee to be considered timely, must be filed forwarded to the International Bureau, within two months of the decision re- or the application of any such fee to- fusing to excuse or within such time as ward the filing fee, or any other fee, for set in the decision. Unless a decision the application for a design patent indicates otherwise, this time period under § 1.53(b). The application for a de- may be extended under the provisions sign patent resulting from conversion of § 1.136. of an international design application (c) Reply. The reply required may be: must also include the basic filing fee (1) The filing of a continuing applica- (§ 1.16(b)), the search fee (§ 1.16(l)), the tion. If the international design appli- examination fee (§ 1.16(p)), the inven- cation has not been subject to inter- tor’s oath or declaration (§ 1.63 or 1.64), national registration, the reply must and a surcharge if required by § 1.16(f). also include a grantable petition under (b) An international design applica- § 1.1023(b) to accord the international tion will be converted to an application design application a filing date; or for a design patent under § 1.53(b) if a (2) A grantable petition under § 1.1052, decision on petition under this section where the international design applica- is granted prior to transmittal of the tion was filed with the Office as an of- international design application to the fice of indirect filing. International Bureau pursuant to (d) Terminal disclaimer. Any petition § 1.1045. Otherwise, a decision granting pursuant to this section must be ac- a petition under this section will be ef- companied by a terminal disclaimer fective to convert the international de- and fee as set forth in § 1.321 dedicating sign application to an application for a to the public a terminal part of the design patent under § 1.53(b) only for term of any patent granted thereon purposes of the designation of the equivalent to the period beginning on United States. the due date for the reply for which ap- (c) A petition under this section will plicant failed to timely act and ending on the date of filing of the reply re- not be granted in an abandoned inter- quired under paragraph (c) of this sec- national design application absent a tion and must also apply to any patent grantable petition under § 1.1051. granted on a continuing design applica- (d) An international design application that contains a specific reference tion converted under this section is under 35 U.S.C. 120, 121, 365(c) or 386(c) subject to the regulations applicable to to the application for which relief a design application filed under 35 under this section is sought. U.S.C. chapter 16.

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NATIONAL PROCESSING OF (b) Any reply to the notification of INTERNATIONAL DESIGN APPLICATIONS refusal must be filed directly with the Office and not through the Inter- § 1.1061 Rules applicable. national Bureau. The requirements of (a) The rules relating to applications § 1.111 shall apply to a reply to a notifi- for patents for other inventions or dis- cation of refusal. coveries are also applicable to international design applications desig- § 1.1064 One independent and distinct nating the United States, except as design. otherwise provided in this chapter or (a) Only one independent and distinct required by the Articles or Regula- design may be claimed in a nonprovi- tions. sional international design application. (b) The provisions of § 1.74, § 1.84, except for § 1.84(c), and §§ 1.152 through (b) If the requirements under para- 1.154 shall not apply to international graph (a) of this section are not satis- design applications. fied, the examiner shall in the notification of refusal or other Office action re- § 1.1062 Examination. quire the applicant in the reply to that (a) Examination. The Office shall action to elect one independent and make an examination pursuant to title distinct design for which prosecution 35, United States Code, of an inter- on the merits shall be restricted. Such national design application designating requirement will normally be made be- the United States. fore any action on the merits but may (b) Timing. For each international de- be made at any time before the final sign application to be examined under action. Review of any such require- paragraph (a) of this section, the Office ment is provided under §§ 1.143 and shall, subject to Rule 18(1)(c)(ii), send 1.144. to the International Bureau within 12 months from the publication of the § 1.1065 Corrections and other changes international registration under Rule in the International Register. 26(3) a notification of refusal (§ 1.1063) (a) The effects of any correction in where it appears that the applicant is the International Register by the not entitled to a patent under the law International Bureau pursuant to Rule with respect to any industrial design 22 in a pending nonprovisional inter- that is the subject of the international national design application shall be de- registration. cided by the Office in accordance with § 1.1063 Notification of refusal. the merits of each situation, subject to (a) A notification of refusal shall con- such other requirements as may be im- tain or indicate: posed. A patent issuing from an inter- (1) The number of the international national design application may only registration; be corrected in accordance with the (2) The grounds on which the refusal provisions of title 35, United States is based; Code, for correcting patents. Any cor- (3) A copy of a reproduction of the rection under Rule 22 recorded by the earlier industrial design and informa- International Bureau with respect to tion concerning the earlier industrial an abandoned nonprovisional inter- design, where the grounds of refusal national design application will gen- refer to similarity with an industrial erally not be acted upon by the Office design that is the subject of an earlier and shall not be given effect unless application or registration; otherwise indicated by the Office. (4) Where the refusal does not relate (b) A recording of a partial change in to all the industrial designs that are ownership in the International Reg- the subject of the international register pursuant to Rule 21(7) concerning istration, those to which it relates or a transfer of less than all designs shall does not relate; and not have effect in the United States. (5) A time period for reply under §§ 1.134 and 1.136, where a reply to the notification of refusal is required.

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§ 1.1066 Correspondence address for a nating the United States, the Office nonprovisional international design may send to the International Bureau application. a statement to the effect that protec- (a) Unless the correspondence address tion is granted in the United States to is changed in accordance with § 1.33(a), those industrial design or designs that the Office will use as the correspond- are the subject of the international ence address in a nonprovisional inter- registration and covered by the patent. national design application the address according to the following order: § 1.1070 Notification of Invalidation. (1) The correspondence address under (a) Where a design patent that was § 1.1042; granted from an international design (2) The address of applicant’s rep- application is invalidated in the United resentative identified in the publica- States, and the invalidation is no tion of the international registration; longer subject to any review or appeal, and the patentee shall inform the Office. (3) The address of the applicant iden- (b) After receiving a notification of tified in the publication of the inter- invalidation under paragraph (a) of this national registration. section or through other means, the Of- (b) Reference in the rules to the cor- fice will notify the International Bu- respondence address set forth in reau in accordance with Hague Rule 20. § 1.33(a) shall be construed to include a reference to this section for a non- § 1.1071 Grant of protection for an in- provisional international design appli- dustrial design only upon issuance cation. of a patent. A grant of protection for an indus- § 1.1067 Title, description, and inven- trial design that is the subject of an tor’s oath or declaration. international registration shall only (a) The title of the design must des- arise in the United States through the ignate the particular article. Where a issuance of a patent pursuant to 35 nonprovisional international design ap- U.S.C. 389(d) or 171, and in accordance plication does not contain a title of the with 35 U.S.C. 153. design, the Office may establish a title. No description, other than a reference PART 2—RULES OF PRACTICE IN to the drawing, is ordinarily required TRADEMARK CASES in a nonprovisional international design application. (b) An international design applica- EDITORIAL NOTE: Part 2 is placed in the tion designating the United States separate grouping of parts pertaining to must include the inventor’s oath or trademarks regulations. declaration. See § 1.1021(d). If the applicant is notified in a notice of allow- PART 3—ASSIGNMENT, RECORD- ability that an oath or declaration in ING AND RIGHTS OF ASSIGNEE compliance with § 1.63, or substitute statement in compliance with § 1.64, ex- Sec. ecuted by or with respect to each 3.1 Definitions. named inventor has not been filed, the applicant must file each required oath DOCUMENTS ELIGIBLE FOR RECORDING or declaration in compliance with 3.11 Documents which will be recorded. § 1.63, or substitute statement in com- 3.16 Assignability of trademarks prior to pliance with § 1.64, no later than the filing of an allegation of use. date on which the issue fee is paid to REQUIREMENTS FOR RECORDING avoid abandonment. This time period is not extendable under § 1.136 (see 3.21 Identification of patents and patent ap- § 1.136(c)). plications. 3.24 Requirements for documents and cover § 1.1068 Statement of grant of protec- sheets relating to patents and patent ap- tion. plications. 3.25 Recording requirements for trademark Upon issuance of a patent on an applications and registrations. international design application desig- 3.26 English language requirement.

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