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Rev. 7, July 2008

Manual of PATENT

EXAMINING PROCEDURE

Original Eighth Edition, August 2001 Latest Revision July 2008

U.S. DEPARTMENT OF COMMERCE United States Patent and Trademark Office

Rev. 7, July 2008

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

Superintendent of Documents Telephone: 202-512-2267 Mail List Section, Washington, DC 20402

Inquiries relating to purchasing the Manual should be directed to:

Superintendent of Documents Telephone: 202-512-1800 United States Government Printing Office Washington, DC 20402

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

Mail Stop Document Services Telephone: 1-800-972-6382 or 571-272-3150 Director of the U.S. Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

Previous editions and revisions of the Manual are available on microfilm in the Patent Search Room. The Manual is available on CD-ROM and on diskette from:

U.S. Patent and Trademark Office Telephone: 571-272-5600 Office of Electronic Information Products MDW 4C18, P.O. Box 1450 Alexandria, VA 22313-1450

Employees of the U.S. Patent and Trademark Office should direct their requests for the Manual, replacement pages, notices, and revi- sions to the Office of Patent Training. Telephone: 571-272-7222

Pursuant to the Patent and Trademark Office Efficiency Act (PTOEA) (Pub. L. 106-113, 113 Stat. 1501A-572), the head of the United States Patent and Trademark Office (USPTO) is the “Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.” The Director is assisted by the “Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the United States Patent and Trademark Office.” The patent operations of the USPTO are now headed by the “Com- missioner for Patents.” The trademark operations of the USPTO are now headed by the “Commissioner for Trademarks.” Under section 4741(b) of the PTOEA, any reference to the Commissioner of Patents and Trademarks, the Assistant Commissioner for Patents, or the Assistant Commissioner for Trademarks is deemed to refer to the Director, the Commissioner for Patents, or the Commissioner for Trade- marks, respectively. See “Reestablishment of the Patent and Trademark Office as the United States Patent and Trademark Office” pub- lished in the Federal Register at 65 FR 17858 (Apr. 5, 2000), and in the Official Gazette of the United States Patent and Trademark Office at 1234 O.G. 41 (May 9, 2000).

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

First Edition, November 1949 Second Edition, November 1953 Third Edition, November 1961 Fourth Edition, June 1979 Fifth Edition, August 1983 Sixth Edition, January 1995 Seventh Edition, July 1998 Eighth Edition, August 2001

Revision 1, February 2003 Revision 2, May 2004 Revision 3, August 2005 Revision 4, October 2005 Revision 5, August 2006 Revision 6, September 2007 Revision 7, July 2008

Rev. 3, August 2005

Foreword

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

A separate manual entitled “Trademark Manual of Examining Procedure” is published by the USPTO as a reference work for trademark cases.

Examiners will be governed by the applicable statutes, rules, decisions, and orders and instructions issued by the Director of the USPTO and other officials authorized by the Director of the USPTO. Orders and Notices still in force which relate to the subject matter included in this Manual are incorporated in the text. Orders and Notices, or portions thereof, relating to the examiners’ duties and functions which have been omitted or not incorporated in the text may be considered obsolete. Interference procedure not directly involving the Primary Examiner are not included in this Manual and, therefore, Orders and Notices relating thereto remain in force.

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

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

Mail Stop MPEP Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450

For sale by the Superintendent of Documents, U.S. Government Printing Office, Washington, DC 20402

Rev. 3, August 2005

Table of Contents Chapter Page

Rev. 3, August 2005

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

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

300 Ownership and Assignment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .300-1

400 Representative of Inventor or Owner . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .400-1

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

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

700 Examination of Applications . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .700-1

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

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

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

1100 Statutory Invention Registration (SIR) and Pre-Grant Publication (PG Pub). . . . . . . . . . . . . .1100-1

1200 Appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1200-1

1300 Allowance and Issue . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1300-1

1400 Correction of Patents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1400-1

1500 Design Patents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1500-1

1600 Plant Patents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1600-1

1700 Miscellaneous . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1700-1

1800 Patent Cooperation Treaty . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1800-1

1900 Protest . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1900-1

2000 Duty of Disclosure . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2000-1

2100 Patentability . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2100-1

2200 Citation of Prior Art and Ex Parte Reexamination of Patents . . . . . . . . . . . . . . . . . . . . . . . . .2200-1

2300 Interference Proceedings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2300-1

2400 Biotechnology . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2400-1

2500 Maintenance Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2500-1 2600 Optional Inter Partes Reexamination . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2600-1

2700 Patent Terms and Extensions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2700-1

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

Appendix II List of Decisions Cited . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . A-7

Appendix L Patent Laws . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . L-1

Appendix R Patent Rules. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . R-1

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

Table of Contents Chapter Page

Rev. 3, August 2005

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

Appendix P Paris Convention . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .P-1

Index . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . I-1

Introduction

1 Rev. 3, August 2005

Constitutional Basis The Constitution of the United States provides: “Art. 1, Sec. 8. The Congress shall have power . . .

To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discov- eries.”

Statutes Pursuant to the provision of the Constitution, Con-

gress has over the years passed a number of statutes under which the U.S. Patent and Trademark Office (USPTO) is organized and our patent system is estab- lished. The provisions of the statutes can in no way be changed or waived by the USPTO.

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

By an Act of Congress approved July 19, 1952, which came into effect on January 1, 1953, the patent laws were revised and codified into substantially its present form. The patent law is Title 35 of the United States Code which governs all cases in the USPTO. In referring to a particular section of the patent code the citation is given, for example, as, 35 U.S.C. 1. Title 35 of the United States Code is reproduced in Appendix L of the Manual of Patent Examining Procedure (MPEP). A copy of the consolidated laws is available on the USPTO web site at www.uspto.gov/web/ offices/pac/mpep/consolidated_laws.pdf.

35 U.S.C. 1. Establishment. (a) ESTABLISHMENT.— The United States Patent and

Trademark Office is established as an agency of the United States, within the Department of Commerce. In carrying out its functions, the United States Patent and Trademark Office shall be subject to the policy direction of the Secretary of Commerce, but otherwise shall retain responsibility for decisions regarding the management and administration of its operations and shall exercise indepen- dent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and appli- cable provisions of law. Those operations designed to grant and issue patents and those operations which are designed to facilitate the registration of trademarks shall be treated as separate operat- ing units within the Office.

(b) OFFICES.— The United States Patent and Trademark Office shall maintain its principal office in the metropolitan Wash- ington, D.C., area, for the service of process and papers and for the purpose of carrying out its functions. The United States Patent and Trademark Office shall be deemed, for purposes of venue in

civil actions, to be a resident of the district in which its principal office is located, except where jurisdiction is otherwise provided by law. The United States Patent and Trademark Office may establish satellite offices in such other places in the United States as it considers necessary and appropriate in the conduct of its business.

(c) REFERENCE.— For purposes of this title, the United States Patent and Trademark Office shall also be referred to as the “Office” and the “Patent and Trademark Office”.

Rules One of the sections of the patent statute, namely,

35 U.S.C. 2, authorizes the USPTO, subject to the pol- icy direction of the Secretary of Commerce, to estab- lish regulations, not inconsistent with law, for the conduct of proceedings in the USPTO.

These regulations or rules and amendments thereto are published in the Federal Register and in the Offi- cial Gazette. In the Federal Register and in the Code of Federal Regulations the rules pertaining to patents are in Parts 1, 3, 4, 5, and 10 of Title 37, Patents, Trademarks, and Copyrights. In referring to a particu- lar section of the rules the citation is given, for exam- ple, as 37 CFR 1.31. A booklet entitled “Code of Federal Regulations, Title 37, Patents, Trademarks, and Copyrights,” published by the Office of the Fed- eral Register, contains all of the patent rules as well as trademark rules and copyright rules. Persons desiring a copy of this booklet should order a copy from the Superintendent of Documents. A copy of the consoli- dated rules is available on the USPTO web site at www.uspto.gov/web/offices/pac/mpep/ consolidated_rules.pdf.

The primary function of the rules is to advise the public of the rules which have been established in accordance with the statutes and which must be fol- lowed before the USPTO. The rules govern the exam- iners, as well as applicants and their attorneys and agents. The rules pertaining to patent practice appear in the MPEP as Appendix R.

Director’s Orders and Notices From time to time, the Director of the USPTO, for-

merly the Commissioner of Patents and Trademarks, has issued Orders and Notices relating to various spe- cific situations that have arisen in operating the USPTO. Notices and circulars of information or instructions have also been issued by other USPTO officials under authority of the Director. Orders and Notices have served various purposes including giv- ing examiners instruction, information, interpreta-

MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 3, August 2005 2

tions, and the like. Others have been for the information of the public, advising what the USPTO will do under specified circumstances.

Decisions In addition to the statutes and rules, the actions

taken by the examiner in the examination of applica- tions for patents are to a great extent governed by decisions on prior cases. Applicants dissatisfied with an examiner’s action may have it reviewed. In gen- eral, that portion of the examiner’s action pertaining to objections on formal matters may be reviewed by petition to the Director of the USPTO (see MPEP § 1002), and that portion of the examiner’s action per- taining to the rejection of claims on the merits may be reviewed by appeal to the Board of Patent Appeals and Interferences (see MPEP § 1201). The distinction is set forth in 37 CFR 1.181 and 1.191. In citing deci- sions as authority for his or her actions, the examiner should cite the decision in the manner set forth in MPEP § 707.06.

Publications Available from the U.S. Government Printing Office

For current price and availability information, visit the U.S. Government Printing Office (GPO) web site (http://bookstore.gpo.gov), call the GPO Order Desk (202-512-1800 or 1-866-512-1800), send a fax to 202-512-2104.

Products and Services Available From the U.S. Patent and Trademark Office

Patent and trademark related products and services available from the USPTO are described in the Prod-

ucts and Services Catalog, available on the USPTO’s web site (www.uspto.gov/web/offices/ac/ido/oeip/cat- alog).

Call 800-786-9199 for information on Patent, Trademark, and General Products. Customer Service Representatives are available Monday through Friday (except Federal holidays) from 8:30 a.m. to 8:00 p.m.

For information on electronic information products, or to discuss system requirements for magnetic tape products, contact:

Office of Electronic Information Products MDW 4C18 P.O. Box 1450 Alexandria VA 22313-1450 Telephone: 571-272-5600 Fax: 571-273-0110 E-mail: cassis@uspto.gov.

For information on patent and trademark copy/doc- ument sales, contact:

Office of Public Records (OPR) Customer Service Telephone: 571-272-3150 or 800-972-6382 Fax: 571-273-3250 Email: dsd@uspto.gov. Web site: http:// ebiz1.uspto.gov/oems25p/index.html

See MPEP § 1730 for additional information sources.

U.S. DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office

P.O. Box 1450 Alexandria, Virginia 22313-1450

MANUAL OF PATENT EXAMINING PROCEDURE Eighth Edition

Instructions Regarding Revision No. 7

Appendix R has been updated to incorporate the following final rules:

- April 2007 Revision of Patent Cooperation Treaty Procedures, in particular, 37 CFR 1.17, 1.445 and 1.452, which became effective on November 9, 2007.

MPEP Chapters 2200 and 2600 have been revised to incorporate the changes necessitated by the final rules entitled “Revisions and Technical Corrections Affecting Requirements for Ex Parte and Inter Partes Reexamination,” which became effective on May 16, 2007. MPEP Chapter 1800 has been updated to reflect changes to 37 CFR 1.17, 1.445 and 1.452, which became effective on November 9, 2007. In addition, the following MPEP Chapters have been revised: 600, 1400, and 2500.

This revision consists of replacement pages for the Title Page in the front of the Manual, entire Chapters 600, 1400, 1800, 2200, 2500, 2600, Appendices II – List of Decisions Cited, R – Patent Rules, T – Patent Cooperation Treaty, and AI – Administrative Instructions Under the PCT, and entire Index.

Pages which have been printed in this revision are labeled as “Rev. 7” on the bottom. Sections of the Manual that have been changed by this revision are indicated by “[R-7]” after the section title. Additions to the text of the Manual are indicated by arrows (><) inserted in the text. Deletions are indicated by a single asterisk (*) where a single word was deleted and by two asterisks (**) where more than one word was deleted. The use of three or five asterisks in the body of the laws and rules indicates a portion of the law or rule that was not reproduced.

Magdalen Y. C. Greenlief, Editor Manual of Patent Examining Procedure

Rev. 7, July 2008

Remove Pages Insert Pages

Title Page Title Page 600-1 through 600-166 600-1 through 600-166 1400-1 through 1400-122 1400-1 through 1400-124 1800-1 through 1800-218 1800-1 through 1800-220 2200-1 through 2200-160 2200-1 through 2200-170 2500-1 through 2500-28 2500-1 through 2500-28 2600-1 through 2600-176 2600-1 through 2600-186

A-7 through A-48 A-7 through A-48 R-1 through R-336 R-1 through R-336 T-1 through T-136 T-1 through T-136 AI-1 through AI-94 AI-1 through AI-94 I-1 through I-112 I-1 through I-112

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Particular attention is called to the changes in the following sections:

CHAPTER 600:

601 The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

601.01(c) Revised to clarify that a provisional application filing fee is not required when filing a request to convert a nonprovisional application to a provisional application.

601.01(d) The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

601.01(f)-(h) The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

601.02 Form PTO/SB/81 has been updated.

601.03 37 CFR 1.33(a) has been updated.

602 The declaration forms have been updated.

602.03 Form paragraph has been revised.

602.04(a) The list of member countries that are parties to the Hague Convention has been deleted since users can obtain an up-to-date list by accessing the Internet website provided in this section.

602.05(a) The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

603.01 The Office of Patent Publication has been changed to the Office of Data Management.

605.02 The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

605.03 The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

605.04(a) Revised to clarify that where individual declarations are executed, they must be submitted as individual declarations rather than combined into one declaration by combining the signature pages. Revised to clarify that the Office will require a new oath or declaration if any alterations made in

3 Rev. 7, July 2008

the application or the declaration are not initialed and dated. Reproduced form paragraph 6.05.02 has been replaced by form paragraph 6.02.01.

605.04(b)-(c) The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

605.04(f)-(g) The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

608.01 Revised to clarify that the written description portion of the specification must not contain drawings or flow diagrams and that a claim may incorporate by reference to a specific figure or table where there is no practical way to define the invention in words.

608.01(b) The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

608.01(f) The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP). Revised to clarify that if the drawings show Figures 1A, 1B, and 1C and the brief description of the drawings refers only to Figure 1, the examiner should object to the brief description and require applicant to provide a brief description of Figures 1A, 1B, and 1C.

608.01(g) Revised to add reference to 37 CFR 1.84(p).

608.01(m) The Office of Patent Publication has been changed to the Office of Data Management.

608.01(n) The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

608.01(v) Form paragraph 6.20 has been revised.

608.02 The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

608.02(b) The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

608.02(z) The Office of Patent Publication has been changed to the Office of Data Management.

608.05 The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

4 Rev. 7, July 2008

608.05(a) The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

608.05(b) The Office of Patent Publication has been changed to the Office of Data Management.

609 Revised to add an alternative electronic signature method that may be used by the examiners to indicate whether the information listed in an IDS has been considered.

609.01 Revised to add reference to the alternative electronic signature method.

609.04(a) Revised subsection II on legible copies to be consistent with 37 CFR 1.98(a)(2).

609.05(a) Form paragraph 6.49.10 has been revised.

609.05(b) Revised to add discussion on the alternative electronic signature method.

609.07 Revised to update e-IDS submitted by EFS-Web.

609.08 Revised to add discussion on the alternative electronic signature method.

CHAPTER 1400:

1402 Revised to indicate that a reissue application in which the only error specified to support reissue is the failure to include one or more claims that is/are narrower than at least one of the existing patent claim(s) without an allegation that one or more of the broader patent claim(s) is/are too broad together with an amendment to such claim(s) does not meet the requirements of 35 U.S.C. 251.

1404 Revised to delete reference to the IFW Manual.

1406 Revised text to be consistent with 37 CFR 1.98(a)(2).

1410 Revised to indicate that effective July 9, 2007, reissue applications and “follow-on” papers may be submitted by EFS-Web. Form PTO/SB/50 has been updated.

1410.01 The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

1411 Revised to indicate that for reissue applications that are maintained in IFW, the “Final SPRE Review” form will be filled in at the appropriate

5 Rev. 7, July 2008

point to identify that a terminal disclaimer was filed in the application for the patent to be reissued and the form will be scanned into IFW.

1411.01 Revised to indicate that underlining and bracketing should not be used for changes made by a Certificate of Correction dated before the filing of the reissue application or dated during the pendency of the reissue application. If such changes are submitted improperly with underlining and brackets, the examiner will require correction by the applicant in the form of a replacement paragraph (or paragraphs) without such markings.

1412.02 Revised to add discussion of the Federal Circuit decision of North American Container, Inc. v. Plastipak Packaging, Inc. Discussion of the Board decision, Ex Parte Eggert, has been deleted. A new subsection V. directed to rebuttal by the reissue applicant to a recapture rejection has been added. The recapture-analysis flowchart has been revised.

1412.03 Revised to indicate that the filing of a reissue application to merely add combination claim(s) that require all the limitations of a subcombination claim, which subcombination claim was present in the original patent, would not provide an error that is correctable by reissue as defined by 35 U.S.C. 251. Revised to indicate that a statement that “the patent is wholly or partly inoperative by reason of claiming more or less than applicant had a right to claim” is not an unequivocal statement of an intent to broaden.

1412.04 Revised to clarify that a petition under 37 CFR 1.324 can be used to correct the inventorship of a patent, where appropriate.

1414 Revised to indicate that a statement of the error as “…the inclusion of claims 3-5 which were unduly broad…” and then canceling claims 3-5, would not be considered a sufficient error statement because applicant has not pointed out what the canceled claims lacked that the remaining claims contain. The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP). Forms PTO/SB/51 and PTO/SB/52 have been updated.

1414.01 Form PTO/SB/51S has been updated.

1415 Revised to indicate that the number of claims in the original patent is not relevant in determining the excess claims fee for a reissue application. Form PTO/SB/56 has been updated.

1415.01 Revised to indicate that only one maintenance fee is required for all the multiple reissue patents that replaced a single original patent. The maintenance fee must be directed to the latest reissue patent that has issued.

6 Rev. 7, July 2008

1430 Revised to indicate that where a reissue application seeks to change the inventorship of a patent, the names of the inventors of record of the patent file are set forth in the announcement, not the filing receipt. The filing receipt sets forth the names of the inventors that the reissue application is seeking to make of record upon reissue of the patent. Revised to indicate that where a notice to file missing parts - filing date granted has been mailed by the Office for a reissue application, the reissue application will not necessarily be announced in the Official Gazette until all elements of the notice have been complied with.

1449.01 Revised to add guidance to address the situation where a reexamination certificate is to be issued for a patent, while a reissue application for the patent is pending and will not be merged with the reexamination.

1449.02 Revised to indicate that where a reissue application with an appropriate error as required by 35 U.S.C. 251 is filed to provoke an interference, the reissue oath/declaration must include an identification of the claims added to provoke the interference.

1450 Revised to clarify that for reissue applications of patents issued from a national stage application submitted under 35 U.S.C. 371, the restriction requirement should not be made under the PCT unity of invention standard because a reissue application is filed under 35 U.S.C. 251 and not under 35 U.S.C. 371.

1451 Revised to clarify that the mere fact an application purports to be a continuation or divisional of a parent reissue application does not make it a reissue application itself, because it is possible to file a 35 U.S.C. 111(a) continuing application of a reissue application. There must be an identification, on filing, that the application is a continuation reissue application, as opposed to a continuation of a reissue application. The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

1452 Revised to clarify that if a reissue application is merged with a reexamination proceeding, the filing of an RCE of the reissue application will normally not dissolve the merger, however, the Office may choose to dissolve the merger based on the individual facts and circumstances of the case, e.g., to promote the statutorily-mandated requirement for special dispatch in reexamination.

1455 Revised to delete references to reissue applications that are maintained in paper files.

1457 The Office of Initial Patent Examination (OIPE) has been changed to the Office of Patent Application Processing (OPAP).

7 Rev. 7, July 2008

1470 Information regarding accessing Public PAIR has been updated.

1485 The URL for accessing the image of a patent on the patent database has been updated. Form PTO/SB/44 has been updated.

1490 Revised to add discussion as to the interpretation of the phrase “earlier- filed” for purposes of making provisional ODP rejections in two or more pending applications. Revised to indicate that where the copending applications are filed on the same day, the provisional ODP rejection should be maintained in each of the applications until applicant overcomes the rejection by filing either a reply showing that the claims subject to the provisional ODP rejection are patentably distinct from each other or a terminal disclaimer in accordance with 37 CFR 1.321 in each of the pending applications. Forms PTO/SB/25 and PTO/SB/26 have been updated.

CHAPTER 1800:

1807 Revised to indicate the Customer Number practice set forth in MPEP § 403 may not be used in the international phase to appoint an agent or designate a correspondence address.

1808 Revised in view of 1329 OG 99 (April 8, 2008) to reflect revised procedures for handling requests to withdraw from representation. Also revised to indicate that in the international phase, an appointment of an agent may not be revoked by reference to a Customer Number.

1817 Revised to update the list of PCT Contracting States and the members of the European Patent Convention (EPC) regional patent system.

1817.02 Revised to reflect amendments to PCT Rule 4.11.

1819 Revised to reflect amendments to PCT Rule 4 and 37 CFR 1.445 and to add PCT Rule 12bis.

1845.01 Form paragraphs have been revised.

1850 Form paragraphs have been revised.

1852 Revised to reflect amendments to PCT Rules 4 and 41.

1878.01 Form paragraphs have been revised.

1879 Spelling of “further” was corrected in subsection VI and some text inadvertently omitted in Rev. 6 was re-inserted in subsection VII.

8 Rev. 7, July 2008

1893.03(d) Revised to indicate the sections of the MPEP relating to double patenting rejections (MPEP § 804), election and reply by applicant (MPEP § 818), and rejoinder of nonelected inventions (MPEP § 821.04) generally also apply to national stage applications submitted under 35 U.S.C. 371. Form paragraphs for restriction and election of species requirements have been revised.

CHAPTER 2200:

2203 Revised to clarify that “any person” as set forth in 35 U.S.C. 301 includes real parties in interest to the patent owner or requester.

2204 Revised to add reference to 37 CFR 1.501.

2205 Revised to clarify the explanation requirement of 35 U.S.C. 301.

2206 Revised to clarify when a citation qualifies for entry under 37 CFR 1.501.

2207 Revised to add discussion regarding litigation papers and decisions from litigations that may be entered in the patent file.

2209 Revised to indicate that “litigation tactics” are not tolerated in reexamination proceedings and that parties are expected to adhere to the provisions of 37 CFR 10.18(b) throughout the course of a reexamination proceeding.

2210 Revised to update 37 CFR 1.510(f).

2213 Revised to update 37 CFR 1.510(f). Revised to clarify that an attorney or agent representing a requester in a reexamination proceeding must be a registered patent practitioner.

2214 Revised to clarify that the request must identify each substantial new question of patentability raised and each proposed ground of rejection. Revised to indicate that an application data sheet cannot be submitted in a reexamination proceeding. Form PTO/SB/57 has been updated.

2216 Revised to add discussion of the Supreme Court decision in KSR.

2217 Revised to add a chart to illustrate rejections based on 35 U.S.C. 102(g)(2) in a reexamination proceeding.

2218 Revised to indicate that the requirement for copies of U.S. patents and U.S. patent application publications (37 CFR 1.510(b)(3)) relied upon or referred to in a reexamination request has been waived. Revised to

9 Rev. 7, July 2008

indicate that it is not required and parties are not permitted to submit copies of copending reexamination proceedings and applications in a reexamination request.

2220 Revised to indicate that where service was not possible after a reasonable effort to do so, requester must submit a duplicate copy of the request papers to the Office together with a cover letter including an explanation of what effort was made to effect service and why that effort was not successful. The cover letter should be clearly worded to avoid the possibility of the Office erroneously charging a duplicate filing fee.

2222 Revised to update 37 CFR 1.33(c). Form PTO/SB/82 has been deleted and replaced by form PTO/SB/81.

2223 Form PTO/SB/83 has been updated.

2224 Revised to indicate that effective July 9, 2007, the Office began accepting requests for reexamination and “follow on” papers submitted by EFS- Web. Revised to indicate that the certificate of mailing and transmission procedures set forth in 37 CFR 1.8 may be used to file any paper in an ex parte reexamination, except for a request for reexamination and a corrected/replacement request for reexamination.

2225 Revised to indicate that if untimely papers filed before an order for reexamination, are entered in the patent file prior to discovery of the impropriety, such papers will be expunged from the record.

2229 The Office of Publication has been changed to the Office of Data Management.

2232 Revised to indicate that non-patent literature in a reexamination file is not available for viewing by members of the public.

2232.01 The title of this section has been revised.

2234 Revised to update 37 CFR 1.530(k).

2235 The Office of Publication has been changed to the Office of Data Management.

2238 Revised to indicate that reexamination fees are based on full cost recovery and it is essential that all time expended on reexamination activities be reported accurately.

2240 Revised to indicate that in order for a second or subsequent request for reexamination to be granted, the second or subsequent requester must

10 Rev. 7, July 2008

independently provide a substantial new question of patentability which is different from that raised in the pending reexamination for the claims in effect at the time of the determination (37 CFR 1.515(a)).

2242 Revised to add reference to the Supreme Court decision in KSR. Revised to indicate that in order for a second or subsequent request for reexamination to be granted, the second or subsequent requester must independently provide a substantial new question of patentability which is different from that raised in the pending reexamination for the claims in effect at the time of the determination (37 CFR 1.515(a)).

2249 Revised to update 37 CFR 1.530(a).

2250 Revised to update 37 CFR 1.530(k). Revised to indicate that in those rare instances where a concluded post-patent proceeding changes the patent while the reexamination proceeding is pending, amendments will be made relative to the patent, as revised by the concluded proceeding, and 37 CFR 1.530(i) is waived to that extent. The subsection on examples has been revised to add the re-presentation of original patent claims.

2250.02 Revised to update 37 CFR 1.530(l).

2250.03 Revised to update 37 CFR 1.20(c)(3).

2254 Revised to update 37 CFR 1.550(d).

2256 Revised to be consistent with 37 CFR 1.98(a)(2).

2257 Revised to indicate that the reexamination request must provide a listing of the patents and printed publications in accordance with 37 CFR 1.98.

2258 Revised to add a chart to illustrate rejections based on 35 U.S.C. 102(g)(2) in a reexamination proceeding. Form paragraph 22.03 has been revised.

2262 Revised to add discussion of current procedure which permits the examiner to indicate in the Office action that a discussion with the patent owner’s representative may result in agreement whereby the reexamination proceeding may be placed in condition for issuing a NIRC and that the examiner will telephone the patent owner’s representative in about 2 weeks.

2266 Revised to update 37 CFR 1.550(d). Revised to indicate that an application data sheet is an improper paper in a reexamination proceeding.

2266.01 Revised to add x-reference to MPEP § 2281.

11 Rev. 7, July 2008

2267 Revised to indicate that where an inappropriate paper has been scanned into IFW of the reexamination proceeding before discovery of the inappropriate nature of the paper, the paper will be marked as “non- public” and “closed” so that the paper does not appear in the active IFW record with the other active papers that comprise the public record of the reexamination proceeding.

2268 Revised to update 37 CFR 1.137.

2271 Revised to add x-reference to the final rejection practice set forth in MPEP § 706.07(a).

2272 Revised to add discussion of the filing of a petition under 37 CFR 1.181 where the patent owner is of the opinion that a final rejection is improper or premature, or that an amendment submitted after final rejection complies with 37 CFR 1.116 but the examiner improperly refused entry of such an amendment.

2280 Revised to add discussion of 37 CFR 1.98(a)(2).

2281 Revised to indicate that it is permitted for a paralegal or legal instruments examiner (or support staff) to telephone a requester to discuss a request that fails to comply with the filing date requirements for filing a reexamination request because there is no reexamination proceeding yet.

2282 Revised to add discussion regarding litigation papers and decisions from litigations that may be entered in the patent file.

2283 Revised to update 37 CFR 1.565(c) and the discussion regarding merger of multiple copending reexamination proceedings.

2285 Revised to update 37 CFR 1.565(d) and the discussion regarding conduct of merged reissue application and reexamination proceeding.

2286 Revised to add discussion of two Federal Circuit decisions involving reexamination proceedings where the court affirmed the Office’s rejections even though parallel district court proceeding upheld the claims as valid and infringed.

2287 The Office of Publication has been changed to the Office of Data Management. Revised to indicate that if a patent expires during the pendency of a reexamination proceeding for that patent, all amendments to the patent claims and all claims added during the reexamination proceeding must be withdrawn.

12 Rev. 7, July 2008

2287.01 New section has been added directed to examiner consideration of submissions after a NIRC.

2288 Revised to update 37 CFR 1.570.

2294 Revised to add discussion regarding what to do with a reexamination file in which the reexamination proceeding has been terminated.

2295 The Office of Publication has been changed to the Office of Data Management.

CHAPTER 2500:

2501 Revised to indicate that 35 U.S.C. 41(b) as reproduced in this section has been extended through fiscal year 2008. The Office of Initial Patent Examination has been changed to the Office of Patent Application Processing.

2504 Revised to clarify that only one maintenance fee is required for all the multiple reissue patents that replaced the single original patent.

2510 Revised to indicate that maintenance fee payment cannot be submitted by using EFS-Web. The mailing address for submitting maintenance fee payments and correspondence related to maintenance fees has been updated.

2515 Revised to clarify that the maintenance fee transmittal form should be used when submitting maintenance fees by mail or by facsimile transmissions.

2542 The Office of Initial Patent Examination has been changed to the Office of Patent Application Processing.

2560 The Office of Initial Patent Examination has been changed to the Office of Patent Application Processing.

2570 Instructions regarding how to access maintenance fee status information over the Internet have been updated.

2590 Revised to add discussion regarding auto-processing of petitions to accept unintentionally delayed payment of a maintenance fee in an expired patent submitted by EFS-Web.

2595 Forms PTO/SB/45 and PTO/SB/47 have been updated.

13 Rev. 7, July 2008

CHAPTER 2600:

2602 Revised to update 37 CFR 1.902.

2609 Revised to indicate that “litigation tactics” are not tolerated in reexamination proceedings and that parties are expected to adhere to the provisions of 37 CFR 10.18(b) throughout the course of a reexamination proceeding.

2610 Revised to update 37 CFR 1.915.

2612 Revised to add discussion regarding challenging the accuracy of a certification submitted under 37 CFR 1.915(b)(7).

2613 Revised to update 37 CFR 1.915(c). Revised to clarify that an attorney or agent representing a requester in a reexamination proceeding must be a registered patent practitioner.

2614 Revised to update 37 CFR 1.915(c). Revised to clarify that the request must identify each substantial new question of patentability raised and each proposed ground of rejection. Revised to indicate that where service was not possible after a reasonable effort to do so, requester must submit a duplicate copy of the request papers to the Office together with a cover letter including an explanation of what effort was made to effect service and why that effort was not successful. The cover letter should be clearly worded to avoid the possibility of the Office erroneously charging a duplicate filing fee. Revised to indicate that an application data sheet cannot be submitted in a reexamination proceeding. Form PTO/SB/58 has been updated.

2616 Revised to add discussion of the Supreme Court decision in KSR.

2617 Revised to add a chart to illustrate rejections based on 35 U.S.C. 102(g)(2) in a reexamination proceeding. Revised to indicate that an admission made outside the record of the file or the court record may be admitted pursuant to MPEP § 2686.

2618 Revised to indicate that the requirement for copies of U.S. patents and U.S. patent application publications (37 CFR 1.915(b)(4)) relied upon or referred to in a reexamination request has been waived. Revised to indicate that it is not required and parties are not permitted to submit copies of copending reexamination proceedings and applications in a reexamination request.

2620 Revised to indicate that where service was not possible after a reasonable effort to do so, requester must submit a duplicate copy of the request

14 Rev. 7, July 2008

papers to the Office together with a cover letter including an explanation of what effort was made to effect service and why that effort was not successful. The cover letter should be clearly worded to avoid the possibility of the Office erroneously charging a duplicate filing fee.

2622 Revised to update 37 CFR 1.33(c). Revised to add x-reference to MPEP § 324 regarding establishing an assignee’s right to take action when submitting a power of attorney. Form PTO/SB/82 has been deleted and replaced by form PTO/SB/81.

2623 Form PTO/SB/83 has been updated.

2624 Revised to indicate that effective July 9, 2007, the Office began accepting requests for reexamination and “follow on” papers submitted by EFS- Web. Revised to indicate that the certificate of mailing and transmission procedures set forth in 37 CFR 1.8 may be used to file any paper in an inter partes reexamination, except for a request for reexamination and a corrected/replacement request for reexamination.

2625 Revised to update 37 CFR 1.902.

2629 The Office of Publication has been changed to the Office of Data Management.

2632 Revised to indicate that non-patent literature in a reexamination file is not available for viewing by members of the public.

2632.01 The title of this section has been revised.

2635 The Office of Publication has been changed to the Office of Data Management.

2638 Revised to indicate that reexamination fees are based on full cost recovery and it is essential that all time expended on reexamination activities be reported accurately.

2640 Revised to update 37 CFR 1.923. Revised to indicate that in order for a second or subsequent request for reexamination to be granted, the second or subsequent requester must independently provide a substantial new question of patentability which is different from that raised in the pending reexamination for the claims in effect at the time of the determination (37 CFR 1.923. Revised to add x-references to MPEP § 2686.01 and MPEP § 2283.

2642 Revised to add reference to the Supreme Court decision in KSR. Revised to indicate that in order for a second or subsequent request for

15 Rev. 7, July 2008

reexamination to be granted, the second or subsequent requester must independently provide a substantial new question of patentability which is different from that raised in the pending reexamination for the claims in effect at the time of the determination (37 CFR 1.923).

2656 Revised to be consistent with 37 CFR 1.98(a)(2).

2657 Revised to indicate that the reexamination request must provide a listing of the patents and printed publications in accordance with 37 CFR 1.98.

2658 Form paragraph has been revised.

2666 Revised discussion regarding supplemental response to an Office action in an inter partes reexamination proceeding. Revised to indicate that an application data sheet is an improper paper in a reexamination proceeding.

2666.01 Revised to update 37 CFR 1.530(f) and (l).

2666.04 Revised to update 37 CFR 1.20(c).

2666.05 Revised to add discussion regarding circumstances where the patent owner files a response to an Office action and the page length of the response exceeds the page length set forth in 37 CFR 1.943(b). Revised discussion regarding when new prior art can be submitted with comments.

2666.07 Revised to indicate that if a patent owner’s response to an Office action on the merits that is served on a third party requester is received by the third party requester more than 5 business days after the date of service set forth on the certificate of service, the third party requester may submit a verified statement, specifying the date of the actual receipt, as an attachment to the third party requester’s comments and the Office will treat the date of actual receipt to be the date of service for purposes of 35 U.S.C. 314(b)(2).

2666.10 Revised to update 37 CFR 1.957(b).

2667 Revised to indicate that where an inappropriate paper has been scanned into IFW of the reexamination proceeding before discovery of the inappropriate nature of the paper, the paper will be marked as “non- public” and “closed” so that the paper does not appear in the active IFW record with the other active papers that comprise the public record of the reexamination proceeding. Revised to indicate that the provisions of 37 CFR 1.943(c) are waived to the extent that the table of contents pages, the table of case law pages, and the pages of the claims (but not claim charts applying the art to the claims) are excluded from the 30 page limit required by 37 CFR 1.943(c). Revised to indicate that after an opposition

16 Rev. 7, July 2008

to any patent owner petition is filed by a third party requester, any further paper in opposition/rebuttal/response to the third party opposition paper will not be considered and will be returned.

2668 Revised to update 37 CFR 1.137

2671.01 Form paragraph has been revised.

2671.02 Form paragraph has been revised.

2672 Revised to indicate that if the patent owner’s submission of comments under 37 CFR 1.951(a) addresses issues not already raised in the action closing prosecution (ACP), the comments will be returned as improper. If the comments have been scanned into the IFW for the reexamination proceeding before the discovery of the impropriety, they should be expunged from the record, with notification being sent to the party that submitted the comments.

2673.02 Revised to update 37 CFR 1.953(b) and (c).

2685 Revised to indicate that the Office (paralegal or legal instruments examiner or support staff) may, in its sole discretion, telephone a party as to matter of completing or correcting the record of a file, where the subject matter discussed does not go to the merits of the reexamination proceeding (e.g., calls to obtain a certificate of service). Revised to indicate that it is permitted for a paralegal or legal instruments examiner (or support staff) to telephone a requester to discuss a request that fails to comply with the filing date requirements for filing a reexamination request because there is no reexamination proceeding yet.

2686 Revised to add discussion regarding court decision papers that may be entered in a reexamination file.

2686.01 Revised to update 37 CFR 1.989(a) and the discussion regarding merger of multiple copending reexamination proceedings.

2686.03 Revised to update 37 CFR 1.991 and 1.997 and the discussion regarding conduct of merged reissue application and reexamination proceeding.

2686.04 Revised to add discussion of two Federal Circuit decisions involving reexamination proceedings where the court affirmed the Office’s rejections even though parallel district court proceeding upheld the claims as valid and infringed.

2687 The Office of Publication has been changed to the Office of Data Management. Revised to indicate that if a patent expires during the

17 Rev. 7, July 2008

pendency of a reexamination proceeding for that patent, all amendments to the patent claims and all claims added during the reexamination proceeding must be withdrawn.

2687.01 Revised to add x-reference to MPEP § 2656.

2688 Revised to update 37 CFR 1.997.

2694 Revised to add discussion regarding what to do with a reexamination file in which the reexamination proceeding has been terminated.

18 Rev. 7, July 2008

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

100-1 Rev. 5, Aug. 2006

101 General 102 Information as to Status of an Application 103 Right of Public to Inspect Patent Files and Some

Application Files 104 Power to Inspect Application 105 Suspended or Excluded Practitioner Cannot

Inspect 106 Control of Inspection by Assignee 106.01 Rights of Assignee of Part Interest 110 Confidential Nature of International

Applications 115 Review of Applications for National Security

and Property Rights Issues 120 Secrecy Orders 121 Handling of Applications and Other Papers

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

101 General [R-5]

35 U.S.C. 122. Confidential status of applications; publication of patent applications.

(a) CONFIDENTIALITY.— Except as provided in subsec- tion (b), applications for patents shall be kept in confidence by the Patent and Trademark Office and no information concerning the same given without authority of the applicant or owner unless necessary to carry out the provisions of an Act of Congress or in such special circumstances as may be determined by the Director.

(b) PUBLICATION.— (1) IN GENERAL.—

(A) Subject to paragraph (2), each application for a patent shall be published, in accordance with procedures deter- mined by the Director, promptly after the expiration of a period of 18 months from the earliest filing date for which a benefit is sought under this title. At the request of the applicant, an applica- tion may be published earlier than the end of such 18-month period.

(B) No information concerning published patent appli- cations shall be made available to the public except as the Director determines.

(C) Notwithstanding any other provision of law, a determination by the Director to release or not to release informa- tion concerning a published patent application shall be final and nonreviewable.

(2) EXCEPTIONS.— (A) An application shall not be published if that appli-

cation is— (i) no longer pending; (ii) subject to a secrecy order under section 181 of

this title;

(iii) a provisional application filed under section 111(b) of this title; or

(iv) an application for a design patent filed under chapter 16 of this title.

(B)(i) If an applicant makes a request upon filing, certi- fying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires pub- lication of applications 18 months after filing, the application shall not be published as provided in paragraph (1).

(ii) An applicant may rescind a request made under clause (i) at any time.

(iii) An applicant who has made a request under clause (i) but who subsequently files, in a foreign country or under a multilateral international agreement specified in clause (i), an application directed to the invention disclosed in the application filed in the Patent and Trademark Office, shall notify the Director of such filing not later than 45 days after the date of the filing of such foreign or international application. A failure of the applicant to provide such notice within the prescribed period shall result in the application being regarded as abandoned, unless it is shown to the satisfaction of the Director that the delay in submitting the notice was unintentional.

(iv) If an applicant rescinds a request made under clause (i) or notifies the Director that an application was filed in a foreign country or under a multilateral international agreement specified in clause (i), the application shall be published in accor- dance with the provisions of paragraph (1) on or as soon as is practical after the date that is specified in clause (i).

(v) If an applicant has filed applications in one or more foreign countries, directly or through a multilateral interna- tional agreement, and such foreign filed applications correspond- ing to an application filed in the Patent and Trademark Office or the description of the invention in such foreign filed applications is less extensive than the application or description of the inven- tion in the application filed in the Patent and Trademark Office, the applicant may submit a redacted copy of the application filed in the Patent and Trademark Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding applications filed in a for- eign country. The Director may only publish the redacted copy of the application unless the redacted copy of the application is not received within 16 months after the earliest effective filing date for which a benefit is sought under this title. The provisions of section 154(d) shall not apply to a claim if the description of the invention published in the redacted application filed under this clause with respect to the claim does not enable a person skilled in the art to make and use the subject matter of the claim.

(c) PROTEST AND PRE-ISSUANCE OPPOSITION.— The Director shall establish appropriate procedures to ensure that no protest or other form of pre-issuance opposition to the grant of a patent on an application may be initiated after publication of the application without the express written consent of the applicant.

(d) NATIONAL SECURITY.— No application for patent shall be published under subsection (b)(1) if the publication or disclosure of such invention would be detrimental to the national security. The Director shall establish appropriate procedures to

101 MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 100-2

ensure that such applications are promptly identified and the secrecy of such inventions is maintained in accordance with chap- ter 17 of this title.

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

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

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

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37 CFR 1.11. Files open to the public. (a) The specification, drawings, and all papers relating to the

file of: A published application; a patent; or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2). If an application was published in redacted form pursuant to § 1.217, the complete file wrapper and contents of the patent appli- cation will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the applica- tion; and the application is still pending. See § 2.27 of this title for trademark files.

*****

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37 CFR 1.14. Patent applications preserved in confidence. (a) Confidentiality of patent application information. Patent

applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.

(1) Records associated with patent applications (see para- graph (g) for international applications) may be available in the following situations:

(i) Patented applications and statutory invention reg- istrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in §1.11(a). A copy of the patent application-as- filed, the file contents of the application, or a specific document in

the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b).

(ii) Published abandoned applications. The file of an abandoned application that has been published as a patent applica- tion publication is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the pub- lished application, or a specific document in the file of the pub- lished application may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b).

(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a spe- cific document in the file of a pending application that has been published as a patent application publication may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specifica- tion, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending appli- cation that has been published, except as provided in paragraph (c) or (h) of this section.

(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent appli- cation publication, or an international patent application publica- tion of an international application that was published in accordance with PCT Article 21(2). An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title and filing date or other application specific informa- tion are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)).

(v) Unpublished pending applications (including pro- visional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropri- ate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a stat- utory invention registration, a U.S. patent application publication, or an international patent application publication that was pub- lished in accordance with PCT Article 21(2). A copy of the appli- cation-as-filed, or a specific document in the file of the pending application may also be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)). The

SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING 101

100-3 Rev. 5, Aug. 2006

Office will not provide access to the paper file of a pending appli- cation, except as provided in paragraph (c) or (h) of this section.

(vi) Unpublished pending applications (including pro- visional applications) that are incorporated by reference or other- wise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or other- wise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.

(vii)When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2), or are not identified in a U.S. patent, a statu- tory invention registration, a U.S. patent application publication, or an international patent application that was published in accor- dance with PCT Article 21(2), are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (h)) or a power to inspect (see paragraph (c)) is necessary to obtain the application, or a copy of the application.

(2) Information concerning a patent application may be communicated to the public if the patent application is identified in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The infor- mation that may be communicated to the public (i.e., status infor- mation) includes:

(i) Whether the application is pending, abandoned, or patented;

(ii) Whether the application has been published under 35 U.S.C. 122(b);

(iii) The application “numerical identifier” which may be:

(A) The eight-digit application number (the two- digit series code plus the six-digit serial number); or

(B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and

(iv) Whether another application claims the benefit of the application (i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 365 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications (e.g., continuation), whether the applica- tion is pending, abandoned or patented, and whether the applica- tion has been published under 35 U.S.C. 122(b).

*****

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

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

Interoffice mail must be sent in appropriate enve- lopes.

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

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

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

Whenever an application, or an artifact file in an Image File Wrapper (IFW) application, is removed from the operating area having custody of the file, a charge on the PALM system must be properly and promptly made.

Official papers are accepted only at a central deliv- ery window, except for certain papers that have been specifically exempted from the central delivery pol- icy. See MPEP § 502. Papers for non-Image File Wrapper (IFW) applications are forwarded to the Technology Center (TC) and must be properly and promptly placed within the appropriate files. If papers

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are received with faulty identifications, this should be corrected at once. If papers are received at a destina- tion for which they are not intended due to faulty identification or routing, appropriate corrective action should be taken at once to ensure the prompt receipt thereof at destination. See MPEP § 508.01 and § 508.03. Similarly, for IFW messages with faulty identifications or incorrect routing, appropriate cor- rective action should be taken at once to ensure the prompt receipt thereof at the appropriate destination. For IFW processing, see the IFW Manual.

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

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

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

Extreme care should be taken to prevent inadvert- ent and/or inappropriate disclosure of the filing date or application number of any application. This applies not only to Office actions but also to notes (usually in pencil) in the file wrapper or in the artifact folder of IFW applications.

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

37 CFR 1.14. Patent applications preserved in confidence. > (a) Confidentiality of patent application information. Patent

applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.<

*****

(2) Information concerning a patent application may be communicated to the public if the patent application is identified in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The infor- mation that may be communicated to the public (i.e., status infor- mation) includes:

(i) Whether the application is pending, abandoned, or patented;

(ii) Whether the application has been published under 35 U.S.C. 122(b);

(iii) The application “numerical identifier” which may be:

(A) The eight-digit application number (the two- digit series code plus the six-digit serial number); or

(B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and

(iv) Whether another application claims the benefit of the application (i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 365 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications (e.g., continuation), whether the applica- tion is pending, abandoned or patented, and whether the applica- tion has been published under 35 U.S.C. 122(b).

*****

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

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

The following procedure should be followed before any information about an unpublished pending or abandoned patent application is given over the tele- phone:

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

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

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

(B) Verify that information concerning the appli- cation can be released by checking PALM or the application file.

(1) If the caller stated there was an attorney or agent of record, PALM Intranet should be used to ver- ify the registration number given or to obtain the reg- istration number of an attorney or agent of record. Then PALM Intranet (using the registration number) should be used to obtain a telephone number for an attorney or agent of record.

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

(C) Return the call using the telephone number as specified below.

(1) If an attorney or agent is of record in the application, information concerning the application should only be released by calling the attorney’s or agent’s telephone number obtained from PALM Intra- net.

(2) If the applicant or an authorized representa- tive of the assignee of record requests information, and there is no attorney or agent of record and the cor- respondence address of record has been verified, information concerning the application can be released to the caller using the telephone number given by the caller. If the caller’s association with the application cannot be verified, no information con- cerning the application will be released. However, the caller should be informed that the caller’s association with the application could not be verified.

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

102 Information as to Status of an Application [R-2]

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

(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.

(1) Records associated with patent applications (see para- graph (g) for international applications) may be available in the following situations:

(i) Patented applications and statutory invention reg- istrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in §1.11(a). A copy of the patent application-as- filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b).

(ii) Published abandoned applications. The file of an abandoned application that has been published as a patent applica- tion publication is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the pub- lished application, or a specific document in the file of the pub- lished application may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b).

(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a spe- cific document in the file of a pending application that has been published as a patent application publication may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specifica- tion, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending appli-

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cation that has been published, except as provided in paragraph (c) or (h) of this section.

(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent appli- cation publication, or an international patent application publica- tion of an international application that was published in accordance with PCT Article 21(2). An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title and filing date or other application specific informa- tion are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)).

(v) Unpublished pending applications (including pro- visional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropri- ate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a stat- utory invention registration, a U.S. patent application publication, or an international patent application publication that was pub- lished in accordance with PCT Article 21(2). A copy of the appli- cation-as-filed, or a specific document in the file of the pending application may also be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending appli- cation, except as provided in paragraph (c) or (h) of this section.

(vi) Unpublished pending applications (including pro- visional applications) that are incorporated by reference or other- wise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or oth- erwise identified in a U.S. patent, a statutory invention registra- tion, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). The Office will not provide access to the paper file of a pending application, except as provided in para- graph (c) or (h) of this section.

(vii)When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an

application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2), or are not identified in a U.S. patent, a statu- tory invention registration, a U.S. patent application publication, or an international patent application that was published in accor- dance with PCT Article 21(2), are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (h)) or a power to inspect (see paragraph (c)) is necessary to obtain the application, or a copy of the application.

(2) Information concerning a patent application may be communicated to the public if the patent application is identified in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The infor- mation that may be communicated to the public (i.e., status infor- mation) includes:

(i) Whether the application is pending, abandoned, or patented;

(ii) Whether the application has been published under 35 U.S.C. 122(b);

(iii) The application “numerical identifier” which may be:

(A) The eight-digit application number (the two- digit series code plus the six-digit serial number); or

(B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and

(iv) Whether another application claims the benefit of the application (i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 365 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications (e.g., continuation), whether the applica- tion is pending, abandoned or patented, and whether the applica- tion has been published under 35 U.S.C. 122(b).<

*****

Status information of an application means only the following information:

(A) whether the application is pending, aban- doned, or patented;

(B) whether the application has been published; * (C) the application number or the serial number

plus any one of the filing date of the national applica- tion, the international filing date or the date of entry into the national stage*>; and

(D) whether another application claims the bene- fit of the application (i.e., whether there are any appli- cations that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 365 of the application), and if there are any such applications, status informa- tion therefor as set forth in 37 CFR 1.14(a)(2)(iv).<

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A requester seeking status information regarding an application should check the Patent Application Information Retrieval (PAIR) system on the U.S. Patent and Trademark Office (USPTO) website at *>http://www.uspto.gov/ebc<. Alternatively, the requester may contact the File Information Unit (see MPEP § 1730). The File Information Unit (FIU) will check the relevant Office records and will inform the requester whether the application has been published or has issued as a patent. If the application has been published, the FIU will inform the requester of the publication number and publication date, and if the application has issued as a patent, the patent number, issue date and classification. If the application has not been published, but is pending or abandoned then the FIU should determine whether the requester is:

(A) an inventor; (B) an attorney or agent of record in the applica-

tion; (C) an assignee of record in the application; or (D) a person with written authority from (A), (B),

or (C).

If the requester is (A), (B), (C), or (D), as set forth above, then the requester is entitled to status informa- tion. If the requester is inquiring about whether a reply was received or when an Office action can be expected, the requester should be directed to call the Technology Center (TC) to which the application is assigned. The assignment of an application to a TC can be determined from PALM Intranet **.

If the requester is not (A), (B), (C), or (D), as set forth above, and the application is (1) identified by application number (or serial number and filing date) in a published patent document, or (2) an application claiming the benefit of the filing date of an applica- tion identified by application number (or serial num- ber and filing date) in a published patent document, then a written request including a copy of a published patent document (United States or foreign) which refers to the specific application must be provided when requesting status information for the applica- tion. If the published patent document is not in English, then a translation of the pertinent part thereof must also be included. The published patent document may be presented in person to the FIU or in written correspondence to the U.S. Patent and Trademark Office, for example, by facsimile transmission. Any

written correspondence must include a return address or facsimile number. If the application is referred to by application number or serial number and filing date in a published patent document (e.g., a U.S. patent, >a statutory invention registration,< a U.S. patent application publication, or an international application publication), or in a U.S. application open to public inspection, pursuant to 37 CFR *>1.14(a)<, the requester is entitled to status information for the application. (The published patent document will at least identify the application from which the patent itself was issued.) PALM Intranet ** should be used to determine the status of the application. If the requester asks whether there are any applications on file which claim the benefit of the filing date of the identified application, pursuant to 37 CFR *>1.14(a)(2)(iv)<, status information (application number, filing date and whether the application is pending, abandoned or patented) for the applications claiming benefit of the identified application may be given to the requester as well. PALM Intranet ** should be used to determine the application number and filing date of any applications claiming the bene- fit of the filing date of the identified application. The requester should be informed of the national applica- tions listed in the “child” section of the screen. If the child application is not shown to have been patented **>, PALM Intranet< should be used to determine whether the application is pending or abandoned. Alternatively, ** PALM *>Intranet< may be used with the patent number for continuity data for the patent. Other information contained on the screen, such as whether the application is a Continuation-in- Part (CIP), continuation or divisional application, the date of abandonment of the application, and the issue date, may be confidential information and should not be communicated. As to the extent of the chain of applications for which status information is available, the rule applies only to subsequent and not prior applications.

Furthermore, if the requester is not (A), (B), (C), or (D), as set forth above, but the application is a national stage application or any application claiming the benefit of the filing date of a published interna- tional application and the United States of America has been indicated as a Designated State in the inter- national application, pursuant to 37 CFR *>1.14(a)(2)(iv)<, the requester is entitled to status

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information for the national stage application as well as any application claiming the benefit of the filing date of the published international application. A copy of the first page of the published international applica- tion or of the corresponding page of the PCT Gazette must be supplied with the status request. ** The status request should be **>made in writing to the Office of PCT Legal Administration< (see MPEP § 1730). Alternatively, inquiries relating to applications claim- ing the benefit of the filing date of a published inter- national application may be directed to the PCT Help desk. Only the serial number and filing date, or appli- cation number, as well as whether the application is pending, abandoned, or patented may be given for the national stage application and for any applications claiming the benefit of the filing date of the refer- enced published international application. Other information contained on the >continuity data< screen, such as whether the application is a CIP, con- tinuation or divisional application, the date of aban- donment of the application and issue date may be confidential information and should not be communi- cated.

STATUS LOCATION INFORMATION FOR OF- FICE PERSONNEL

When it is desired to determine the current location or status of an application, Office personnel should use PALM. >If the application is an Image File Wrap- per (IFW) application, no location is associated with the file. For the location of any artifact file(s) associ- ated with an IFW application, see the IFW Manual.<

**Office personnel requesting status/location infor- mation on * applications ** >prior to 07 series appli- cations that are not< in the PALM system **>should< contact the FIU (see MPEP § 1730) where the numer- ical index records of the above mentioned applica- tions are maintained.

103 Right of Public To Inspect Patent Files and Some Application Files [R-5]

37 CFR 1.11. Files open to the public. **>

(a) The specification, drawings, and all papers relating to the file of: A published application; a patent; or a statutory invention registration are open to inspection by the public, and copies may be obtained upon the payment of the fee set forth in § 1.19(b)(2).

If an application was published in redacted form pursuant to § 1.217, the complete file wrapper and contents of the patent appli- cation will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the applica- tion; and the application is still pending. See § 2.27 of this title for trademark files.<

(b) All reissue applications, all applications in which the Office has accepted a request to open the complete application to inspection by the public, and related papers in the application file, are open to inspection by the public, and copies may be furnished upon paying the fee therefor. The filing of reissue applications, other than continued prosecution applications under § 1.53(d) of reissue applications, will be announced in the Official Gazette. The announcement shall include at least the filing date, reissue application and original patent numbers, title, class and subclass, name of the inventor, name of the owner of record, name of the attorney or agent of record, and examining group to which the reissue application is assigned.

**> (c) All requests for reexamination for which all the require-

ments of § 1.510 or § 1.915 have been satisfied will be announced in the Official Gazette. Any reexaminations at the initiative of the Director pursuant to § 1.520 will also be announced in the Official Gazette. The announcement shall include at least the date of the request, if any, the reexamination request control number or the Director initiated order control number, patent number, title, class and subclass, name of the inventor, name of the patent owner of record, and the examining group to which the reexamination is assigned.<

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

**> (e) Except as prohibited in § 41.6(b), the file of any interfer-

ence is open to public inspection and copies of the file may be obtained upon payment of the fee therefor.<

37 CFR 1.14. Patent applications preserved in confidence. (a) Confidentiality of patent application information. Patent

applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.

(1) Records associated with patent applications (see para- graph (g) for international applications) may be available in the following situations:

(i) Patented applications and statutory invention reg- istrations. The file of an application that has issued as a patent or published as a statutory invention registration is available to the public as set forth in §1.11(a). A copy of the patent application-as- filed, the file contents of the application, or a specific document in the file of such an application may be provided upon request and payment of the appropriate fee set forth in § 1.19(b).

(ii) Published abandoned applications. The file of an abandoned application that has been published as a patent applica-

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100-9 Rev. 5, Aug. 2006

tion publication is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the pub- lished application, or a specific document in the file of the pub- lished application may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b).

(iii) Published pending applications. A copy of the application-as-filed, the file contents of the application, or a spe- cific document in the file of a pending application that has been published as a patent application publication may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specifica- tion, drawings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending appli- cation that has been published, except as provided in paragraph (c) or (h) of this section.

(iv) Unpublished abandoned applications (including provisional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent appli- cation publication, or an international patent application publica- tion of an international application that was published in accordance with PCT Article 21(2). An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title and filing date or other application specific informa- tion are provided in the text of the patent, but not when the same identification is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)).

(v) Unpublished pending applications (including pro- visional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropri- ate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a stat- utory invention registration, a U.S. patent application publication, or an international patent application publication that was pub- lished in accordance with PCT Article 21(2). A copy of the appli- cation-as-filed, or a specific document in the file of the pending application may also be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending appli- cation, except as provided in paragraph (c) or (h) of this section.

(vi) Unpublished pending applications (including pro- visional applications) that are incorporated by reference or other-

wise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or other- wise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.

(vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2), or are not identified in a U.S. patent, a statu- tory invention registration, a U.S. patent application publication, or an international patent application that was published in accor- dance with PCT Article 21(2), are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (h)) or a power to inspect (see paragraph (c)) is necessary to obtain the application, or a copy of the application.

(2) Information concerning a patent application may be communicated to the public if the patent application is identified in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The infor- mation that may be communicated to the public (i.e., status infor- mation) includes:

(i) Whether the application is pending, abandoned, or patented;

(ii) Whether the application has been published under 35 U.S.C. 122(b);

(iii) The application “numerical identifier” which may be:

(A) The eight-digit application number (the two- digit series code plus the six-digit serial number); or

(B) The six-digit serial number plus any one of the filing date of the national application, the international filing date, or date of entry into the national stage; and

(iv) Whether another application claims the benefit of the application (i.e., whether there are any applications that claim the benefit of the filing date under 35 U.S.C. 119(e), 120, 121 or 365 of the application), and if there are any such applications, the numerical identifier of the application, the specified relationship between the applications (e.g., continuation), whether the applica- tion is pending, abandoned or patented, and whether the applica- tion has been published under 35 U.S.C. 122(b).

*****

I. ACCESS TO IMAGE FILE WRAPPER (IFW) APPLICATIONS

The USPTO adopted an electronic data processing system for the storage and maintenance of all records

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associated with patent applications. All new applica- tions filed on or after June 30, 2003 are stored in this system as an Image File Wrapper (IFW), and the IFW is the official record of the application. Similarly, as earlier filed pending applications are loaded into the IFW system, the electronic record will be the official record of the application. There is no corresponding paper file wrapper for IFW applications. When access to IFW applications is available to the public in the File Information Unit (FIU) and/or over the Internet, the public will be able to access pending and aban- doned published patent applications pursuant to 37 CFR 1.14(a)(1)(ii) and (iii). If an application is an IFW application and FIU/Internet access is not yet available for IFW applications, then the file itself will not be available to the public for inspection. However, copies of the application file may be obtained pursu- ant to 37 CFR 1.14(a)(1)(ii) and (iii).

II. PUBLISHED U.S. PATENT APPLICA- TIONS

37 CFR 1.14. Patent applications preserved in confidence. (a) Confidentiality of patent application information. Patent

applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.

(1) Records associated with patent applications (see para- graph (g) for international applications) may be available in the following situations:

*****

(ii) Published abandoned applications. The file of an abandoned application that has been published as a patent applica- tion publication is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the pub- lished application, or a specific document in the file of the pub- lished application may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b).

(iii) Published pending applications. A copy of the appli- cation-as-filed, the file contents of the application, or a specific document in the file of a pending application that has been pub- lished as a patent application publication may be provided to any person upon request, and payment of the appropriate fee set forth in § 1.19(b). If a redacted copy of the application was used for the patent application publication, the copy of the specification, draw- ings, and papers may be limited to a redacted copy. The Office will not provide access to the paper file of a pending application that has been published, except as provided in paragraph (c) or (h) of this section.

*****

If a patent application has been published pursuant to 35 U.S.C. 122(b), then a copy of the specification, drawings, and all papers relating to the file of that published application (whether abandoned or pend- ing) may be provided to any person upon written request and payment of the fee set forth in 37 CFR 1.19(b). See 37 CFR 1.14(a)(1)(ii) and (iii). If a redacted copy of the application was used for the patent application publication, the copy of the appli- cation will be limited to the redacted copy of the application and the redacted materials provided under 37 CFR 1.217(d).

See paragraph I., above, for information pertaining to access to Image File Wrapper (IFW) applications. >Published applications maintained in the IFW sys- tem are available on the USPTO’s Internet website in the public Patent Application Information Retrieval (PAIR) system.< If the published patent application is pending >and it is not maintained in the IFW system<, the >paper< application file itself will not be available to the public for inspection. Only copies of the appli- cation file may be obtained pursuant to 37 CFR 1.14(a)(1)(iii). If the published patent application is abandoned, the entire application is available to the public for inspection and obtaining copies. See 37 CFR 1.11(a).

III. UNPUBLISHED ABANDONED AND PENDING APPLICATIONS (INCLUDING PROVISIONAL APPLICATIONS) THAT ARE IDENTIFIED

37 CFR 1.14. Patent applications preserved in confidence.

*****

(a) Confidentiality of patent application information. Patent applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.

(1) Records associated with patent applications (see para- graph (g) for international applications) may be available in the following situations:

*****

(iv) Unpublished abandoned applications (including pro- visional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made

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available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication of an international application that was published in accordance with PCT Article 21(2). An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title and filing date or other application specific information are pro- vided in the text of the patent, but not when the same identifica- tion is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)).

*****

(vi) Unpublished pending applications (including provi- sional applications) that are incorporated by reference or other- wise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or other- wise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.

*****

Abandoned applications meeting the requirements of 37 CFR 1.14(a)(1)(iv) and any application that is open to the public under 37 CFR 1.11 may be obtained by any person upon written request to the FIU without the specific written authority of the applicant, assignee, attorney or agent of record or Director. The following abandoned applications are available from the FIU: (A) An abandoned application referred to in a U.S. patent application publication or U.S. patent; and (B) a pending File Wrapper Continu- ation application (FWC) filed under former 37 CFR 1.62 of an abandoned application that meets the requirements of 37 CFR 1.14(a)(1)(iv). Under former 37 CFR 1.62(f), where access is permitted to an appli- cation within the file wrapper of a FWC application, the applicant has waived the right to keep all earlier

filed applications in the same file wrapper in confi- dence.

37 CFR 1.14(a)(1)(i) relates only to United States applications that are open to public inspection. See 37 CFR 1.14(g)(3)-(5) for access to international applications where the U.S. is designated. See also MPEP § 110. If an abandoned application is referred to in an international application that is published in accordance with PCT Article 21(2), access to the abandoned application is available under 37 CFR 1.14(a)(1)(iv).

An abandoned non-IFW application identified in a U.S. patent application publication, U.S. patent or a U.S. application that is open to public inspection may be ordered for inspection by any member of the public through the FIU. An abandoned file received by a member of the public must be returned to the charge counter in the FIU before closing the same day it is received. If the abandoned application is contained within a pending FWC application, the requester will generally be directed to the appropriate Technology Center (TC) to inquire as to the availability of the pending FWC application. If the pending FWC appli- cation is available, it will be forwarded to the FIU for the requester to pick-up. See paragraph I., above, for information pertaining to access to IFW applications.

The incorporation by reference of a pending appli- cation in a U.S. patent application publication, a U.S. patent, a published international application published in accordance with PCT Article 21(2), or a statutory invention registration constitutes a special circumstance under 35 U.S.C. 122 warranting that a copy of the application-as-filed be provided upon written request as provided in 37 CFR 1.14(a)(1)(iv). In addition, if a U.S. patent application publication, a U.S. patent, or a published international application claims benefit under 35 U.S.C. 119(e), 120, 121, or 365 to a U.S. patent application, a copy of that appli- cation-as-filed may be provided upon written request, >or available through the public PAIR system if the application is maintained in the IFW system<. A ben- efit claim in an international application that does not designate the United States is not a claim under 35 U.S.C. 119(e), 120, 121 or 365. The written request, including a copy of the page of the patent application publication, U.S. patent, or published international application including the incorporation by reference or specific reference under 35 U.S.C. 119(e), 120,

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121, or 365, and the requisite fee set forth in 37 CFR 1.19(b)(1), should be directed to the Certification Division. However, an incorporation by reference that is made as part of a transmittal letter for the applica- tion, or that is a part of the text of the application that has been canceled and which does not appear as part of the printed patent, may not be relied upon to obtain a copy of the application as originally filed. A petition for access with an explanation of special circum- stances other than the not-printed incorporation by reference will be required. See 37 CFR 1.14(a)(1)(vii).

Copies of a patent application-as-filed and the con- tents of a patent application file wrapper may be ordered from the Certification Division with a facsim- ile request and payment of the appropriate fee under 37 CFR 1.19(b) by USPTO Deposit Account, American Express®, Discover®, MasterCard®, or Visa® by any person having a right to access to the originally filed application or patent. The Office does not provide for access to non-United States applica- tions.

Form PTO/SB/68 may be used to request access.

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**>

<

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IV. ACCESS WHERE PART OF AN APPLICATION IS INCORPORATED BY REFERENCE IN A U.S. PATENT APPLICATION PUBLICATION OR A U.S. PATENT

37 CFR 1.14(a)(1)(vi) permits a member of the public, without a petition for access, to obtain a copy of a pending application as originally filed, when the application is incorporated by reference in a U.S. patent application publication or a U.S. patent, upon the filing of an appropriate request and the payment of the required fee. However, if only part of the applica- tion is incorporated by reference, for example, where an application states, “the disclosure of a valve on page 5, lines 5-35, of application No. XX/YYY,YYY, is hereby incorporated by reference,” then a petition for access is required to obtain access to or a copy of the incorporated material. Incorporation by reference of part of an application in a U.S. patent application publication or a U.S. patent constitutes a special cir- cumstances under 35 U.S.C. 122(a) warranting that access to that part of the original disclosure of the application be granted on petition. The incorporation by reference will be interpreted as a waiver of confi- dentiality of only that part of the original disclosure as filed, and not the entire application file. In re Gallo, 231 USPQ 496 (Comm’r Pat. 1986). If applicant objects to access to the entire application file, appli- cant must file two copies of the information incorpo- rated by reference along with the objection. In the example given, applicant would be required to pro- vide two copies of page 5, lines 5-35 of the XX/ YYY,YYY application. Failure to provide the mate- rial within the time period provided will result in the entire application content (including prosecution his- tory) being made available to the petitioner. The Office will not attempt to separate the noted materials from the remainder of the application. Compare In re Marsh Eng’g. Co., 1913 C.D. 183 (Comm’r Pat. 1913).

V. PETITION FOR ACCESS

37 CFR 1.14. Patent applications preserved in confidence. > (a) Confidentiality of patent application information. Patent

applications that have not been published under 35 U.S.C. 122(b) are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject

matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.

(1) Records associated with patent applications (see para- graph (g) for international applications) may be available in the following situations:<

*****

(vii) When a petition for access or a power to inspect is required. Applications that were not published or patented, that are not the subject of a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a statutory invention registration, a U.S. patent application publication, or an international patent application publication that was published in accordance with PCT Article 21(2), or are not identified in a U.S. patent, a statu- tory invention registration, a U.S. patent application publication, or an international patent application that was published in accor- dance with PCT Article 21(2), are not available to the public. If an application is identified in the file contents of another application, but not the published patent application or patent itself, a granted petition for access (see paragraph (h)) or a power to inspect (see paragraph (c)) is necessary to obtain the application, or a copy of the application.

*****

(h) Access or copies in other circumstances. The Office, either sua sponte or on petition, may also provide access or copies of all or part of an application if necessary to carry out an Act of Congress or if warranted by other special circumstances. Any petition by a member of the public seeking access to, or copies of, all or part of any pending or abandoned application preserved in confidence pursuant to paragraph (a) of this section, or any related papers, must include:

(1) **>The fee set forth in § 1.17(g); and< (2) A showing that access to the application is necessary

to carry out an Act of Congress or that special circumstances exist which warrant petitioner being granted access to all or part of the application.

Any interested party may file a petition, accompa- nied by the petition fee, to the Director for access to an application. Inasmuch as the post office address is necessary for the complete identification of the peti- tioner, it should always be included complete with ZIP Code number. In addition, telephone and facsim- ile numbers should be provided to expedite handling of the petition. Petitions for access are handled in the Office of Patent Legal Administration, unless the application is involved in an interference. See MPEP § 1002.02(b).

The petition may be filed either with proof of ser- vice of copy upon the applicant, assignee of record, or attorney or agent of record in the application to which

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access is sought, or the petition may be filed in dupli- cate, in which case the duplicate copy will be sent by the Office to the applicant, assignee of record, or attorney or agent of record in the application (herein- after “applicant”). A separate petition, with fee, must be filed for each application file to which access is desired. Each petition should show not only why access is desired, but also why petitioner believes he or she is entitled to access. The applicant will nor- mally be given a limited period such as 3 weeks within which to state any objection to the granting of the petition for access and reasons why it should by denied. If applicant states that he or she has no objec- tion to the requested access, the petition will be granted. If objection is raised or applicant does not respond, the petition will be decided on the record. If access is granted to the application, any objections filed by the applicant will be available to the peti- tioner since these papers are in the application file. If access to the application is denied, petitioner will not receive copies of any objections filed by the applicant. A determination will be made whether “special cir- cumstances” are present which warrant a grant of access under 35 U.S.C. 122. See below when the application is the basis of a claim for benefit of an ear- lier filing date under 35 U.S.C. 120 or part of the application is incorporated by reference in a United States patent. “Special circumstances” could be found where an applicant has relied upon his or her applica- tion as a means to interfere with a competitor’s busi- ness or customers. See In re Crossman, 187 USPQ 367 (PTO Solicitor 1975); In re Trimless Cabinets, 128 USPQ 95 (Comm’r Pat. 1960); and Ex parte Bon- nie-B Co., 1923 C.D. 42, 313 O.G. 453 (Comm’r Pat. 1922). Furthermore, “special circumstances” could be found where an attorney or agent of record in an application in which a provisional double patenting rejection is made does not have power of attorney in the copending application having a common assignee or inventor. However, a more expeditious means of obtaining access would be to obtain power to inspect from an assignee or inventor. See MPEP § 104 and § 106.01.

VI. ACCESS WHERE PATENT CLAIMS 35 U.S.C. 119(e) 120, 121, or 365 BENEFIT

37 CFR 1.14. Patent applications preserved in confidence. (a) Confidentiality of patent application information. Patent

applications that have not been published under 35 U.S.C. 122(b)

are generally preserved in confidence pursuant to 35 U.S.C. 122(a). Information concerning the filing, pendency, or subject matter of an application for patent, including status information, and access to the application, will only be given to the public as set forth in § 1.11 or in this section.

(1) Records associated with patent applications (see para- graph (g) for international applications) may be available in the following situations:

*****

(iv) Unpublished abandoned applications (including pro- visional applications) that are identified or relied upon. The file contents of an unpublished, abandoned application may be made available to the public if the application is identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent application publication of an international application that was published in accordance with PCT Article 21(2). An application is considered to have been identified in a document, such as a patent, when the application number or serial number and filing date, first named inventor, title and filing date or other application specific information are pro- vided in the text of the patent, but not when the same identifica- tion is made in a paper in the file contents of the patent and is not included in the printed patent. Also, the file contents may be made available to the public, upon a written request, if benefit of the abandoned application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, or has published as a statutory invention registration, a U.S. patent application publication, or an international patent application that was published in accordance with PCT Article 21(2). A copy of the application-as-filed, the file contents of the application, or a specific document in the file of the application may be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)).

(v) Unpublished pending applications (including provi- sional applications) whose benefit is claimed. A copy of the file contents of an unpublished pending application may be provided to any person, upon written request and payment of the appropri- ate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, or 365 in an application that has issued as a U.S. patent, an application that has published as a stat- utory invention registration, a U.S. patent application publication, or an international patent application publication that was pub- lished in accordance with PCT Article 21(2). A copy of the appli- cation-as-filed, or a specific document in the file of the pending application may also be provided to any person upon written request, and payment of the appropriate fee (§ 1.19(b)). The Office will not provide access to the paper file of a pending appli- cation, except as provided in paragraph (c) or (h) of this section.

(vi) Unpublished pending applications (including provi- sional applications) that are incorporated by reference or other- wise identified. A copy of the application as originally filed of an unpublished pending application may be provided to any person, upon written request and payment of the appropriate fee (§ 1.19(b)), if the application is incorporated by reference or other- wise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, or an international patent

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application publication that was published in accordance with PCT Article 21(2). The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (h) of this section.

Whenever a patent relies on the filing date of an earlier but still pending application, the Office permits an applicant to obtain a copy of the prior application, either as originally filed or of the pending file history, upon written request (to the Office of Public Records) and payment of the appropriate fee. Furthermore, after publication of an international application that was published in accordance with PCT Article 21(2), a U.S. patent, a U.S. patent application publication, or a statutory invention registration, the file contents of any abandoned application identified or relied upon in such a publication are available pursuant to 37 CFR 1.14(a)(1)(iv). If the application is pending and bene- fit of the application is claimed pursuant to 35 U.S.C. 119(e), 120, 121 or 365 in such a patent document, then the file contents of the application are available pursuant to 37 CFR 1.14(a)(1)(v). >Such a patent application is available through the public PAIR sys- tem if the application is maintained in the IFW sys- tem.<

VII. ACCESS TO PROVISIONAL APPLICA- TIONS

In provisional applications, access or certified cop- ies will only be given to parties with written authority from a named inventor, the assignee of record, or the attorney or agent of record. Since provisional applica- tions do not require an oath or declaration, there may be no power of attorney in the application. If there is no power of attorney in the provisional application, a certified copy requested by the registered attorney or agent named in the papers accompanying the provi- sional application papers will be supplied to the corre- spondence address of the provisional application. Provisional applications are also available in the same manner as any other application. For example, an application that is relied upon for priority in a U.S. patent and is abandoned is available under 37 CFR 1.14(a)(1)(iv) >and, as a result may be available through public PAIR<.

VIII. APPLICATION AT BOARD OF PATENT APPEALS AND INTERFERENCES

The Board of Patent Appeals and Interferences han- dles all *>requests< for access to applications involved in an interference. See 37 CFR* >41.109<.

IX. DEFENSIVE PUBLICATIONS

If a defensive publication has been published, the entire application is available to the public for inspec- tion and obtaining copies. See MPEP § 711.06.

X. REISSUE APPLICATIONS

37 CFR 1.11(b) opens all reissue applications filed after March 1, 1977 to inspection by the general pub- lic. 37 CFR 1.11(b) also provides for announcement of the filings of reissue applications in the Official Gazette (except for continued prosecution applica- tions filed under 37 CFR 1.53(d)). This announce- ment will give interested members of the public an opportunity to submit to the examiner information pertinent to patentability of the reissue application.

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

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

(A) The filing of reissue applications will be announced in the Official Gazette (except for contin- ued prosecution applications filed under 37 CFR 1.53(d)) and will include certain identifying data as specified in 37 CFR 1.11(b). Any member of the gen- eral public may request access to a particular reissue application filed after March 1, 1977.

(B) Following the announcement in the Official Gazette, the pending reissue application files >(other than those that are maintained in the IFW system)< will be maintained in the TCs and inspection thereof will be supervised by TC personnel. Although no gen- eral limit is placed on the amount of time spent reviewing the files, the Office may impose limita-

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tions, if necessary. No access will be permitted while the application is actively being processed.

(C) Where the reissue application >(other than those that are maintained in the IFW system)< has left the TC for administrative processing, requests for access should be directed to the appropriate supervi- sory personnel in the division or branch where the application is currently located.

(D) The reissue application file is not available to the public once the reissue application file has been released and forwarded by the TC for publication of the reissue patent>, except if the reissue application file is maintained in the IFW system then the reissue application file would be available through the public PAIR system<. This would include any reissue appli- cation files which have been selected for a post-allow- ance screening in the Office of Patent Legal Administration. Unless prosecution is reopened pur- suant to the screening, the reissue application files are not available to the public until the reissue patent issues. This is because the reissue application file is put into a special format for printing purposes upon forwarding the application file for publication, and its release to the public would constitute a disruption of the publication process.

(E) Requests for copies of papers in the reissue application file must be in writing addressed to Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 and may be either mailed or delivered to the Customer Service Window. The price for a copy of an application as filed is set forth in 37 CFR 1.19(b)(1). Since no useful purpose is seen for retaining such written request for copies of papers in reissue applications, they should be destroyed after the order has been completed.

XI. REQUEST FOR REEXAMINATION

An announcement of the filing of each request for reexamination in which the entire fee has been paid, and of each reexamination ordered at the initiative of the Director under 37 CFR 1.520, will be published in the Official Gazette. A reexamination file is normally NOT open to inspection by the general public until the file has been scanned into the reexamination data- base in the Central Reexamination Unit (CRU), at which point an electronic copy of the file is made available to the public. A Reexamination Processing

System (REPS) terminal is available to the public in the Patent Search Room for accessing/copying reex- amination files from the reexamination database. Access is free, and copies are 25 cents per page. All reexamination files are available to the public in elec- tronic format only. See also MPEP § 2232.

XII. DECISIONS **>BY THE DIRECTOR<

37 CFR 1.14. Patent applications preserved in confidence.

*****

**> (e) Decisions by the Director. Any decision by the Director

that would not otherwise be open to public inspection may be pub- lished or made available for public inspection if:

(1) The Director believes the decision involves an inter- pretation of patent laws or regulations that would be of preceden- tial value; and

(2) The applicant is given notice and an opportunity to object in writing within two months on the ground that the deci- sion discloses a trade secret or other confidential information. Any objection must identify the deletions in the text of the deci- sion considered necessary to protect the information, or explain why the entire decision must be withheld from the public to pro- tect such information. An applicant or party will be given time, not less than twenty days, to request reconsideration and seek court review before any portions of a decision are made public under this paragraph over his or her objection<

*****

>

37 CFR 41.6. Public availability of Board records. (a) Publication. (1) Generally. Any Board action is available

for public inspection without a party’s permission if rendered in a file open to the public pursuant to § 1.11 of this title or in an appli- cation that has been published in accordance with §§ 1.211 to 1.221 of this title. The Office may independently publish any Board action that is available for public inspection.

(2) Determination of special circumstances. Any Board action not publishable under paragraph (a)(1) of this section may be published or made available for public inspection if the Direc- tor believes that special circumstances warrant publication and a party does not, within two months after being notified of the intention to make the action public, object in writing on the ground that the action discloses the objecting party’s trade secret or other confidential information and states with specificity that such information is not otherwise publicly available. If the action discloses such information, the party shall identify the deletions in the text of the action considered necessary to protect the informa- tion. If the affected party considers that the entire action must be withheld from the public to protect such information, the party must explain why. The party will be given time, not less than twenty days, to request reconsideration and seek court review

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before any contested portion of the action is made public over its objection.

(b) Record of proceeding. (1) The record of a Board pro- ceeding is available to the public unless a patent application not otherwise available to the public is involved.

(2) Notwithstanding paragraph (b)(1) of this section, after a final Board action in or judgment in a Board proceeding, the record of the Board proceeding will be made available to the pub- lic if any involved file is or becomes open to the public under § 1.11 of this title or an involved application is or becomes pub- lished under §§ 1.211 to 1.221 of this title.<

37 CFR 1.14(e) states the conditions under which significant decisions **>by the Director< that would not otherwise be open to public inspection will be made available to the public. 37 CFR **>41.6 describes the procedure for making a decision< of the Board of Patent Appeals and Interferences **>avail- able to the public. These sections are< applicable to decisions deemed by the Director to involve an inter- pretation of patent laws or regulation that would be of significant precedent value, where such decisions are contained in either pending or abandoned applications or in interference files not otherwise open to the pub- lic. It is applicable whether or not the decision is a final decision of the U.S. Patent and Trademark Office.

37 CFR 1.14(e) *>and 37 CFR 41.6 are< consid- ered to place a duty on the U.S. Patent and Trademark Office to identify significant decisions and to take the steps necessary to inform the public of such decisions, by publication of such decisions, in whole or in part. It is anticipated, however, that no more than a few dozen decisions per year will be deemed of sufficient importance to warrant publication under the authority of this section.

XIII. FOIA REQUESTS

37 CFR 102.4. Requirements for making requests. (a) A request for USPTO records that are not customarily

made available to the public as part of USPTO’s regular informa- tional services must be in writing, and shall be processed under FOIA, regardless of whether FOIA is mentioned in the request. Requests should be sent to the USPTO FOIA Officer, United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450 (records FOIA requires to be made regularly available for public inspection and copying are addressed in § 102.2(c)). For the quickest handling, the request letter and enve- lope should be marked “Freedom of Information Act Request.” For requests for records about oneself, § 102.24 contains addi- tional requirements. For requests for records about another indi- vidual, either a written authorization signed by that individual permitting disclosure of those records to the requester or proof

that individual is deceased (for example, a copy of a death certifi- cate or an obituary) facilitates processing the request.

(b) The records requested must be described in enough detail to enable USPTO personnel to locate them with a reasonable amount of effort. Whenever possible, a request should include specific information about each record sought, such as the date, title or name, author, recipient, and subject matter of the record, and the name and location of the office where the record is located. Also, if records about a court case are sought, the title of the case, the court in which the case was filed, and the nature of the case should be included. If known, any file designations or descriptions for the requested records should be included. In gen- eral, the more specifically the request describes the records sought, the greater the likelihood that USPTO will locate those records. If the FOIA Officer determines that a request does not reasonably describe records, the FOIA Officer will inform the requester what additional information is needed or why the request is otherwise insufficient. The FOIA Officer also may give the requester an opportunity to discuss the request so that it may be modified to meet the requirements of this section.

Many decisions of the Office are available on the FOIA section of the U.S. Patent and Trademark Office website at www.uspto.gov/web/offices/com/ sol/foia/index.html. See 37 CFR Part 102, Subpart A, “Freedom of Information Act,” for rules pertaining to FOIA requests.

104 Power to Inspect Application [R-5]

37 CFR 1.14. Patent applications preserved in confidence.

*****

(c) Power to inspect a pending or abandoned application. Access to an application may be provided to any person if the application file is available, and the application contains written authority (e.g., a power to inspect) granting access to such person. The written authority must be signed by:

(1) An applicant; (2) An attorney or agent of record; (3) An authorized official of an assignee of record (made

of record pursuant to § 3.71 of this chapter); or (4) A registered attorney or agent named in the papers

accompanying the application papers filed under § 1.53 or the national stage documents filed under § 1.495, if an executed oath or declaration pursuant to § 1.63 or § 1.497 has not been filed.

*****

If an executed oath or declaration pursuant to 37 CFR 1.63 or 1.497 has been filed, no person but the applicant (any one of joint applicants), an attorney or agent of record (if a power of attorney was filed), or an assignee whose assignment is of record, will be permitted to have access to the file of any pending application >kept in confidence under 35 U.S.C.

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122(a)<, except as provided for under 37 CFR *>1.11 or 1.14<, former 37 CFR 1.62(f), or under the inter- ference rules, unless written authority from one of the above indicated parties, identifying the application to be inspected and the name of the person authorized to have access, is made of record, or upon the written order of the Director, which will also become a part of the record of the application.

A person acting in a representative capacity under 37 CFR 1.34* may execute a power to inspect an application only if the attorney or agent was named in the application transmittal papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495 and an executed oath or declaration has not been filed. Once an executed oath or declaration has been filed, any previously filed power to inspect signed by an registered attorney or agent who does not have a power of attorney will cease to have effect. For a discussion of power of attorney in an applica- tion, see MPEP § 402.

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

When a power to inspect is received while a file is under the jurisdiction of a service branch, such as the Customer Services Division, the Service Branch of the Board of Patent Appeals and Interferences, and the Publishing Division of the Office of Patent Publi- cation, the question of permission to inspect is decided by the head of the branch who, if he or she approves, indicates the approval directly on the power (in the “Office use only” section).

Powers to inspect are not accepted in Image File Wrapper (IFW) applications. IFW applications are available through the Private Patent Application Information Retrieval (PAIR) system, and pro se applicants and attorneys of record have direct access to the IFW through Private PAIR (when a Customer Number is associated with the correspondence address for the application, and the applicant or attor- ney has access to Private PAIR for the customer num- ber). In **>addition<, IFW application files of

published applications or patents **>are< available at least through Public PAIR. If for some reason an applicant, assignee, or attorney or agent of record can- not view an IFW application through PAIR, then a copy of the application must be purchased from the Office of Public Records.

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

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

An unrestricted power to inspect given by an appli- cant is, under existing practice, recognized as in effect until and unless rescinded. The same is true in the case of one given by the attorney or agent of record, or assignee so long as such attorney or agent, or assignee retains his or her connection with the appli- cation.

Permission to inspect given by the Director, how- ever, is not of a continuing nature, since the condi- tions that justified the permission to inspect when given may not apply at a later date.

ACCESS TO PATENT APPLICATIONS (PRO- VISIONAL AND NONPROVISIONAL) AND INTERFERENCE FILES

In order to ensure that access to patent applications, other than applications that are available pursuant to 37 CFR 1.11 or 1.14, and interference files is given only to persons who are entitled thereto or who are specially authorized to have access under 37 CFR >1.11,< 1.14 >and 41.6< and to ensure also that the file record identifies any such specially authorized person who has been given access to a file, the follow- ing practice will be observed by all personnel of the U.S. Patent and Trademark Office:

(A) Access, as provided for in the rules, will be given on oral request to any applicant, patentee, assignee, or attorney or agent of record in an applica- tion or patent only upon proof of identity or upon rec- ognition based on personal acquaintance.

(B) Where a power of attorney or authorization of agent was given to a registered firm prior to July 2, 1971, access will be given upon oral request as in

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paragraph (A) above to any registered member or employee of the firm who has signatory power for the firm.

(C) Unregistered employees of attorneys or agents, public stenographers, and all other persons not within the provisions of paragraphs (A) and (B) above will be given access only upon presentation of a writ- ten authorization for access (power to inspect) signed by a person specified in paragraph (A) above, which authorization will be entered as a part of the official file. The power to inspect must specifically name the person who is entitled to inspect and copy the applica- tion. An associate or representative of the named per- son is not entitled to access to the application on behalf of the authorized person. Further, the power to inspect must specifically identify the application by application number and be limited to a single applica- tion. Form PTO/SB/67 may be used for this purpose.

(D) In provisional applications, access or certified copies may only be requested by parties with written authority from a named inventor, the assignee of record, or the attorney or agent of record, unless the application is available pursuant to 37 CFR 1.14(a)(1)(iv)-(vi). Since provisional applications do not require an oath or declaration, there may be no power of attorney in the application. If the person requesting a certified copy is not a named inventor, assignee of record, or an attorney or agent of record, the requested certified copy will be supplied to the correspondence address of the provisional applica- tion.

105 Suspended or Excluded Practitio- ner Cannot Inspect [R-2]

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

106 Control of Inspection by Assignee [R-5]

The assignee of record of the entire interest in an application may intervene in the prosecution of the

application, appointing an attorney or agent of his or her own choice. See 37 CFR 3.71. Such intervention, however, does not exclude the applicant from access to the application to see that it is being prosecuted properly, unless the assignee makes specific request to that effect. Any request to prevent the inventor from obtaining access to the file should be filed as a sepa- rate paper, 37 CFR 1.4(c), and should be directed to the Office of Petitions. If the request is granted, the inventor will be informed that he or she will only be permitted to inspect the application on sufficient showing why such inspection is necessary to conserve his or her rights, In re The Kellogg Switchboard & Supply Company, 1906 C.D. 274 (Comm’r Pat. 1906)**>. Of course, after the application has pub- lished pursuant to 35 U.S.C. 122(b), the application will be available to the public and any restriction on the inventor to access his or her application previ- ously granted will no longer be in effect.<

106.01 Rights of Assignee of Part Interest

While it is only the assignee of record of the entire interest who can intervene in the prosecution of an application or interference to the exclusion of the applicant, an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application. See also MPEP § 402.10 for applications accorded status under 37 CFR 1.47.

110 Confidential Nature of Interna- tional Applications [R-2]

PCT Article 30. Confidential Nature of the International Application.

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

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

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

(i) date of the international publication of the interna- tional application,

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(ii) date of receipt of the communication of the interna- tional application under Article 20,

(iii) date of receipt of a copy of the international applica- tion under Article 22.

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

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

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

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

PCT Article 38. Confidential Nature of the International Preliminary

Examination.

(1) Neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or autho- rized by the applicant, allow access within the meaning, and with the proviso, of Article 30(4) to the file of the international preliminary examination by any person or authority at any time, except by the elected Offices once the international preliminary examination report has been established.

(2) Subject to the provisions of paragraph (1) and Articles 36(1) and (3) and 37(3)(b), neither the International Bureau nor the International Preliminary Examining Authority shall, unless requested or authorized by the applicant, give information on the issuance or non-issuance of an international preliminary examina- tion report and on the withdrawal or non-withdrawal of the demand or of any election.

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

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

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

(c) If a license to file in a foreign country is refused or if an international application is ordered to be kept secret and a permit

refused, the Patent and Trademark Office when acting as a Receiving Office, International Searching Authority, or Interna- tional Preliminary Examining Authority, may not disclose the contents of such application to anyone not authorized to receive such disclosure.

Although most international applications are pub- lished soon after the expiration of 18 months from the priority date, PCT Article 21(2)(a), such publication does not open up the Home Copy or Search Copy to the public for inspection, except as provided in 37 CFR *>1.14(g)<.

37 CFR 1.14. Patent applications preserved in confidence.

*****

**> (g) International applications.

(1) Copies of international application files for interna- tional applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be furnished in accor- dance with PCT Articles 30 and 38 and PCT Rules 94.2 and 94.3, upon written request including a showing that the publication of the application has occurred and that the U.S. was designated, and upon payment of the appropriate fee (see § 1.19(b)), if:

(i) With respect to the Home Copy (the copy of the international application kept by the Office in its capacity as the Receiving Office, see PCT Article 12(1)), the international appli- cation was filed with the U.S. Receiving Office;

(ii) With respect to the Search Copy (the copy of an international application kept by the Office in its capacity as the International Searching Authority, see PCT Article 12(1)), the U.S. acted as the International Searching Authority, except for the written opinion of the International Searching Authority which shall not be available until the expiration of thirty months from the priority date; or

(iii) With respect to the Examination Copy (the copy of an international application kept by the Office in its capacity as the International Preliminary Examining Authority), the United States acted as the International Preliminary Examining Authority, an International Preliminary Examination Report has issued, and the United States was elected.

(2) A copy of an English language translation of a publi- cation of an international application which has been filed in the United States Patent and Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be furnished upon written request including a showing that the publication of the application in accordance with PCT Article 21(2) has occurred and that the U.S. was designated, and upon payment of the appropriate fee (§ 1.19(b)(4)).

(3) Access to international application files for interna- tional applications which designate the U.S. and which have been published in accordance with PCT Article 21(2), or copies of a document in such application files, will be permitted in accor- dance with PCT Articles 30 and 38 and PCT Rules 44ter.1, 94.2 and 94.3, upon written request including a showing that the publi-

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cation of the application has occurred and that the U.S. was desig- nated.

(4) In accordance with PCT Article 30, copies of an inter- national application-as-filed under paragraph (a) of this section will not be provided prior to the international publication of the application pursuant to PCT Article 21(2).

(5) Access to international application files under para- graphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section will not be permitted with respect to the Examination Copy in accor- dance with PCT Article 38.<

*****

Effective **>July 30, 2003<, 37 CFR *>1.14(g)< was amended to provide greater access to interna- tional application files kept by the U.S. Patent and Trademark Office (USPTO). 37 CFR *>1.14(g)< as amended applies to international applications having an international filing date on or after November 29, 2000. ** After publication of an application under 35 U.S.C. 122(b), the USPTO will make available copies of the application files and also allow for access to those files in accordance with 37 CFR **>1.14(a)<. Therefore, after publication of an inter- national application designating the U.S. under PCT Article 21, the USPTO will make available copies of, and allow access to, those international application files which are kept in the USPTO (see 37 CFR *>1.14(g)<).

37 CFR *>1.14(g)(1)< sets forth those conditions upon which copies of international application files may be provided to the public. 37 CFR *>1.14(g)(1)(i) and (ii)< address the situation where the U.S. acted as the receiving Office and the Interna- tional Searching Authority, respectively. Under these provisions, copies of the Home and Search Copies of the international file will be provided upon request. >However, the written opinion established by the International Searching Authority will not be available until the expiration of 30 months from the priority date.< 37 *>CFR 1.14(g)(1)(iii)< addresses the situation in which the U.S. acted as the Interna- tional Preliminary Examining Authority (IPEA), the U.S. was elected, and the international preliminary examination report (IPER) has issued. PCT Rule 94.2 provides that after issuance of the IPER, the IPEA shall provide copies of any documents in the exami- nation file to the elected Offices upon request. PCT Rule 94.3 permits the elected Offices to provide access to any documents in its files after international publication has occurred. Therefore, the USPTO act-

ing in its capacity as an elected Office, will provide a copy of the examination file in an international appli- cation to a third party upon submission of a request complying with the requirements of 37 CFR *>1.14(g)(1)(iii)<. Requests for copies of an interna- tional application file under 37 CFR *>CFR 1.14(g)(1)< must be in the form of a written request >sent to the Office of PCT Legal Administration< and must include a showing that the international applica- tion has been published and that the U.S. was desig- nated. Such a showing should preferably be in the form of the submission of a copy of the front page of the published international application. Additionally, requests for copies of international application files must also be accompanied by the appropriate fee (37 CFR 1.19(b)**).

37 CFR *>1.14(g)(2)< provides that copies of English language translations of international applica- tions, which were published in a non-English lan- guage and which designated the U.S., and which have been submitted to the Office pursuant to 35 U.S.C. 154(d)(4), will also be available to the public. The USPTO will not provide general notification to the public of the filing of English language translations under 35 U.S.C. 154. Under 35 U.S.C. 154, it is the responsibility of the applicant to notify any possible infringers for the purposes of obtaining provisional rights.

37 CFR *>1.14(g)(3)< addresses access to the Home Copy and the Search Copy of the international application. Access to the Examination Copy of the international application is prohibited under 37 CFR *>1.14(g)(5)< as required by PCT Article 38.

115 Review of Applications for National Security and Property Rights Is- sues [R-5]

All provisional applications filed under 35 U.S.C. 111(b), nonprovisional applications filed under 35 U.S.C. 111(a), and international applications filed under the PCT, in the U.S. Patent and Trademark Office (USPTO) are reviewed for the purposes of issuance of a foreign filing license pursuant to 35 U.S.C. 184. See also 37 CFR 5.1(b). These appli- cations are screened upon receipt in the USPTO for subject matter that, if disclosed, might impact the national security. Such applications are referred to the appropriate agencies for consideration of restrictions

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on disclosure of the subject matter. Authority for this referral can be found in 35 U.S.C. 181 which pro- vides, in part:

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

If the agency concludes that disclosure of the invention would be detrimental to the national secu- rity, a secrecy order is recommended to the Commis- sioner for Patents. The Commissioner then issues a Secrecy Order and withholds the publication of the application or the grant of a patent for such period as the national interest requires.

**

For those applications in which the Government has a property interest (including applications indicat- ing national security classified subject matter), responsibility for notifying the Commissioner for Pat- ents of the need for a Secrecy Order resides with the agency having that interest. Applications that are national security classified (see 37 CFR 1.9(i)) may be so indicated by use of authorized national security markings (e.g., “Confidential,” “Secret,” or “Top Secret”). National security classified documents filed in the USPTO must be either hand-carried to Licens- ing and Review or mailed to the Office in compliance with 37 CFR 5.1(a) and Executive Order 12958 of April 17, 1995 and Executive Order 13292 of March 25, 2003. As set forth in 37 CFR 5.1(d), the applicant in a national security classified patent application must obtain a secrecy order >from the appropriate defense agency< or provide authority to cancel the markings. >A list of contacts at the appropriate defense agency can be obtained by contacting Licens- ing and Review.<

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

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

**>Provisional applications filed in a foreign lan- guage are also screened under these provisions. The Office will make an attempt to determine the subject matter of the application, but the applicant may be required to provide at least an English language abstract of the information for screening purposes. It is strongly recommended that if the applicant is in possession of an English language description of the technology, it should be filed with the provisional application to prevent screening delays.<

All applications should be cleared from secrecy review before forwarding to issue. If the L&R code on the general information display does not equal 1, then an E-mail message should be sent to the supervisor of Licensing and Review, or in the case of an IFW appli- cation, a message should be sent to LREVINCOM- INGDOCS.

Applications will be deleted from IFW upon the imposition of a secrecy order.

>Patent Application Locating and Monitoring’s (PALM’s) general information display discloses the current Licensing and Review status as well as the historical status. The indicator “L&R code” displays the current status of the application while the indica- tors “Third Level Review” and “Secrecy Order” dis- play the historical status of the application. An L&R code of “3” or a “Third Level Review” of “Yes” indi- cates that application is/has been considered for secu- rity screening.

A L&R code of “4” indicates that application is currently under Secrecy Order. In this case, the appli- cation has been converted to a paper application file and there should be no images maintained in the Image File Wrapper system (IFW).<

While the initial screening is performed only by designated personnel, all examiners have a responsi- bility to be alert for obviously sensitive subject matter either in the original disclosure or subsequently intro- duced, for example, by amendment. **>If the exam- iner is aware of subject matter which should be subject to screening by appropriate office personnel, this should be brought to the attention of Licensing and Review, to any of the supervisory patent examin- ers (SPEs) of Technology Center Working Group 3640 or 3660.<

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120 Secrecy Orders [R-5]

37 CFR 5.1. Correspondence. **> (a) All correspondence in connection with this part, includ-

ing petitions, should be addressed to: Mail Stop L&R, Commis- sioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313- 1450.<

(b) Application as used in this part includes provisional applications filed under 35 U.S.C. 111(b) (§ 1.9(a)(2) of this chap- ter), nonprovisional applications filed under 35 U.S.C. 111(a) or entering the national stage from an international application after compliance with 35 U.S.C. 371 (§ 1.9(a)(3)), or international applications filed under the Patent Cooperation Treaty prior to entering the national stage of processing (§ 1.9(b)).

(c) Patent applications and documents relating thereto that are national security classified (see § 1.9(i) of this chapter) and contain authorized national security markings (e.g., “Confiden- tial,” “Secret” or “Top Secret”) are accepted by the Office. National security classified documents filed in the Office must be either hand-carried to Licensing and Review or mailed to the Office in compliance with paragraph (a) of this section.

(d) The applicant in a national security classified patent application must obtain a secrecy order pursuant to § 5.2(a). If a national security classified patent application is filed without a notification pursuant to § 5.2(a), the Office will set a time period within which either the application must be declassified, or the application must be placed under a secrecy order pursuant to § 5.2(a), or the applicant must submit evidence of a good faith effort to obtain a secrecy order pursuant to § 5.2(a) from the rele- vant department or agency in order to prevent abandonment of the application. If evidence of a good faith effort to obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency is submitted by the applicant within the time period set by the Office, but the application has not been declassified or placed under a secrecy order pursuant to § 5.2(a), the Office will again set a time period within which either the application must be declassified, or the application must be placed under a secrecy order pursuant to § 5.2(a), or the applicant must submit evidence of a good faith effort to again obtain a secrecy order pursuant to § 5.2(a) from the relevant department or agency in order to pre- vent abandonment of the application.

(e) An application will not be published under § 1.211 of this chapter or allowed under § 1.311 of this chapter if publication or disclosure of the application would be detrimental to national security. An application under national security review will not be published at least until six months from its filing date or three months from the date the application was referred to a defense agency, whichever is later. A national security classified patent application will not be published under § 1.211 of this chapter or allowed under § 1.311 of this chapter until the application is declassified and any secrecy order under § 5.2(a) has been rescinded.

(f) Applications on inventions made outside the United States and on inventions in which a U.S. Government defense agency has a property interest will not be made available to defense agencies.

37 CFR 5.2. Secrecy order. **> (a) When notified by the chief officer of a defense agency

that publication or disclosure of the invention by the granting of a patent would be detrimental to the national security, an order that the invention be kept secret will be issued by the Commissioner for Patents.

(b) Any request for compensation as provided in 35 U.S.C. 183 must not be made to the Patent and Trademark Office, but directly to the department or agency which caused the secrecy order to be issued.

(c) An application disclosing any significant part of the sub- ject matter of an application under a secrecy order pursuant to paragraph (a) of this section also falls within the scope of such secrecy order. Any such application that is pending before the Office must be promptly brought to the attention of Licensing and Review, unless such application is itself under a secrecy order pur- suant to paragraph (a) of this section. Any subsequently filed application containing any significant part of the subject matter of an application under a secrecy order pursuant to paragraph (a) of this section must either be hand-carried to Licensing and Review or mailed to the Office in compliance with § 5.1(a).<

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

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

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

(b) An interference will not be declared involving a national application under secrecy order. An applicant whose application is under secrecy order may suggest an interference (§ 41.202(a) of this title), but the Office will not act on the request while the appli- cation remains under a secrecy order.

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

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

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37 CFR 5.4. Petition for rescission of secrecy order. **> (a) A petition for rescission or removal of a secrecy order

may be filed by, or on behalf of, any principal affected thereby. Such petition may be in letter form, and it must be in duplicate.

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

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

(d) Appeal to the Secretary of Commerce, as provided by 35 U.S.C. 181, from a secrecy order cannot be taken until after a petition for rescission of the secrecy order has been made and denied. Appeal must be taken within sixty days from the date of the denial, and the party appealing, as well as the department or agency which caused the order to be issued, will be notified of the time and place of hearing.<

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

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

(b) Petitions for a permit or modification must fully recite the reason or purpose for the proposed disclosure. Where any pro- posed disclosee is known to be cleared by a defense agency to receive classified information, adequate explanation of such clear- ance should be made in the petition including the name of the agency or department granting the clearance and the date and degree thereof. The petition must be filed in duplicate.

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

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

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

I. SECRECY ORDER TYPES

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

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

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

(C) Secrecy Order — to be used for those patent applications that contain technical data properly clas- sifiable under a security guideline where the patent application owner does not have a DoD Security Agreement. The order prevents disclosure of the sub- ject matter to anyone without an express written con- sent from the Commissioner for Patents. However, quite often this type of secrecy order includes a permit “Permit A” which relaxes the disclosure restrictions as set forth in the permit.

The first Secrecy Order is intended to permit the widest utilization of the technical data in the patent application while still controlling any publication or disclosure which would result in an unlawful exporta- tion. This type of Secrecy Order is based on the appli- cable export controls in either the Commodity Control List (CCL) or the Munitions Lists of the International Traffic in Arms Regulation (ITAR), and identifies the countries where corresponding patent applications may be filed. Countries with which the United States has reciprocal security agreements are: Australia, Bel- gium, Canada, Denmark, France, Germany, Greece, Italy, Japan, Luxembourg, Netherlands, Norway, Por- tugal, Spain, Sweden, Turkey and the United King- dom. Please note that applications subject to a secrecy order cannot be filed directly with the European Patent Office since no reciprocal security agreement

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with this organization exists. Applications must be filed in the individual EPO member countries identi- fied above. >Applicant must arrange filing of such subject matter through the agency sponsoring the secrecy order.<

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

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

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

II. RELATED SUBJECT MATTER

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

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

III. CORRESPONDENCE

When the Secrecy Order issues, the law specifies that the subject matter or any material information rel- evant to the application, including unpublished details of the invention, shall not be published or disclosed to any person not aware of the invention prior to the date of the Order, including any employee of the principals except as permitted by the Secrecy Order. The law also requires that all information material to the sub- ject matter of the application be kept in confidence,

unless written permission to disclose is first obtained from the Commissioner for Patents except as pro- vided by the Secrecy Order. Therefore, all correspon- dence to be filed in an application which is subject to a secrecy order and which is directly related to the subject matter covered by the Secrecy Order must be transmitted to the Office in a manner which would preclude disclosure to unauthorized individuals and addressed as set forth in 37 CFR 5.1(a). Use of fac- simile transmission is not permitted. 37 CFR 1.6(d)(6).

Subject matter under Secrecy Order must be safe- guarded under conditions that will provide adequate protection and prevent access by unauthorized per- sons.

When applicants desire to change the Power of Attorney in an application under Secrecy Order, **>applicant is required to provide a statement that the new attorney(s) has been apprised of the secrecy order.

In the case of applications bearing National Secu- rity Classification markings pursuant to an Executive Order, e.g., “Confidential” or “Secret,” applicants must provide a DoD cage code as evidence of the ability to accept and store classified information. Applicants no longer need to provide individual per- sonal information to ensure a proper security clear- ance. Personnel controlling the cleared correspondence address bear the burden of ensuring that individuals obtaining classified information from the correspondence address follow the proper proce- dures for handling classified information.<

IV. PCT APPLICATIONS

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

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V. CHANGES IN SECRECY ORDERS

Applicants may petition for rescission or modifica- tion of the Secrecy Order. For example, if the appli- cant believes that certain existing facts or circumstances would render the Secrecy Order inef- fectual, he or she may informally contact the sponsor- ing agency to discuss these facts or formally petition the Commissioner for Patents to rescind the Order. Rescission of a Secrecy Order may also be effected in some circumstances by expunging the sensitive subject matter from the disclosure, provided the sensi- tive subject matter is not necessary for an enabling disclosure under 35 U.S.C. 112, first paragraph. See MPEP § 724.05. The defense agency identified with the Secrecy Order as sponsoring the Order should be contacted directly for assistance in determining what subject matter in the application is sensitive, and whether the agency would agree to rescind the Order upon expunging this subject matter. The applicant may also petition the Commissioner for Patents for a permit to disclose the invention to another or to mod- ify the Secrecy Order stating fully the reason or pur- pose for disclosure or modification. An example of such a situation would be a request to file the applica- tion in a foreign country. The requirements for peti- tions are described in 37 CFR 5.4 and 5.5. The law also provides that if an appeal is necessary, it may be taken to the Secretary of Commerce. Any petition or appeal should be addressed to the Mail Stop L&R, Commissioner for Patents, P.O. Box 1450, Alexan- dria, Virginia, 22313-1450.

VI. IMPROPER OR INADVERTENT DISCLO- SURE

If, prior to or after the issuance of the Secrecy Order, any significant part of the subject matter or material information relevant to the application has been or is revealed to any U.S. citizen in the United States, the principals must promptly inform such per- son of the Secrecy Order and the penalties for improper disclosure. If such part of the subject matter was or is disclosed to any person in a foreign country or foreign national in the U.S., the principals must not inform such person of the Secrecy Order, but instead must promptly furnish to Mail Stop L&R, Commis- sioner for Patents, P.O. Box 1450, Alexandria, Vir- ginia, 22313-1450 the following information to the extent not already furnished: date of disclosure; name

and address of the disclosee; identification of such subject matter; and any authorization by a U.S. gov- ernment agency to export such subject matter. If the subject matter is included in any foreign patent appli- cation or patent, this should be identified.

VII. EXPIRATION

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

The expiration of or failure to renew a Secrecy Order does not lessen in any way the responsibility of the principals for the security of the subject matter if it is subject to the provisions of Exec. Order No. 12958 or the Atomic Energy Act of 1954, as amended, 42 U.S.C. 141 et. seq. and 42 U.S.C. 2181 et. seq. or other applicable law unless the principals have been expressly notified that the subject patent application has been declassified by the proper authorities and the security markings have been authorized to be can- celed or removed.

121 Handling of Applications and Other Papers Bearing Security Markings [R-2]

Under Executive Order for Classified National Security Information (Exec. Order No. 12958, 60 FR 19825 (April 20, 1995)) >and Executive Order 13292 of March 25, 2003< standards are prescribed for the marking, handling, and care of official information which requires safeguarding in the interest of security.

Papers marked as prescribed in the Executive *>Orders< and showing that such marking is applied by, or at the direction of, a government agency, are accepted in patent applications. All applications or papers in the U.S. Patent and Trademark Office bear- ing words such as “Secret” or “Confidential” must be promptly referred to Technology Center (TC) Work- ing Group 3640 for clarification or security treatment. Under no circumstances can any such application, drawing, exhibit, or other paper be placed in public records, such as the patented files, until all security

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markings have been considered and declassified or otherwise explained.

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

130 Examination of Secrecy Order Cases [R-5]

All applications in which a Secrecy Order has been imposed are examined in Technology Center (TC) Working *>Groups< 3640 and **>3660<. If the Order is imposed subsequent to the docketing of an application in another TC, the application will be transferred to TC Working Group 3640 >or 3660<.

Secrecy Order cases are examined for patentability as in other cases, but may not be passed to issue; nor will an interference be declared where one or more of the conflicting cases is classified or under Secrecy Order. See >37 CFR 5.3 and< MPEP § *>2306<. **

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

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

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

Sometimes applications bearing national security markings but no Secrecy Order come up for examina- tion. In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should prefera- bly be done with the first action and, in any event, prior to final disposition of the application. Pursuant to 37 CFR 5.1(d), if no Secrecy Order has issued in a national security classified patent application, the

Office will set a time period within which the appli- cant must take one of the following three actions in order to prevent abandonment of the application:

(A) obtain a Secrecy Order; (B) declassify the application; or (C) submit evidence of a good faith effort to

obtain a Secrecy Order pursuant to 37 CFR 5.2(a). Pursuant to 37 CFR 5.1(e), a national security

classified patent application will not be allowed until the application is declassified and any Secrecy Order pursuant to 37 CFR 5.2(a) has been rescinded.

140 Foreign Filing Licenses [R-5]

35 U.S.C. 184. Filing of application in foreign country. Except when authorized by a license obtained from the Com-

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

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

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

35 U.S.C. 185. Patent barred for filing without license. Notwithstanding any other provisions of law any person, and

his successors, assigns, or legal representatives, shall not receive a United States patent for an invention if that person, or his succes-

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sors, assigns, or legal representatives shall, without procuring the license prescribed in section 184 of this title, have made, or con- sented to or assisted another’s making, application in a foreign country for a patent or for the registration of a utility model, industrial design, or model in respect of the invention. A United States patent issued to such person, his successors, assigns, or legal representatives shall be invalid, unless the failure to procure such license was through error and without deceptive intent, and the patent does not disclose subject matter within the scope of sec- tion 181 of this title.

35 U.S.C. 186. Penalty. Whoever, during the period or periods of time an invention has

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

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

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

Sec. 9101. INCREASED EFFECTIVENESS OF PATENT LAW

*****

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

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

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

(3)No United States patent granted before the date of enactment of this section shall abridge or affect the right of any person or his successors in business who made, purchased, or used, prior to such date of enactment, any- thing protected by the patent, to continue the use of, or sell to others to be used or sold, the specific thing so made, purchased, or used, if the patent claims were invalid or otherwise unenforceable on a ground obviated by this section and the person made, purchased, or used the specific thing in reasonable reliance on such invalidity or unenforceability. If a person reasonably relied on such invalidity or unenforceability, the court before which such matter is in question may provide for the continued manu- facture, use, or sale of the thing made, purchased, or used as specified, or for the manufacture, use, or sale of which substantial preparation was made before the date of enact- ment of this section, and it may also provide for the con- tinued practice of any process practiced, or for the practice of which substantial preparation was made, prior to the date of enactment of this section, to the extent and under such terms as the court deems equitable for the pro- tection of investments made or business commenced before such date of enactment.

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

(A)under any patent before the court, or

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

35 U.S.C. 187. Nonapplicability to certain persons The prohibitions and penalties of this chapter shall not apply to

any officer or agent of the United States acting within the scope of his authority, nor to any person acting upon his written instruc- tions or permission.

35 U.S.C. 188. Rules and regulations, delegation of power. The Atomic Energy Commission, the Secretary of a defense

department, the chief officer of any department or agency of the Government designated by the President as a defense agency of the United States, and the Secretary of Commerce, may separately issue rules and regulations to enable the respective department or

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agency to carry out the provisions of this chapter, and may dele- gate any power conferred by this chapter.

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

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

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

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

**> (b) The license from the Commissioner for Patents referred

to in paragraph (a) would also authorize the export of technical data abroad for purposes relating to the preparation, filing or pos- sible filing and prosecution of a foreign patent application without separately complying with the regulations contained in 22 CFR parts 121 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730-774 (Regulations of the Bureau of Industry and Security, Department of Commerce) and 10 CFR part 810 (Foreign Atomic Energy Programs of the Department of Energy).

(c) Where technical data in the form of a patent application, or in any form, are being exported for purposes related to the preparation, filing or possible filing and prosecution of a foreign patent application, without the license from the Commissioner for Patents referred to in paragraphs (a) or (b) of this section, or on an invention not made in the United States, the export regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730-774 (Bureau of Industry and Security Regulations, Depart- ment of Commerce) and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations of the Department of Energy) must be complied with unless a license is not required because a United States application was on file at the time of export for at least six months without a secrecy order under § 5.2 being placed thereon. The term “exported” means export as it is defined in 22 CFR part 120, 15 CFR part 734 and activities cov- ered by 10 CFR part 810.<

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

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

(1) If the invention was not made in the United States, or (2) If the corresponding United States application is not

subject to a secrecy order under § 5.2, and was filed at least six

months prior to the date on which the application is filed in a for- eign country, or

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

(i) A license is not, or was not, required under para- graph (e)(2) of this section for the foreign patent application;

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

(iii) Such modifications, amendments, and supple- ments do not, or did not, change the general nature of the inven- tion in a manner which would require any corresponding United States application to be or have been available for inspection under 35 U.S.C. 181.

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

37 CFR 5.12. Petition for license. (a) Filing of an application for patent for inventions made in

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

**> (b) A petition for license must include the fee set forth in §

1.17(g) of this chapter, the petitioner’s address, and full instruc- tions for delivery of the requested license when it is to be deliv- ered to other than the petitioner. The petition should be presented in letter form.<

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

If no corresponding national or international application has been filed in the United States, the petition for license under § 5.12(b) must also be accompanied by a legible copy of the mate- rial upon which a license is desired. This copy will be retained as a measure of the license granted.

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

(a) When there is a corresponding United States application on file, a petition for license under § 5.12(b) must also identify this application by application number, filing date, inventor, and title, but a copy of the material upon which the license is desired is not required. The subject matter licensed will be measured by the disclosure of the United States application.

(b) Two or more United States applications should not be referred to in the same petition for license unless they are to be combined in the foreign or international application, in which event the petition should so state and the identification of each United States application should be in separate paragraphs.

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

37 CFR 5.15. Scope of license. (a) Applications or other materials reviewed pursuant to §§

5.12 through 5.14, which were not required to be made available for inspection by defense agencies under 35 U.S.C. 181, will be eligible for a license of the scope provided in this paragraph. This license permits subsequent modifications, amendments, and sup- plements containing additional subject matter to, or divisions of, a foreign patent application, if such changes to the application do not alter the general nature of the invention in a manner which would require the United States application to have been made available for inspection under 35 U.S.C. 181. Grant of this license authorizing the export and filing of an application in a foreign country or the transmitting of an international application to any foreign patent agency or international patent agency when the subject matter of the foreign or international application corre- sponds to that of the domestic application. This license includes authority:

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

(2) To make amendments, modifications, and supple- ments, including divisions, changes or supporting matter consist- ing of the illustration, exemplification, comparison, or explanation of subject matter disclosed in the application; and

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

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

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

(b) Applications or other materials which were required to be made available for inspection under 35 U.S.C. 181 will be eli-

gible for a license of the scope provided in this paragraph. Grant of this license authorizes the export and filing of an application in a foreign country or the transmitting of an international applica- tion to any foreign patent agency or international patent agency. Further, this license includes authority to export and file all dupli- cate and formal papers in foreign countries or with foreign and international patent agencies and to make amendments, modifica- tions, and supplements to, file divisions of, and take any action in the prosecution of the foreign or international application, pro- vided subject matter additional to that covered by the license is not involved.

**> (c) A license granted under § 5.12(b) pursuant to § 5.13 or §

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

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

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

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

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

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

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

37 CFR 5.18. Arms, ammunition, and implements of war. (a) The exportation of technical data relating to arms,

ammunition, and implements of war generally is subject to the International Traffic in Arms Regulations of the Department of

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State (22 CFR parts 120 through 130); the articles designated as arms, ammunitions, and implements of war are enumerated in the U.S. Munitions List (22 CFR part 121). However, if a patent applicant complies with regulations issued by the Commissioner for Patents under 35 U.S.C. 184, no separate approval from the Department of State is required unless the applicant seeks to export technical data exceeding that used to support a patent application in a foreign country. This exemption from Department of State regulations is applicable regardless of whether a license from the Commissioner for Patents is required by the provisions of §§ 5.11 and 5.12 (22 CFR part 125).

(b) When a patent application containing subject matter on the Munitions List (22 CFR part 121) is subject to a secrecy order under § 5.2 and a petition is made under § 5.5 for a modification of the secrecy order to permit filing abroad, a separate request to the Department of State for authority to export classified informa- tion is not required (22 CFR part 125).

37 CFR 5.19. Export of technical data. **>

(a) Under regulations (15 CFR 734.3(b)(1)(v)) established by the Department of Commerce, a license is not required in any case to file a patent application or part thereof in a foreign country if the foreign filing is in accordance with the regulations (§§ 5.11 through 5.25) of the U.S. Patent and Trademark Office.

(b) An export license is not required for data contained in a patent application prepared wholly from foreign-origin technical data where such application is being sent to the foreign inventor to be executed and returned to the United States for subsequent filing in the U.S. Patent and Trademark Office (15 CFR 734.10(a)).<

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

Under regulations (10 CFR 810.7) established by the United States Department of Energy, an application filed in accordance with the regulations (§§ 5.11 through 5.25) of the Patent and Trademark Office and eligible for foreign filing under 35 U.S.C. 184, is considered to be information available to the public in pub- lished form and a generally authorized activity for the purposes of the Department of Energy regulations.

37 CFR 5.25. Petition for retroactive license. **> (a) A petition for retroactive license under 35 U.S.C. 184

shall be presented in accordance with § 5.13 or § 5.14(a), and shall include:

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

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

(3) A verified statement (oath or declaration) containing: (i) An averment that the subject matter in question

was not under a secrecy order at the time it was filed abroad, and that it is not currently under a secrecy order,

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

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

(4) The required fee (§ 1.17(g) of this chapter).<

In the interests of national security, the United States government imposes restrictions on the export of technical information. These restrictions are administered by the Departments of Commerce, State, and/or Energy depending on the subject matter involved. For the filing of patent applications in for- eign countries, the authority for export control has been delegated to the Commissioner for Patents (note that the term “Commissioner of Patents” is used in Chapter 17 of title 35 of the U.S. Code, but “Commis- sioner for Patents” is used in the remainder of the stat- ute and in title 37 of the Code of Federal Regulations; both titles are understood to represent the same indi- vidual). >Note that the export of subject matter abroad for purposes not related to foreign filing of a patent application, such as preparing an application in a for- eign country for subsequent filing in the USPTO is not covered by any license from the USPTO. Applicants are directed to the Bureau of Industry of Security at the Department of Commerce for the appropriate clearances.<

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

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

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>

I. EXPEDITED FOREIGN FILING LICENSE<

Explicit petitions for foreign filing licenses will also be accepted in accordance with 37 CFR 5.12(b), and may be faxed to Licensing and Review. See MPEP § 502.01. Applicants may be interested in such petitions in cases:

(A) in which the filing receipt license is not granted;

(B) in which the filing receipt has not yet been issued (37 CFR 5.14(a) or (b));

(C) in which there is no corresponding U.S. appli- cation (37 CFR 5.13);

(D) in which subject matter additional to that already licensed is sought to be licensed (37 CFR 5.14(c) and 5.15(e)); or

(E) in which expedited handling is requested.

The scope of any license granted on these petitions is indicated on the license.

Petitions under 37 CFR 5.14(a) or (b) as well as any license granted on the petition are **>made of record in the application file<. Petitions under 37 CFR 5.14(c) are not ordinarily made of record in the >application< file.

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

>Generally, a license will be granted, if there is no national security concern, within 3 business days from receipt of the expedited petition (filed under 37 CFR 5.12(b)) in Licensing and Review. Applicants are strongly encouraged to hand deliver or fax the license request directly to Licensing and Review at 571-273- 0185. Applicants should also provide a contact num- ber or fax number to which the license should be sent. Without this information, the license will be mailed to the requester, thereby delaying the receipt of the license.

II. RETROACTIVE LICENSES<

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

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

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

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

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150 Statements to DOE and NASA [R-2]

37 CFR 1.14. Patent applications preserved in confidence.

*****

**> (d) Applications reported to Department of Energy. Applica-

tions for patents which appear to disclose, purport to disclose or do disclose inventions or discoveries relating to atomic energy are reported to the Department of Energy, which Department will be given access to the applications. Such reporting does not consti- tute a determination that the subject matter of each application so reported is in fact useful or is an invention or discovery, or that such application in fact discloses subject matter in categories specified by 42 U.S.C. 2181(c) and (d).<

*****

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

No patent for any invention or discovery, useful in the production or utilization of special nuclear material or atomic energy, shall be issued unless the applicant files with the application, or within thirty days after request therefor by the Under Secretary of Commerce for Intellec- tual Property and Director of the United States Patent and Trademark Office (unless the Commission advises the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office that its rights have been determined and that accordingly no statement is necessary) a statement under oath setting forth the full facts surrounding the making or conception of the invention or discovery described in the application and whether the invention or discovery was made or conceived in the course of or under any contract, subcontract, or arrangement entered into with or for the benefit of the Commission, regardless of whether the con- tract, subcontract, or arrangement involved the expendi- ture of funds by the Commission. The Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office shall as soon as the application is otherwise in condition for allowance forward copies of the application and the statement to the Commission.

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

(c) Patent application. No patent may be issued to any applicant other than the Administrator for any invention which appears to the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (hereafter in this section referred to as the “Director”) to have significant utility in the conduct of aeronautical and space activities unless the applicant files with the Director, with the application or within thirty days after request therefor by the Director, a

written statement executed under oath setting forth the full facts concerning the circumstances under which such invention was made and stating the relationship (if any) of such invention to the performance of any work under any contract of the Administration. Copies of each statement and application to which it relates shall be transmitted forthwith by the *>Director< to the Administrator.

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

Shortly after filing, an informal request for a prop- erty rights statement will be mailed to those appli- cants whose nonprovisional applications have been marked by the USPTO security screeners as being of interest to DOE or NASA. Provisional applications are not subject to DOE or NASA property rights review. While no formal time period is set, a response by applicants within 45 days will expedite processing. If the statement submitted during this period is defec- tive, another letter is sent from Licensing and Review detailing the deficiencies and giving applicant another opportunity to respond during this period of informal correspondence.

If no response to the initial so called 45-Day Letter is received or if repeated efforts to correct a defective statement evidence an absence of cooperation on the part of the applicant, a formal request for a statement in accordance with the statutes will be made. A 30- day statutory period for response is then set. There is no provision for an extension of this time period. If no proper and timely statement is received, the applica- tion will be held abandoned and the applicant so noti- fied. Such applications may be revived under the provisions of ** >37 CFR 1.137<. In re Rutan, 231 USPQ 864 (Comm’r Pat. 1986).

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

151 Content of the Statements

The law requires the statement to set forth “the full facts” surrounding the conception and making of the invention. These facts should include those which are

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unique to that invention. The use of form paragraphs or printed forms which set forth only broad general- ized statements of fact is not ordinarily regarded as meeting the requirements of these statutes.

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

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

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

The following is an acceptable format for state- ments to DOE or NASA assuming that no govern- ment funds or other considerations were involved in the making or conception of the invention. It is impor- tant that the information provided in the statement be an accurate reflection of the fact situation at the time the statement is made. While the sample below is in the form of a declaration, a sworn oath is equally acceptable.

Note that the statement must be in the form of an oath or declaration. Further note that the statement must be signed by all the inventors. See also the notice entitled “Statements Filed Under Atomic Energy Act and NASA Act” published in 914 O.G. 1 (Sept. 4, 1973) for further information.

I (We) _____________________ citizens of residing at declare: That I (we) made and conceived the invention described and claimed in patent application number filed in the United States of America on titled.

I (We) ________________ citizens of ________________ residing at ________________ declare: That I (we) made and conceived the invention described and claimed in patent application number ________________ filed in the United States of America on ________________ titled ________________.

(Include completed I. or II. below) I. (for Inventors Employed by an Organization) That I (we) made and conceived this invention while

employed by ________________. That the invention is related to the work I am (we are)

employed to perform and was made within the scope of my (our) employment duties;

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

Other relevant facts are: ________________. That to the best of my (our) knowledge and belief

based upon information provided by ________________ of ________________:

-OR- II. (For Self-Employed Inventors) That I (we) made and conceived this invention on my

(our) own time using only my (our) own facilities, equip- ment, materials, funds, information and services.

Other relevant facts are ________________ That to the best of my (our) knowledge and belief: (Include III. and/or IV. below as appropriate) III. The invention or discovery was not made or con-

ceived in the course of, or in connection with, or under the terms of any contract, subcontract or arrangement entered into with or for the benefit of the United States Atomic Energy Commission or its successors Energy Research and Development Administration or the Department of Energy.

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-AND/OR- IV. The invention was not made under nor is there any

relationship of the invention to the performance of any work under any contract of the National Aeronautics and Space Administration.

V. The undersigned inventor(s) declare(s) further that all statements made herein of his or her (their)own knowl- edge are true and that all statements made on information and belief are believed to be true and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title

18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issuing thereon.

Inventor’s Signature________________ Post Office Address________________ Date________________ Inventor’ s Signature________________ Post Office Address________________ Date________________

●●●●●●●●●●●●●●●●●●●●●●●●●●●●●

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

200-1 Rev. 5, Aug. 2006

201 Types of Applications 201.01 Sole 201.02 Joint 201.03 Correction of Inventorship in an Application 201.04 Parent Application 201.04(a) Original Application 201.04(b) Provisional Application 201.05 Reissue Application 201.06 Divisional Application 201.06(a) Former 37 CFR 1.60 Divisional-Continuation

Procedure 201.06(b) Former 37 CFR 1.62 File Wrapper Continuing

Procedure 201.06(c) 37 CFR 1.53(b) and 37 CFR 1.63(d)

Divisional-Continuation Procedure 201.06(d) 37 CFR 1.53(d) Continued Prosecution

Application (CPA) Practice 201.07 Continuation Application 201.08 Continuation-in-Part Application 201.09 Substitute Application 201.10 Refile 201.11 Claiming the Benefit of an Earlier Filing Date

Under 35 U.S.C. 120 and 119(e) 201.11(a) Filing of Continuation or Continuation-in-Part

Application During Pendency of International Application Designating the United States

201.12 Title to an Application Claiming Benefit of an Earlier Application

201.13 Right of Priority of Foreign Application 201.13(a) Right of Priority Based Upon an Application

for an Inventor's Certificate 201.13(b) Right of Priority Based Upon an International

Application Filed Under the Patent Cooperation Treaty

201.14 Right of Priority, Formal Requirements 201.14(a) Right of Priority, Time for Filing Papers 201.14(b) Right of Priority, Papers Required 201.14(c) Right of Priority, Practice 201.14(d) Proper Identification of Priority Application 201.15 Right of Priority, Overcoming a Reference 201.16 Using Certificate of Correction to Perfect

Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f)

201.17 Incorporation by Reference Under 37 CFR 1.57(a)

202 Cross-Noting 202.02 Notation in File History Regarding Prior U.S.

Applications, Including Provisional Applica- tions

202.03 Notation in File History When Priority Is Claimed for Foreign Application

202.04 In Oath or Declaration 203 Status of Applications 203.01 New 203.02 Rejected 203.03 Amended 203.04 Allowed or in Issue 203.05 Abandoned 203.06 Incomplete 203.08 Status Inquiries 203.08(a) Congressional and Other Official Inquiries

201 Types of Applications [R-3]

35 U.S.C. 111. Application. (a) IN GENERAL.—

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

(2) CONTENTS.—Such application shall include— (A) a specification as prescribed by section 112 of this

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

and (C) an oath by the applicant as prescribed by section

115 of this title. (3) FEE AND OATH.—The application must be accom-

panied by the fee required by law. The fee and oath may be sub- mitted after the specification and any required drawing are submitted, within such period and under such conditions, includ- ing the payment of a surcharge, as may be prescribed by the Director.

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

(b) PROVISIONAL APPLICATION.— (1) AUTHORIZATION.—A provisional application for

patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Direc- tor. Such application shall include—

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

(B) a drawing as prescribed by section 113 of this title. (2) CLAIM.—A claim, as required by the second through

fifth paragraphs of section 112, shall not be required in a provi- sional application.

(3) FEE.— (A) The application must be accompanied by the fee

required by law. (B) The fee may be submitted after the specification

and any required drawing are submitted, within such period and

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under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

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

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

(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.

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

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

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

(Amended Aug. 27, 1982, Public Law 97-247, sec. 5, 96 Stat. 319; Dec. 8, 1994, Public Law 103-465, sec. 532(b)(3), 108 Stat. 4986; Nov. 29, 1999, Public Law 106-113, sec. 1000(a)(9), 113 Stat. 1501A-582, 588 (S. 1948 secs. 4732(a)(10)(A), 4801(a)).)

37 CFR 1.9. Definitions. (a)(1)A national application as used in this chapter means a

U.S. application for patent which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371.

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

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

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

*****

NATIONAL APPLICATIONS (35 U.S.C. 111) VS. NATIONAL STAGE APPLICATIONS (35 U.S.C. 371)

Nonprovisional and provisional applications are national applications. Treatment of a national applica- tion under 35 U.S.C. 111 and a national stage applica- tion (a national application which entered the national stage from an international application after compli- ance with 35 U.S.C. 371) are similar but not identical. Note the following examples:

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

(B) National nonprovisional applications filed under 35 U.S.C. 111(a) without an executed oath or declaration *>, basic< filing fee>, search fee, or examination fee< are governed by the notification practice set forth in 37 CFR 1.53(f) while national stage applications filed without an oath or declaration or national stage fee are governed by the notification practice set forth in 37 CFR 1.495.

37 CFR 1.9(a)(1) defines a national application as a U.S. application which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compli- ance with 35 U.S.C. 371. Domestic national patent applications fall under three broad types:

(A) applications for patent under 35 U.S.C. 101 relating to a “new and useful process, machine, manu- facture, or composition of matter, etc.”;

(B) applications for plant patents under 35 U.S.C. 161; and

(C) applications for design patents under 35 U.S.C. 171.

The first type of patents are sometimes referred to as “utility” patents when being contrasted with plant or design patents. The specialized procedure which pertains to the examination of applications for design and plant patents are treated in detail in Chapters 1500 and 1600, respectively. Domestic national applica- tions include original (nonprovisional), provisional, plant, design, reissue, divisional, and continuation applications (which may be filed under 37 CFR 1.53(b)), continued prosecution applications (CPA) (filed under 37 CFR 1.53(d), only applicable if the

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application is for a design patent) and continuation-in- part applications (which may be filed under 37 CFR 1.53(b)).

201.01 Sole

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

201.02 Joint

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

201.03 Correction of Inventorship in an Application [R-5]

Correction of inventorship in an application is per- mitted by amendment under 35 U.S.C. 116, which is implemented by 37 CFR 1.48. The utilization of a request under 37 CFR 1.48 will generally correct the inventorship in the application in which it is filed. 37 CFR 1.48(a) is directed at correcting the inventor- ship in an application where the inventorship was improperly set forth in the executed oath or declara- tion filed in the application. 37 CFR 1.48(b) is directed at correcting the inventorship where the exe- cuted oath or declaration had correctly set forth the inventorship but due to prosecution of the application, e.g., claim cancellation or amendment, fewer than all of the currently named inventors are the actual inven- tors of the remaining claims. 37 CFR 1.48(c) is directed at correcting the inventorship where the exe- cuted oath or declaration had correctly set forth the inventorship but due to amendment of the claims to include previously unclaimed but disclosed subject matter, one or more inventors of the amended subject matter must be added to the current inventorship. 37 CFR 1.48(d) is directed at provisional applications where an inventor is to be added. 37 CFR 1.48(e) is directed at provisional applications where an inventor is to be deleted. 37 CFR 1.48(f) operates to automati- cally correct the inventorship upon filing of a first executed oath or declaration under 37 CFR 1.63 by any of the inventors in a nonprovisional application or upon filing of a cover sheet in a provisional applica- tion.

Correction of inventorship may also be obtained by the filing of a continuing application under 37 CFR

1.53 without the need for filing a request under 37 CFR 1.48, either in the application containing the inventorship err(using a copy of the executed oath or declaration from the parent application)or (to be aban- doned) or in the continuing application. The continu- ing application must be filed with the correct inventorship named therein. The filing of a continuing application to correct the inventorship is appropriate if at least one of the correct inventors has been named in the prior application (35 U.S.C. 120 and 37 CFR 1.78(a)(1)). That is, at least one of the correct inven- tors must be named in the executed oath or declara- tion filed in the prior application, or where no executed oath or declaration has been submitted in the prior application, the name of at least one correct inventor must be set forth in the application papers pursuant to 37 CFR 1.41(a)(1). Where the name of at least one inventor is to be added, correction of inven- torship can be accomplished by filing a continuing application under 37 CFR 1.53(b) with a newly exe- cuted oath or declaration under 37 CFR 1.63(a). Where the name of an inventor(s) is to be deleted, applicant can file a *>continuation or divisional< application >(using a copy of the executed oath or declaration from the parent application)< with a request for deletion of the name of the inventor(s). >See 37 CFR 1.63(d)(2). If a continuing application is filed with a new executed oath or declaration properly naming the correct inventors, a request for deletion of the name(s) of the person(s) who are not inventors in the continuing application is not necessary.< The con- tinuing application may be filed under 37 CFR 1.53(b) or, if the application is for a design patent, under 37 CFR 1.53(d). Note the requirements of 37 CFR 1.78 (a)(1)(ii).

In certain instances where the statement of the lack of deceptive intent of the inventor to be added or deleted cannot be obtained, a petition under 37 CFR 1.183 requesting waiver of that requirement may be possible.

For provisional applications, it may not be neces- sary to correct the inventorship under 37 CFR 1.48 (d) and (e) unless there would be no overlap of inventors upon the filing of the nonprovisional application with the correct inventorship. See subsections V. and VI. below.

The need to correct the inventorship in any U.S. nonprovisional or provisional application may in part

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be dependent upon whether a foreign filing under the Paris Convention will occur subsequent to the U.S. filing. See MPEP § 201.13.

37 CFR 1.48 does not apply to reissue applications as is noted in its title, whether correcting an inventorship error in the patent to be reissued or in the reissue application itself. Where an error in inven- torship in a patent is to be corrected via a reissue application, see MPEP § 1412.04. Where such an error is to be corrected via a certificate of correction under 37 CFR 1.324, see MPEP § 1481.

Where a request under 37 CFR 1.48 is denied in a final agency action, the examiner must determine whether a rejection under 35 U.S.C. 102(f) or (g) is appropriate. Where the request under 37 CFR 1.48 has been entered (for a decision thereon) and is dis- missed (due to a defect that can be corrected) consid- eration under 35 U.S.C. 102(f) or (g) would be premature.

Although 37 CFR 1.48 does not contain a diligence requirement for filing the request, once an inventor- ship error is discovered, timeliness requirements under 37 CFR 1.116 and 37 CFR 1.312 apply. For allowed applications where the issue fee has been paid prior to the entry of a request under 37 CFR 1.48, if the request under 37 CFR 1.48 is dismissed or denied in an Office action, the application must be withdrawn from issue so that applicant would be given time to correct the defect(s). If the request under 37 CFR 1.48 is granted, then it would not be neces- sary to withdraw the application from issue.

Requests under 37 CFR 1.48 are generally decided by the primary examiner except:

(A) When the application is involved in an inter- ference (decided by the Board of Patent Appeals and Interferences);

(B) When the application is a national stage appli- cation filed under 35 U.S.C. 371 which, as of the date of filing of the request, has not been accepted as satis- fying the requirements for entry into the national stage (decided in the PCT Legal Office); and

(C) When accompanied by a petition under 37 CFR 1.183 requesting waiver of a requirement under 37 CFR 1.48(a) or (c), e.g., waiver of the statement of lack of deceptive intent by an inventor to be added or deleted, or waiver of the reexecution of the declara- tion by all of the inventors (decided in the Office of Petitions).

When any request for correction of inventorship under 37 CFR 1.48(a)-(c) is granted, the examiner will acknowledge any addition or deletion of the names of inventors by using either form paragraph 2.14 or form paragraph 2.14.01 in the next Office communication to applicant or his/her attorney. It will be necessary to revise the PALM records, issue a cor- rected filing receipt, and change the bib-data sheet. The correction should be noted on the original oath or declaration by writing in ink in the left column “See Paper No. __ for inventorship corrections.” See MPEP § 605.04(g). For Image File Wrapper (IFW) processing, see the IFW Manual.

¶ 2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c), Sufficient

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

The application will be forwarded to the Office of Initial Patent Examination (OIPE) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as cor- rected.

Examiner Note: 1. In bracket 2, insert --a-- or --c--, as appropriate. 2. In bracket 3, insert explanation of correction made, including addition or deletion of appropriate names.

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

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

The application will be forwarded to the Office of Initial Patent Examination (OIPE) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as cor- rected.

Examiner Note: 1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections. 2. In bracket 2, insert the names of the deleted inventor(s).

The grant or denial of a request under 37 CFR 1.48(a) may result in the lack of inventorship overlap between a parent application and a continuing appli- cation and the consequent inability to claim benefit in the continuing application of the parent application’s filing date under 35 U.S.C. 120. Intervening refer- ences must then be considered.

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

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A request under 37 CFR 1.48 will not be required:

(A) Where an application is to issue with the cor- rect inventorship based on the allowed claims even though the application may have been filed with an incorrect inventorship based on the claims as origi- nally submitted;

(B) Where a typographical or transliteration error in the spelling of an inventor’s name is discovered, the Office should simply be notified of the error. A new oath or declaration is not required. See MPEP § 605.04(g). Reference to the notification will be made on the previously filed oath or declaration;

(C) Where an inventor’s name has been changed after the application has been filed, see MPEP § 605.04(c);

(D) Where a court has issued an order under 35 U.S.C. 256 for correction of the inventorship of a patent, it should be submitted directly to the Certifi- cate of Correction Division along with **> form PTO/ SB/44 (see MPEP § 1485).< A new oath or declara- tion under 37 CFR 1.63 is not required;

(E) Where there is no change of individual but an incorrect name was given, a petition under 37 CFR 1.182 should be filed requesting correction of appli- cant’s name;

(F) In a nonprovisional application filed under 35 U.S.C. 111(a), where the first-filed executed oath or declaration was filed on or after December 1, 1997 and names the correct inventors, but the inventive entity on the executed oath or declaration differs from that which was set forth on filing of the application, e.g., the application transmittal letter or an unexecuted oath or declaration. See 37 CFR 1.48(f)(1);

(G) In a provisional application filed under 35 U.S.C. 111(b), where the cover sheet was filed on or after December 1, 1997 which names the correct inventors, but the inventive entity on the cover sheet differs from that which was set forth on filing of the provisional application without a cover sheet. See 37 CFR 1.48(f)(2).

I. APPLICATIONS FILED UNDER 37 CFR 1.53(f) - NO OATH/DECLARATION

The Office will issue a filing receipt listing the inventors identified at the time of filing of the applica- tion even if the application was filed under 37 CFR 1.53(f) without an executed oath or declaration. Where the first-filed executed oath or declaration was

filed on or after December 1, 1997 and sets forth an inventive entity which is different from the inventive entity initially set forth at the time of filing of the application, the actual inventorship of the application will be taken from the executed oath or declaration. See 37 CFR 1.41(a)(1). A request under 37 CFR 1.48(a), (b), or (c) will not be necessary. See 37 CFR 1.48(f).

Where the first-filed executed oath or declaration was submitted prior to December 1, 1997 in an appli- cation filed without an executed oath or declaration, if the inventive entity identified on the executed oath or declaration differs from the inventive entity identified at the time of filing of the application, a request under 37 CFR 1.48(a) or (c) must also be submitted.

The original named inventors should not execute or submit an oath or declaration under 37 CFR 1.63 merely to timely complete the filing requirements in reply to a “Notice to File Missing Parts of Applica- tion” where the possibility of an error in inventorship has been discovered, nor should the oath or declara- tion be signed by someone who cannot properly make the averments therein. Additional time to reply to the Notice is available under 37 CFR 1.136(a) and possi- bly under 37 CFR 1.136(b). See MPEP § 710.02(d).

Example A nonprovisional application is filed (either prior to, on or after December 1, 1997) naming A as the sole inventor without an executed oath or declara- tion under 37 CFR 1.63. Only claim 1 is presented. A “Notice to File Missing Parts of Application” is mailed to the applicant requiring an oath or decla- ration under 37 CFR 1.63. In timely reply thereto after December 1, 1997, a preliminary amendment adding claim 2, and a declaration under 37 CFR 1.63 executed by inventors A and B are submitted with B being added in view of claim 2. A request under 37 CFR 1.48(c) is not required, in that 37 CFR 1.48(f)(1) will act to set forth an inventorship of A and B.

Similarly, where a preliminary amendment cancel- ing or amending claims concomitantly requires the deletion of an inventor, such deletion may be accom- plished by the submission of a first-filed executed oath or declaration on or after December 1, 1997 nam- ing the actual inventive entity. A request under 37 CFR 1.48(b) would not be necessary.

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II. 37 CFR 1.48(a)

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

(a) Nonprovisional application after oath/declaration filed. If the inventive entity is set forth in error in an executed § 1.63 oath or declaration in a nonprovisional application, and such error arose without any deceptive intention on the part of the person named as an inventor in error or on the part of the person who through error was not named as an inventor, the inventorship of the nonprovisional application may be amended to name only the actual inventor or inventors. Amendment of the inventorship requires:

(1) A request to correct the inventorship that sets forth the desired inventorship change;

(2) A statement from each person being added as an inventor and from each person being deleted as an inventor that the error in inventorship occurred without deceptive intention on his or her part;

(3) An oath or declaration by the actual inventor or inven- tors as required by § 1.63 or as permitted by §§ 1.42, 1.43 or § 1.47;

(4) The processing fee set forth in § 1.17(i); and (5) If an assignment has been executed by any of the orig-

inal named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

*****

Under 37 CFR 1.48(a), if the correct inventor or inventors are not named in an executed oath or decla- ration under 37 CFR 1.63 in a nonprovisional applica- tion for patent, the application can be amended to name only the actual inventor or inventors so long as the error in the naming of the inventor or inventors occurred without any deceptive intention on the part of the person named as an inventor in error or the per- son who through error was not named as an inventor.

37 CFR 1.48(a) requires that the amendment be accompanied by: (1) a request to correct the inventor- ship that sets forth the desired inventorship change; (2) a statement from each person being added and from each person being deleted as an inventor that the error occurred without deceptive intention on his or her part; (3) an oath or declaration by each actual inventor or inventors as required by 37 CFR 1.63 or as permitted by 37 CFR 1.42, 1.43 or 1.47; (4) the fee set forth in 37 CFR 1.17 (i); and (5) the written consent of any existing assignee, if any of the originally named inventors has executed an assignment.

Correction may be requested in cases where the person originally named as inventor was in fact not an inventor or the sole inventor of the subject matter

being claimed. If such error occurred without any deceptive intention on the part of the inventor named and/or not named in error, the Office has the authority to substitute the true inventive entity for the errone- ously named inventive entity. Instances where correc- tions can be made include changes from: a mistaken sole inventor to a different but actual sole inventor; a mistakenly identified sole inventor to different, but actual, joint inventors; a sole inventor to joint inven- tors to include the original sole inventor; erroneously identified joint inventors to different but actual joint inventors; erroneously identified joint inventors to a different, but actual, sole inventor. (Note that 35 U.S.C. 120 and 37 CFR 1.78 require an overlap of inventorship, hence, refiling, rather than requesting under 37 CFR 1.48, to change inventorship where the change would not result in an inventorship overlap may result in the loss of a benefit claim.)

A. Statement of Lack of Deceptive Intention

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

The statement required from each inventor being added or deleted may simply state that the inventor- ship error occurred without deceptive intention. The statement need not be a verified statement (see MPEP § 410).

On very infrequent occasions, the requirements of 37 CFR 1.48(a) have been waived upon the filing of a *>petition< and fee under 37 CFR 1.183 (along with the request and fee under 37 CFR 1.48(a)) to permit the filing of a statement by less than all the parties required to submit a statement. In re Cooper, 230 USPQ 638, 639 (Dep. Assist. Comm’r Pat. 1986). However, such a waiver will not be considered unless the facts of record unequivocally support the correc- tion sought. In re Hardee, 223 USPQ 1122, 1123 (Comm’r Pat. 1984). As 37 CFR 1.48(a) is intended as a simple procedural remedy and does not represent a substantive determination as to inventorship, issues relating to the inventors’ or alleged inventors’ actual

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contributions to conception and reduction to practice are not appropriate for consideration in determining whether the record unequivocally supports the correc- tion sought.

In those situations where an inventor to be added refuses to submit a statement supporting the addition or such party cannot be reached, waiver under 37 CFR 1.183 of the requirement for a state- ment from that party would be appropriate upon a showing of such refusal or inability to reach the inventor. Every existing assignee of the original named inventors must give its consent to the requested correction. Where there is more than one assignee giving its consent, the extent of that interest (percentage) should be shown. Where no assignment has been executed by the inventors, or if deletion of a refusing inventor is requested, waiver will not be granted absent unequivocal support for the correction sought. Petitions under 37 CFR 1.47 are not applica- ble to the requirement for statements from each origi- nally named inventor.

An available remedy to obtain correction of inven- torship where waiver of a required statement is not available to correct the inventorship in a particular application is to refile the application naming the cor- rect inventive entity. A request under 37 CFR 1.48(a) would not then be required in the newly filed applica- tion as no correction would be needed. Furthermore, a request under 37 CFR 1.48(a) would also not be required in the prior application that was refiled, since the prior application will be abandoned. Benefit of the parent application’s filing date would be available under 35 U.S.C. 120 provided there is at least one inventor overlap between the two applications. (Note: a sole-to-sole correction would not obtain benefit under 35 U.S.C. 120).

B. Oath or Declaration

An oath or declaration under 37 CFR 1.63 by each actual inventor must be presented. While each inven- tor need not execute the same oath or declaration, each oath or declaration executed by an inventor must contain a complete listing of all inventors so as to clearly indicate what each inventor believes to be the appropriate inventive entity. Where individual decla- rations are executed, they must be submitted as indi- vidual declarations rather than combined into one declaration. For example, where the inventive entity

is A and B, a declaration may not be executed only by A naming only A as the inventor and a different decla- ration may not be executed only by B naming only B as the inventor, which two declarations are then com- bined into one declaration with a first page of boiler plate, a second page with A’s signature, and a second page with B’s signature (so that it appears that the declaration was executed with the entire inventive entity appearing in the declaration when it did not).

Conflicting oaths or declarations filed: If the first executed oaths or declarations that are submitted name different inventive entities (e.g., one declaration names A, B, and C as inventors and a second declara- tion names D as the inventor) and are filed on the same day, the application will be considered to name the inventors named in both declarations (A, B, C, and D) and a new oath or declaration in compliance with 37 CFR 1.63 including the entire inventive entity will be required. Where an application is filed with an exe- cuted declaration under 37 CFR 1.63 naming an inventive entity that is in conflict with another paper filed in the application, such as the transmittal letter, the executed declaration will govern. However, where an executed declaration is never submitted and the application papers are in conflict as to the inventor- ship, each party identified as an inventor on filing will be considered to have been named as part of the inventive entity. See 37 CFR 1.41(a)(1).

37 CFR 1.47 is available to meet the requirement for an oath or declaration under 37 CFR 1.63 as for example where A, B, and C were originally named as inventors and D who refuses to cooperate is to be later added as an inventor. The oath or declaration under 37 CFR 1.63 of inventor D may be supplied pursuant to 37 CFR 1.47(a), but note that the required 37 CFR 1.48(a)(2) statement must still be supplied by inventor D (an unlikely event in view of the inability to obtain the executed oath or declaration under 37 CFR 1.63), or waiver thereof petitioned under 37 CFR 1.183. Alternatively, where D is to be added as an inventor (where inventors A, B, and C have previously exe- cuted the application under 37 CFR 1.63) and it is original inventor A who refuses to cooperate, the statement under 37 CFR 1.48(a)(2) is only required to be signed by inventor D. Originally named inventor A is merely required to reexecute an oath or declaration in compliance with 37 CFR 1.63. Petitions under 37 CFR 1.47 are only applicable to an original oath or

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declaration and are not applicable to the reexecution of another oath or declaration by A. In such circum- stances, a petition under 37 CFR 1.183 should be con- sidered requesting waiver of the requirement of 37 CFR 1.64 that each of the actual inventors, i.e., inventor A, execute the oath or declaration, particu- larly where assignee consent is given to the requested correction. Absent assignee consent, the petition under 37 CFR 1.183 requesting waiver of the reexecu- tion of the oath or declaration will be evaluated as to whether the nonsigning inventor was actually given the opportunity to reexecute the oath or declaration, or whether the nonsigning inventor could not be reached.

Applications filed with a petition under 37 CFR 1.47 and a request under 1.48(a) will be forwarded to the Office of Petitions, after mailing the filing receipt by the Office of Initial Patent Examination, for con- sideration of the petition and the request. In those instances wherein a request under 37 CFR 1.48(a) and a petition under 37 CFR 1.47 have both been filed in an application, the Office of Petitions may first issue a decision on the request under 37 CFR 1.48(a) so as to determine the appropriate oath or declaration under 37 CFR 1.63 required for the petition under 37 CFR 1.47.

The oath or declaration submitted subsequent to the filing date (37 CFR 1.53(f)) of an application filed under 37 CFR 1.53(b) must clearly identify the previ- ously filed specification it is intended to execute. See MPEP § 601.01(a) and § 602.

C. Fee

Where waiver under 37 CFR 1.183 is requested in relation to a requirement under 37 CFR 1.48(a), a pro- cessing fee under 37 CFR 1.48(a) and a petition fee under 37 CFR 1.183 are required. Similarly, where in addition to a request under 37 CFR 1.48, two petitions under 37 CFR 1.183 are presented, e.g., one request- ing waiver of a requirement under 37 CFR 1.48 and the other requesting waiver of the reexecution of an oath or declaration under 37 CFR 1.64, three fees are required (one for the request filed under 37 CFR 1.48 and two for the petitions filed under 37 CFR 1.183).

Where a similar error has occurred in more than one application a separate processing fee must be sub- mitted in each application in which correction is requested.

If the processing fee has not been submitted or authorized the request will be dismissed.

D. Written Consent of Assignee

The written consent of every existing assignee of the original named inventors must be submitted. 37 CFR 1.48(a)(5). 37 CFR 1.48(a) does not limit assignees to those who are recorded in the U.S. Patent and Trademark Office records. The Office employee deciding the request should check the file record for any indication of the existence of an assignee (e.g., a small entity assertion from an assignee).

Where no assignee exists requester should affirma- tively state that fact. If the file record including the request is silent as to the existence of an assignee it will be presumed that no assignee exists. Such pre- sumption should be set forth in the decision to alert requesters to the requirement.

The individual signing on behalf of the assignee giving its consent to the requested inventorship cor- rection, should specifically state that he or she has the authority to act on behalf of the assignee. In the absence of such a statement, the consent will be accepted if it is signed by an appropriate official of the assignee (e.g., president, vice president, secretary, treasurer, or derivative thereof) if the official’s title has been made of record. A general statement of authority to act for the assignee, or on the specific matter of consent, or the appropriate title of the party signing on behalf of the assignee should be made of record in the consent. However, if it appears in another paper of record, e.g., small entity assertion, it is also acceptable. Further, the assignee must establish its ownership of the application in accordance with 37 CFR 3.73. MPEP § 324.

E. Continuing Applications

35 U.S.C. 120 permits a continuing application to claim the benefit of the filing date of a copending, previously filed, parent application provided there is inventorship overlap between the continuing applica- tion and the parent application. If the inventive entity of a continuing application includes an inventor named in the parent application, the inventorship overlap required by 35 U.S.C. 120 is met.

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Example The parent application names inventors A and B and claims inventions 1 and 2. Inventor A contrib- utes only to invention 1 and inventor B contributes only to invention 2. A restriction requirement is made and invention 1 was elected. Upon allow- ance of claims directed to invention 1 and cancel- lation of claims directed to invention 2, a request under 37 CFR 1.48(b) was filed requesting dele- tion of inventor B. The request under 37 CFR 1.48(b) was granted by the primary examiner. Prior to the issuance of the parent application, a divisional application claiming benefit under 35 U.S.C. 120 to the parent application, is filed claiming only invention 2 and naming only inven- tor B. The inventorship overlap required by 35 U.S.C. 120 is met in this instance even though at the time of filing of the divisional application, the inventorship overlap was lost as a result of the deletion of an inventor in the parent application. The overlap of inventorship need not be present on the date the continuing application is filed nor present when the parent application issues or becomes abandoned.

On filing a continuing application under 37 CFR 1.53(b) it should not be assumed that an error in inventorship made in a parent application was in fact corrected therein in response to a request under 37 CFR 1.48(a) unless a decision from the U.S. Patent and Trademark Office to that effect was received by the requester. A continuing application naming the additional inventor can be filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) with a newly executed oath or declaration by the new inventive entity along with a request for benefit under 35 U.S.C. 120 without the need for a decision on the request under 37 CFR 1.48 filed in the parent application.

Should an error in inventorship in a parent applica- tion be discovered, whether it is the need to add and/ or to delete inventors, when preparing to file a con- tinuing application, the continuing application may be filed under 37 CFR 1.53(b) with the correct inventive entity without the need for a request under 37 CFR 1.48(a) in the parent or continuing application pro- vided the parent application is to be abandoned on fil- ing of the continuing application. In filing **>a continuation or divisional< application under 37 CFR 1.53(b), a copy of an oath or declaration from the

prior application can only be used where inventors are to be deleted (37 CFR 1.53(b)(1) and 37 CFR 1.63(d)(1)(ii)), but not where inventors are to be added. Where inventors are to be added, a newly exe- cuted oath or declaration must be submitted. See 37 CFR 1.63(d)(5).

In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), a request under 37 CFR 1.48(a) or (c) to add an inventor to a parent applica- tion that was not acted on (e.g., filed after final rejec- tion) will be automatically considered in the CPA. Until the request is granted, the inventorship remains the same as the prior application. Note, however, that effective July 14, 2003, CPA practice has been elimi- nated as to utility and plant applications. If the appli- cation is a design application, after discovery of an inventorship error, the application can also be refiled under 37 CFR 1.53(d)(4) as a CPA where inventors are only to be deleted.

In filing a continuing application to correct the inventorship, it is important to recognize that 37 CFR 1.78 requires for purposes of claiming the benefit of the prior application that the prior application must either have had the filing fee, or the retention fee as set forth in 37 CFR 1.21(l), paid within the period set forth in 37 CFR 1.53(f) so as to establish copendency. See 37 CFR 1.78(a)(1). Effective July 1, 2005, the processing and retention fee (37 CFR 1.21(l)) practice has been eliminated. The basic filing fee (rather than just the processing and retention fee set forth in former 37 CFR 1.21(l)) must be paid within the pen- dency of a nonprovisional application in order to per- mit benefit of the application to be claimed under 35 U.S.C. 120, 121, or 365(c) in a subsequent nonprovi- sional or international application. See 37 CFR 1.78(a)(1)(ii).

Should a *>continuation or divisional< application be filed under 37 CFR 1.53(b)(1) where a copy of the oath or declaration from the prior application is uti- lized (or under 37 CFR 1.53(d) as a CPA if the prior application is a design application) purporting to add an inventor, the inventorship of the prior application will be retained in the continuing application as addi- tion of an inventor is not permitted in these instances. The absence of a request to correct the inventorship submitted with the continuing application will not affect the filing date of the continuing application. However, the retained inventorship must

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then be corrected by the filing of a request under 37 CFR 1.48(a) in the *>continuation or divisional< application stating that the error in failing to name the additional inventor in the prior application was with- out deceptive intention. Where an inventor is to be added, it is recommended that a *>continuation or divisional< application be filed under 37 CFR 1.53(b) with a newly executed oath or declaration and not be filed with a copy of the oath or declaration from the prior application. This procedure eliminates the need for a request under 37 CFR 1.48.

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

When entering the national stage under 35 U.S.C. 371, correction of inventorship is via the provisions of 37 CFR 1.497(d). See MPEP § 1893.01(e).

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

The request to correct the inventorship of this nonprovisional application under 37 CFR 1.48(a) is deficient because:

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

Potential rejections

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

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

2. A primary examiner may not decide the request if the request is also accompanied by a petition under 37 CFR 1.183 requesting waiver of one of the requirements explicitly set forth in 37 CFR 1.48(a) (typically a refusal of one of the inventors to be added or deleted to execute the required statement of facts) – the request for correction of inventorship and request for waiver of the rules should be forwarded to the Office of Petitions. 3. One or more of form paragraphs 2.13a - 2.13e should follow this form paragraph, as applicable. 4. Where it appears that: 1) the inventor(s) to be added or deleted may be hostile and will not execute a required statement of facts; and 2) the actual inventorship would overlap the original inventorship (37 CFR 1.78), follow this form paragraph with form paragraph 2.13f. 5. Requests under 37 CFR 1.41 to change inventorship where an executed oath or declaration has not been filed are to be acted upon by OIPE. 6. Where there is a correction in a person’s name, e.g., due to misspelling, or marriage, a request under 37 CFR 1.48 is inappro- priate. See MPEP § 605.04(b) and (c) for name changes. 7. An initial executed oath or declaration under 37 CFR 1.63 may change the inventorship as originally set forth when the application is filed without an executed oath or declaration with- out request for correction of inventorship (37 CFR 1.48(f)).

¶ 2.13a Statement of Facts Problem (for Use Following FP 2.13, If Applicable)

The statement of facts by an inventor or inventors to be added or deleted does not explicitly state that the inventorship error occurred without deceptive intent on his or her part or cannot be construed to so state.

¶ 2.13b No New Oath or Declaration (for Use Following FP 2.13 or 2.13.02, If Applicable)

An oath or declaration by each actual inventor or inventors list- ing the entire inventive entity has not been submitted.

¶ 2.13c Required Fee Not Submitted (for Use Following FP 2.13, 2.13.01 or 2.13.02, If Applicable)

It lacks the required fee under 37 CFR 1.17(i).

¶ 2.13d Written Consent Missing (for Use Following FP 2.13 or 2.13.02, If Applicable)

It lacks the written consent of any assignee of one of the origi- nally named inventors.

¶ 2.13e 37 CFR 3.73(b) Submission (for Use Following FP 2.13 or 2.13.02, If Applicable)

A 37 CFR 3.73(b) submission has not been received to support action by the assignee.

¶ 2.13f Hostile Inventor(s)/Inventorship Overlap (for Use Following FP 2.13, If Applicable)

As it appears that a party required by 37 CFR 1.48(a)(2) to sub- mit a statement of facts may not be willing to submit such state- ment, applicant should consider either: a) submission of a petition under 37 CFR 1.183 to waive that requirement if the original named inventor(s) has assigned the entire right and interest to an

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assignee who has given its consent to the requested inventorship correction, MPEP § 201.03, Statement of Lack of Deceptive Intention, or b) refiling the application (where addition is needed under 37 CFR 1.53(b) with a new oath or declaration and any nec- essary petition under 37 CFR 1.47, or where only deletion is needed, either under 37 CFR 1.53(b) utilizing a copy of a prior oath or declaration under 37 CFR 1.63(d)(1)(iv), or under 37 CFR 1.53(d)) (design applications only), thereby eliminating the need for a 37 CFR 1.48 request.

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

The request for the deletion of an inventor in this nonprovi- sional application under 37 CFR 1.48(b) is deficient because:

Examiner Note: 1. This form paragraph should only be used when the inventor- ship was previously correct when originally executed but an inventor is being deleted because claims have been amended or canceled such that he or she is no longer an inventor of any remaining claim in the non-provisional application. If the inven- torship is being corrected because of an error in naming the cor- rect inventors, use form paragraph 2.13 instead of this form paragraph. 2. Follow this form paragraph with one or both of form para- graphs 2.13c and 2.13g. 3. See note 1 of form paragraph 2.13, Potential rejections.

¶ 2.13g Statement Under 37 CFR 1.48(b)(2) Problem (for Use Following FP 2.13.01, If Applicable)

The request was not accompanied by the statement required under 37 CFR 1.48 (b)(2).

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

The request to correct the inventorship in this nonprovisional application under 37 CFR 1.48(c) requesting addition of an inven- tor(s) is deficient because:

Examiner Note: 1. This form paragraph should only be used when the inventor- ship was previously correct when the application was originally executed, but the inventorship now needs to be changed due to subsequent addition of subject matter from the specification to the claims, which subject matter was contributed by a party not origi- nally named as an inventor. 2. See note 2 of form paragraph 2.13. 3. Follow this form paragraph with any of form paragraphs 2.13b-2.13e or 2.13h. 4. See note 1 of form paragraph 2.13, Potential rejections. 5. See notes 4-7 of form paragraph 2.13.

¶ 2.13h Statement of Facts, Added Inventor (for Use Following FP 2.13.02, If Applicable)

The statement of facts by the inventor(s) to be added does not explicitly state that the amendment of the inventorship is necessi- tated by amendment of the claims and that the inventorship error

occurred without deceptive intent on the part of the inventor(s) to be added, or cannot be construed to so state.

¶ 2.14 Correction of Inventorship Under 37 CFR 1.48(a) or (c), Sufficient

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

The application will be forwarded to the Office of Initial Patent Examination (OIPE) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as cor- rected.

Examiner Note: 1. In bracket 2, insert --a-- or --c--, as appropriate. 2. In bracket 3, insert explanation of correction made, including addition or deletion of appropriate names.

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

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

The application will be forwarded to the Office of Initial Patent Examination (OIPE) for issuance of a corrected filing receipt, and correction of Office records to reflect the inventorship as cor- rected.

Examiner Note: 1. This form paragraph is to be used only for 37 CFR 1.48(b) corrections. 2. In bracket 2, insert the names of the deleted inventor(s).

III. 37 CFR 1.48(b)

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

*****

(b) Nonprovisional application—fewer inventors due to amendment or cancellation of claims. If the correct inventors are named in a nonprovisional application, and the prosecution of the nonprovisional application results in the amendment or cancella- tion of claims so that fewer than all of the currently named inven- tors are the actual inventors of the invention being claimed in the nonprovisional application, an amendment must be filed request- ing deletion of the name or names of the person or persons who are not inventors of the invention being claimed. Amendment of the inventorship requires:

(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the named inventor or inventors being deleted and acknowledges that the inventor's invention is no longer being claimed in the nonprovisional appli- cation; and

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(2) The processing fee set forth in § 1.17(i).

*****

37 CFR 1.48(b) provides for deleting the names of persons originally properly included as inventors, but whose invention is no longer being claimed in a non- provisional application. Such a situation would arise where claims have been amended or deleted during prosecution because they are unpatentable or as a result of a requirement for restriction of the applica- tion to one invention, or for other reasons. A request under 37 CFR 1.48(b) to delete an inventor would be appropriate prior to an action by the TC where it is decided not to pursue particular aspects of an inven- tion attributable to some of the original named inven- tors.

37 CFR 1.48(b) requires that the amendment be accompanied by: (1) a request including a statement identifying each named inventor who is being deleted and acknowledging that the inventor’s invention is no longer being claimed in the application; and (2) a fee under 37 CFR 1.17(i). The statement may be signed by applicant’s registered attorney or agent who then takes full responsibility for ensuring that the inventor is not being improperly deleted from the application. Written consent of any assignee is not required for requests filed under 37 CFR 1.48(b).

IV. 37 CFR 1.48(c)

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

*****

(c) Nonprovisional application—inventors added for claims to previously unclaimed subject matter. If a nonprovisional appli- cation discloses unclaimed subject matter by an inventor or inven- tors not named in the application, the application may be amended to add claims to the subject matter and name the correct inventors for the application. Amendment of the inventorship requires:

(1) A request to correct the inventorship that sets forth the desired inventorship change;

(2) A statement from each person being added as an inventor that the addition is necessitated by amendment of the claims and that the inventorship error occurred without deceptive intention on his or her part;

(3) An oath or declaration by the actual inventors as required by § 1.63 or as permitted by §§ 1.42, 1.43, or § 1.47;

(4) The processing fee set forth in § 1.17(i); and

(5) If an assignment has been executed by any of the orig- inal named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

*****

37 CFR 1.48(c) provides for the situation where a nonprovisional application discloses unclaimed sub- ject matter by an inventor or inventors not named in the application when an executed declaration under 37 CFR 1.63 was first filed. In such a situation, the nonprovisional application may be amended pursuant to 37 CFR 1.48(c) to add claims directed to the origi- nally unclaimed but disclosed subject matter and also to name the correct inventors for the application based on the newly added claims. Any claims added to the application must be supported by the disclosure as filed and cannot add new matter.

37 CFR 1.48(c) requires that the amendment must be accompanied by: (1) a request to correct the inven- torship that sets forth the desired inventorship change; (2) a statement from each person being added as an inventor that the amendment is necessitated by an amendment to the claims and that the inventorship error occurred without deceptive intention on his or her part; (3) an oath or declaration by each actual inventor; (4) the fee under 37 CFR 1.17(i); and (5) the written consent of any assignee of the original named inventors.

V. 37 CFR 1.48(d)

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

*****

(d) Provisional application—adding omitted inventors. If the name or names of an inventor or inventors were omitted in a provisional application through error without any deceptive inten- tion on the part of the omitted inventor or inventors, the provi- sional application may be amended to add the name or names of the omitted inventor or inventors. Amendment of the inventorship requires:

(1) A request, signed by a party set forth in § 1.33(b), to correct the inventorship that identifies the inventor or inventors being added and states that the inventorship error occurred with- out deceptive intention on the part of the omitted inventor or inventors; and

(2) The processing fee set forth in § 1.17(q).

*****

37 CFR 1.48(d) provides a procedure for adding the name of an inventor in a provisional application,

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where the name was originally omitted without deceptive intent.

37 CFR 1.48(d) requires that the amendment be accompanied by: (1) a request to correct the inventor- ship that sets forth the desired inventorship change; (2) a statement that the inventorship error occurred without deceptive intention on the part of the omitted inventor or inventors; and (3) the fee set forth in 37 CFR 1.17(q). The statement of lack of deceptive intent may be included in the request and may be signed by a registered attorney or agent. A statement of lack of deceptive intent is not required from any of the original or to be added inventors.

See also discussion below regarding requests filed under 37 CFR 1.48(e).

VI. 37 CFR 1.48(e)

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

*****

(e) Provisional application—deleting the name or names of the inventor or inventors. If a person or persons were named as an inventor or inventors in a provisional application through error without any deceptive intention on the part of such person or per- sons, an amendment may be filed in the provisional application deleting the name or names of the person or persons who were erroneously named. Amendment of the inventorship requires:

(1) A request to correct the inventorship that sets forth the desired inventorship change;

(2) A statement by the person or persons whose name or names are being deleted that the inventorship error occurred with- out deceptive intention on the part of such person or persons;

(3) The processing fee set forth in § 1.17(q); and (4) If an assignment has been executed by any of the orig-

inal named inventors, the written consent of the assignee (see § 3.73(b) of this chapter).

*****

37 CFR 1.48(e) provides a procedure for deleting the name of a person who was erroneously named as an inventor in a provisional application.

37 CFR 1.48(e) requires that the amendment be accompanied by: (1) a request to correct the inventor- ship that sets forth the desired inventorship change; (2) a statement of lack of deceptive intent by the per- son whose name is being deleted establishing that the error occurred without deceptive intention on his or her part; (3) the fee set forth in 37 CFR 1.17(q); and (4) the written consent of any assignee.

Under 35 U.S.C. 119(e), as contained in Public Law 103-465, a later filed nonprovisional application under 35 U.S.C. 111(a) that is filed within twelve months of an earlier provisional application may claim benefits based on the earlier filed provisional application so long as both applications have at least one inventor in common. An error in not naming or in naming a person as an inventor in a provisional appli- cation would not require correction under either 37 CFR 1.48(d) (to add an inventor) or 37 CFR 1.48(e) (to delete an inventor) in the provisional appli- cation so long as the nonprovisional application nam- ing the correct inventorship would contain an overlap of at least one inventor with the provisional applica- tion. The existence of inventorship overlap would pre- vent the original inventorship error from having any effect upon the ability of the provisional application to serve as a basis for a benefit claim under 35 U.S.C. 119(e) with the U.S. Patent and Trademark Office.

If, however, applicant chooses to correct the inven- tive entity of a provisional application, for example, to permit the provisional application to serve as the basis of a priority claim in a foreign country, 37 CFR 1.48(d) and (e) set forth the procedures for adding one or more actual inventors and for deleting one or more erroneously named inventors respectively.

In the situation where an inventor was not named in a provisional application and an inventor was also erroneously named in the same provisional applica- tion and correction is desired, a request under 37 CFR 1.48(d) and a request under 37 CFR 1.48(e) would be required.

Where an inventorship error in a provisional appli- cation is desired to be corrected after expiration of twelve months from the filing date of the provisional application, a request under 37 CFR 1.48(d) and/or 37 CFR 1.48(e) may still be filed with OIPE, which handles requests under 37 CFR 1.48(d) and (e), to correct the inventorship in provisional applications.

VII. 37 CFR 1.48(f)

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

*****

(f)(1) Nonprovisional application—filing executed oath/dec- laration corrects inventorship. If the correct inventor or inventors are not named on filing a nonprovisional application under

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§ 1.53(b) without an executed oath or declaration under § 1.63 by any of the inventors, the first submission of an executed oath or declaration under § 1.63 by any of the inventors during the pen- dency of the application will act to correct the earlier identifica- tion of inventorship. See §§ 1.41(a)(4) and 1.497(d) and (f) for submission of an executed oath or declaration to enter the national stage under 35 U.S.C. 371 naming an inventive entity different from the inventive entity set forth in the international stage.

(2) Provisional application filing cover sheet corrects inventorship. If the correct inventor or inventors are not named on filing a provisional application without a cover sheet under § 1.51(c)(1), the later submission of a cover sheet under § 1.51(c)(1) during the pendency of the application will act to cor- rect the earlier identification of inventorship.

*****

37 CFR 1.48(f)(1) and (f)(2) will act to automati- cally correct an earlier identification of inventorship in a nonprovisional application by the filing of an ini- tial executed oath or declaration and in a provisional application by the filing of an initial cover sheet. A request and fee is not required for the inventorship correction to occur.

The provision in 37 CFR 1.48(f)(1) for changing the inventorship only applies if an executed oath or declaration under 37 CFR 1.63 has not been submitted by any of the inventors. In this situation, the submis- sion of an executed oath or declaration under 37 CFR 1.63 by any of the inventors is sufficient to correct an earlier identification of inventorship. A first-filed oath or declaration under 37 CFR 1.63 executed by less than all of the inventors initially identified will, under 37 CFR 1.48(f)(1), determine the inventorship in the application. Any subsequent oath or declaration filed by a different inventive entity will not be effective under 37 CFR 1.48(f)(1) to correct the inventorship that was specified in the first-filed oath or declaration.

37 CFR 1.48(f)(1) is not applicable for national stage applications filed under 35 U.S.C. 371 where the inventorship has been erroneously named in the international application. Accordingly, if the inventor- ship set forth in the oath or declaration filed in the national stage application differs from the inventor- ship specified in the international application, the requirements of 37 CFR 1.497(d) must be satisfied. See MPEP § 1893.01(e).

VIII. 37 CFR 1.48(g)

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

*****

(g) Additional information may be required. The Office may require such other information as may be deemed appropriate under the particular circumstances surrounding the correction of inventorship.

201.04 Parent Application

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

201.04(a) Original Application

“Original” is used in the patent statute and rules to refer to an application which is not a reissue applica- tion. An original application may be a first filing or a continuing application.

201.04(b) Provisional Application [R-5] 35 U.S.C. 111. Application.

*****

(b) PROVISIONAL APPLICATION.— (1) AUTHORIZATION.—A provisional application for

patent shall be made or authorized to be made by the inventor, except as otherwise provided in this title, in writing to the Direc- tor. Such application shall include—

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

(B) a drawing as prescribed by section 113 of this title. (2) CLAIM.—A claim, as required by the second through

fifth paragraphs of section 112, shall not be required in a provi- sional application.

(3) FEE.— (A) The application must be accompanied by the fee

required by law. (B) The fee may be submitted after the specification

and any required drawing are submitted, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director.

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

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

(5) ABANDONMENT.—Notwithstanding the absence of a claim, upon timely request and as prescribed by the Director, a provisional application may be treated as an application filed under subsection (a). Subject to section 119(e)(3) of this title, if no such request is made, the provisional application shall be regarded as abandoned 12 months after the filing date of such application and shall not be subject to revival after such 12-month period.

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

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

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

37 CFR 1.9. Definitions. (a)(1)A national application as used in this chapter means a

U.S. application for patent which was either filed in the Office under 35 U.S.C. 111, or which entered the national stage from an international application after compliance with 35 U.S.C. 371.

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

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

*****

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

*****

(c) Application filing requirements - Provisional applica- tion. The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.

(1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data

sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.

(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for con- version will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:

(i) Abandonment of the application filed under para- graph (b) of this section;

(ii) Payment of the issue fee on the application filed under paragraph (b) of this section;

(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or

(iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.

(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provi- sional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional appli- cation or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a pro- visional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the pro- visional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional appli- cation pursuant to this paragraph). A request to convert a provi- sional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the provisional application under para- graph (c) of this section otherwise contains at least one claim as prescribed by the second paragraph of 35 U.S.C.112. The nonpro- visional application resulting from conversion of a provisional application must also include the filing fee, search fee, and exami- nation fee for a nonprovisional application, an oath or declaration by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the sur- charge required by § 1.16(f) if either the basic filing fee for a non- provisional application or the oath or declaration was not present on the filing date accorded the resulting nonprovisional applica- tion (i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:

(i) Abandonment of the provisional application filed under paragraph (c) of this section; or

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(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this sec- tion.

(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design applica- tion based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regard- ing application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.

*****

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

>A provisional application is a regular national fil- ing that starts the Paris Convention priority year. For- eign filings must be made within 12 months of the filing date of the provisional application if applicant wishes to rely on the filing date of the provisional application in the foreign filed application.<

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

NOTE:

(A) No claim is required in a provisional applica- tion.

(B) No oath or declaration is required in a provi- sional application.

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

A provisional application will automatically be abandoned 12 months after its filing date and will not be subject to revival to restore it to pending status thereafter. See 35 U.S.C. 111(b)(5). Public Law 106- 113 amended 35 U.S.C. 119(e)(3) to extend the period of pendency of a provisional application to the next succeeding business day if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia. See also 37 CFR 1.7(b). 35 U.S.C. 119(e)(3) as amended by Public Law 106- 113 is effective as of November 29, 1999 and applies to any provisional applications filed on or after June 8, 1995 but has no effect on any patent which is the subject of litigation in an action commenced before November 29, 1999.

For example, if a provisional application was filed on January 15, 1999, the last day of pendency of the provisional application under 35 U.S.C. 111(b)(5) and 35 U.S.C. 119(e)(3) is extended to January 18, 2000 (January 15, 2000 is a Saturday and Monday, January 17, 2000 is a Federal holiday and therefore, the next succeeding business day is Tuesday, January 18, 2000). A nonprovisional application claiming the ben- efit of the provisional application must be filed no later than January 18, 2000.

A provisional application is not entitled to claim priority benefits based on any other application under 35 U.S.C. 119, 120, 121, or 365. If applicant attempts to claim the benefit of an earlier U.S. or foreign appli- cation in a provisional application, the filing receipt will not reflect the improper benefit or priority claim. Moreover, if a nonprovisional application claims the benefit of the filing date of a provisional application, and states that the provisional application relies upon the filing date of an earlier application, the claim for benefit or priority earlier than the filing date of the provisional application will be disregarded.

An application filed under 37 CFR 1.53(b) may be converted to a provisional application provided a request for conversion is submitted along with the fee as set forth in 37 CFR 1.17(q). The request and fee must be submitted prior to the earlier of the abandon- ment of the nonprovisional application, the payment of the issue fee, the expiration of 12 months after the

TYPES, CROSS-NOTING, AND STATUS OF APPLICATION 201.04(b)

200-17 Rev. 5, Aug. 2006

filing date of the nonprovisional application, or the filing of a request for statutory invention registration. The grant of any such request will not entitle appli- cant to a refund of the fees which were properly paid in the application filed under 37 CFR 1.53(b). See MPEP § 601.01(c)

Public Law 106-113 amended 35 U.S.C. 111(b)(5) to permit a provisional application filed under 37 CFR 1.53(c) be converted to a nonprovisional application filed under 37 CFR 1.53(b). 35 U.S.C. 111(b)(5) as amended by Public Law 106-113 is effective as of November 29, 1999 and applies to any provisional applications filed on or after June 8, 1995. A request to convert a provisional application to a nonprovi- sional application must be accompanied by the fee set forth in 37 CFR 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112, unless the provisional application otherwise contains at least one such claim. The request must be filed prior to the earliest of the abandonment of the provi- sional application or the expiration of twelve months

after the filing date of the provisional application. The filing fee for a nonprovisional application, an exe- cuted oath or declaration under 37 CFR 1.63, and the surcharge under 37 CFR 1.16(f), if appropriate, are also required. The grant of any such request will not entitle applicant to a refund of the fees which were properly paid in the application filed under 37 CFR 1.53(c). Conversion of a provisional application to a nonprovisional application will result in the term of any patent issuing from the application being mea- sured from at least the filing date of the provisional application. This adverse patent term impact can be avoided by filing a nonprovisional application claim- ing the benefit of the provisional application under 35 U.S.C. 119(e), rather than requesting conversion of the provisional application to a nonprovisional appli- cation. See 37 CFR 1.53(c)(3).

Design applications may not make a claim for pri- ority of a provisional application under 35 U.S.C. 119(e). See 35 U.S.C. 172 and 37 CFR 1.78(a)(4).

201.04(b) MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 200-18

**> Form PTO/SB/16. Provisional Application for Patent Cover Sheet

PTO/SB/16 (07-06) Approved for use through 01/31/2007. OMB 0651-0032

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.

PROVISIONAL APPLICATION FOR PATENT COVER SHEET – Page 1 of 2 This is a request for filing a PROVISIONAL APPLICATION FOR PATENT under 37 CFR 1.53(c).

Express Mail Label No.

INVENTOR(S) Given Name (first and middle [if any]) Family Name or Surname Residence

(City and either State or Foreign Country)

Additional inventors are being named on the ________________________separately numbered sheets attached hereto TITLE OF THE INVENTION (500 characters max):

Direct all correspondence to: CORRESPONDENCE ADDRESS

The address corresponding to Customer Number:

OR Firm or Individual Name

Address

City State Zip

Country Telephone Email

ENCLOSED APPLICATION PARTS (check all that apply)

Application Data Sheet. See 37 CFR 1.76 CD(s), Number of CDs

Drawing(s) Number of Sheets ____________________ Other (specify) ______________________________

Specification (e.g. description of the invention) Number of Pages __________________ Fees Due: Filing Fee of $200 ($100 for small entity). If the specification and drawings exceed 100 sheets of paper, an application size fee is also due, which is $250 ($125 for small entity) for each additional 50 sheets or fraction thereof. See 35 U.S.C. 41(a)(1)(G) and 37 CFR 1.16(s).

METHOD OF PAYMENT OF THE FILING FEE AND APPLICATION SIZE FEE FOR THIS PROVISIONAL APPLICATION FOR PATENT

Applicant claims small entity status. See 37 CFR 1.27.

A check or money order is enclosed to cover the filing fee and application size fee (if applicable).

Payment by credit card. Form PTO-2038 is attached TOTAL FEE AMOUNT ($)

The Director is hereby authorized to charge the filing fee and application size fee (if applicable) or credit any overpayment to Deposit

Account Number: ______________________. A duplicative copy of this form is enclosed for fee processing.

USE ONLY FOR FILING A PROVISIONAL APPLICATION FOR PATENT This collection of information is required by 37 CFR 1.51. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 8 hours to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

If you need assistance in completing the form, call 1-800-PTO-9199 and select option 2.

Doc Code:

TYPES, CROSS-NOTING, AND STATUS OF APPLICATION 201.04(b)

200-19 Rev. 5, Aug. 2006

Form PTO/SB/16. Provisional Application for Patent Cover Sheet (Additional Page)

PROVISIONAL APPLICATION COVER SHEET Page 2 of 2

PTO/SB/16 (07-06) Approved for use through 01/31/2007. OMB 0651-0032

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.

The invention was made by an agency of the United States Government or under a contract with an agency of the United States Government.

No. Yes, the name of the U.S. Government agency and the Government contract number are: ___________________________________

___________________________________________________________________________________________________________

WARNING: Petitioner/applicant is cautioned to avoid submitting personal information in documents filed in a patent application that may contribute to identity theft. Personal information such as social security numbers, bank account numbers, or credit card numbers (other than a check or credit card authorization form PTO-2038 submitted for payment purposes) is never required by the USPTO to support a petition or an application. If this type of personal information is included in documents submitted to the USPTO, petitioners/applicants should consider redacting such personal information from the documents before submitting them to the USPTO. Petitioner/applicant is advised that the record of a patent application is available to the public after publication of the application (unless a non-publication request in compliance with 37 CFR 1.213(a) is made in the application) or issuance of a patent. Furthermore, the record from an abandoned application may also be available to the public if the application is referenced in a published application or an issued patent (see 37 CFR 1.14). Checks and credit card authorization forms PTO-2038 submitted for payment purposes are not retained in the application file and therefore are not publicly available.

SIGNATURE ______________________________________________________________ Date_________________________________

TYPED or PRINTED NAME ___________________________________________________ REGISTRATION NO. ___________________ (if appropriate)

Doc Code:

201.04(b) MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 200-20

Form PTO/SB/16. Provisional Application for Patent Cover Sheet (Additional Page)

<

Privacy Act Statement

The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your submission of the attached form related to a patent application or patent. Accordingly, pursuant to the requirements of the Act, please be advised that: (1) the general authority for the collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark Office is to process and/or examine your submission related to a patent application or patent. If you do not furnish the requested information, the U.S. Patent and Trademark Office may not be able to process and/or examine your submission, which may result in termination of proceedings or abandonment of the application or expiration of the patent.

The information provided by you in this form will be subject to the following routine uses:

1. The information on this form will be treated confidentially to the extent allowed under the Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of records may be disclosed to the Department of Justice to determine whether disclosure of these records is required by the Freedom of Information Act.

2. A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel in the course of settlement negotiations.

3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress submitting a request involving an individual, to whom the record pertains, when the individual has requested assistance from the Member with respect to the subject matter of the record.

4. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency having need for the information in order to perform a contract. Recipients of information shall be required to comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 552a(m).

5. A record related to an International Application filed under the Patent Cooperation Treaty in this system of records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.

6. A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C. 218(c)).

7. A record from this system of records may be disclosed, as a routine use, to the Administrator, General Services, or his/her designee, during an inspection of records conducted by GSA as part of that agency’s responsibility to recommend improvements in records management practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance with the GSA regulations governing inspection of records for this purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not be used to make determinations about individuals.

8. A record from this system of records may be disclosed, as a routine use, to the public after either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the record was filed in an application which became abandoned or in which the proceedings were terminated and which application is referenced by either a published application, an application open to public inspection or an issued patent.

9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regulation.

TYPES, CROSS-NOTING, AND STATUS OF APPLICATION 201.06

200-21 Rev. 5, Aug. 2006

201.05 Reissue Application [R-3]

A reissue application is an application for a patent to take the place of an unexpired patent that is defec- tive **>as a result of an error in the patent which was made without deceptive intention.< A detailed treat- ment of **>reissue applications can< be found in Chapter 1400.

201.06 Divisional Application [R-2]

A later application for an independent or distinct invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divi- sional application or “division.” >A divisional appli- cation is often filed as a result of a restriction requirement made by the examiner.< The divisional application must claim the benefit of the prior nonpro- visional application under 35 U.S.C. 121 or 365(c). *>See MPEP § 201.11 for the conditions for receiving the benefit of the filing date of the prior application. The divisional application should set forth at least the portion of the earlier disclosure that is germane to the invention as claimed in the divisional application.

Divisional applications of utility or plant applica- tions must be filed under 37 CFR 1.53(b). Divisional applications of design applications< may be filed pur- suant to 37 CFR 1.53(b) or 1.53(d). 37 CFR 1.60 and 1.62 have been deleted as of December 1, 1997.

**>Effective July 14, 2003, continued prosecution application (CPA) practice set forth in 37 CFR 1.53(d) has been eliminated as to utility and plant applica- tions.< An application claiming the benefits of a pro- visional application under 35 U.S.C. 119(e) should not be called a “division” of the provisional applica- tion since the application will have its patent term cal- culated from its filing date, whereas an application filed under 35 U.S.C. 120, 121, or 365(c) will have its patent term calculated from the date on which the ear- liest application was filed, provided a specific refer- ence is made to the earlier filed application(s). 35 U.S.C. 154(a)(2) and (a)(3).

In the interest of expediting the processing of newly filed divisional applications filed as a result of a restriction requirement, applicants are requested to include the appropriate U.S. Patent and Trademark Office classification of the divisional application and the status and *>assigned art unit< of the parent appli-

cation on the papers submitted. The appropriate clas- sification for the divisional application may be found in the Office communication of the parent application wherein the >restriction< requirement was made. It is suggested that this classification designation be placed in the upper right hand corner of the letter of transmittal accompanying these divisional applica- tions or in an application data sheet as set forth in 37 CFR 1.76(b)(3).

Use form paragraph 2.01 to remind applicant of possible divisional status. **>

¶ 2.01 Definition of Division This application appears to be a division of Application No.

[1], filed [2]. A later application for a distinct or independent invention, carved out of a pending application and disclosing and claiming only subject matter disclosed in the earlier or parent application, is known as a divisional application or “division.” The divisional application should set forth the portion of the ear- lier disclosure that is germane to the invention as claimed in the divisional application.

Examiner Note: 1. In bracket 1, insert the Application No.(series code and serial no.) of the parent application. 2. In bracket 2, insert the filing date of the parent application. 3. An application claiming the benefits of a provisional applica- tion under 35 U.S.C. 119(e) should not be called a “division” of the provisional application since the application will have its patent term calculated from its filing date, whereas an application filed under 35 U.S.C. 120, 121, or 365(c) will have its term calcu- lated from the date on which the earliest application was filed, provided a specific reference is made to the earlier filed applica- tion(s), 35 U.S.C. 154(a)(2) and (a)(3).

< A design application may be considered to be a

division of a utility application (but not of a provi- sional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility appli- cation show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112, first paragraph. However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b) not under 37 CFR 1.53(d). ** See MPEP § 1504.20.

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

201.06(a) MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 200-22

For notation to be put *>in< the file *>history< by the examiner in the case of a divisional application, see MPEP § 202.02.

201.06(a) Former 37 CFR 1.60 Division- al-Continuation Procedure [R-2]

* 37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A contin- uation or divisional application filed under 37 CFR 1.60 on or after December 1, 1997, will automatically be treated as an application filed under 37 CFR 1.53(b). All continuation and divi- sional applications filed under 37 CFR 1.60 prior to December 1, 1997 will continue to be processed and examined under the procedures set forth in former 37 CFR 1.60. **>For more information pertaining to practice and procedure under former 37 CFR 1.60, see MPEP § 201.06(a) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO web site at www.uspto.gov/web/offices/ pac/mpep/mpep.htm).<

201.06(b) Former 37 CFR 1.62 File Wrapper Continuing Proce- dure [R-2]

*37 CFR 1.62 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A >request for a< continuation or divisional applica- tion filed under former 37 CFR 1.62 on or after December 1, 1997, >, in an application that was filed on or after June 8, 1995,< will be treated as ** a request for continued examination (RCE) under 37 CFR *>1.114<, see MPEP 706.07(h), paragraph IV. **>A request< filed on or after December 1, 1997, under former 37 CFR 1.62 *>for< a continu- ation-in-part (CIP) application, **>, or for a con- tinuation or divisional of an application having a filing date before June 8, 1995,< will be treated as an improper application.

** All continuation, divisional and CIP applica-

tions filed under former 37 CFR 1.62 prior to December 1, 1997, will continue to be processed and examined under the procedures set forth in former 37 CFR 1.62. **>For more information

pertaining to practice and procedure under former 37 CFR 1.62, see MPEP § 201.06(b) in the MPEP 8th Edition, Rev. 1 (February 2003)(available on the USPTO web site at www.uspto.gov/web/offices/ pac/mpep/mpep.htm).<

201.06(c) 37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure [R-5]

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

*****

(b) Application filing requirements - Nonprovisional appli- cation. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under para- graph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its fil- ing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(a).

(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.

(2) A continuation-in-part application (which may dis- close and claim subject matter not disclosed in the prior applica- tion) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.

*****

37 CFR 1.63. Oath or Declaration.

*****

(d)(1)A newly executed oath or declaration is not required under § 1.51(b)(2) and § 1.53(f) in a continuation or divisional application, provided that:

(i) The prior nonprovisional application contained an oath or declaration as prescribed by paragraphs (a) through (c) of this section;

(ii) The continuation or divisional application was filed by all or by fewer than all of the inventors named in the prior application;

(iii) The specification and drawings filed in the continua- tion or divisional application contain no matter that would have been new matter in the prior application; and

(iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon

TYPES, CROSS-NOTING, AND STATUS OF APPLICATION 201.06(c)

200-23 Rev. 5, Aug. 2006

that it was signed, is submitted for the continuation or divisional application.

(2) The copy of the executed oath or declaration submit- ted under this paragraph for a continuation or divisional applica- tion must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inven- tors in the continuation or divisional application.

(3) Where the executed oath or declaration of which a copy is submitted for a continuation or divisional application was originally filed in a prior application accorded status under § 1.47, the copy of the executed oath or declaration for such prior applica- tion must be accompanied by:

(i) A copy of the decision granting a petition to accord § 1.47 status to the prior application, unless all inventors or legal representatives have filed an oath or declaration to join in an application accorded status under § 1.47 of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c); and

(ii) If one or more inventor(s) or legal representa- tive(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.

(4) Where the power of attorney or correspondence address was changed during the prosecution of the prior applica- tion, the change in power of attorney or correspondence address must be identified in the continuation or divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of attorney or corre- spondence address during the prosecution of the prior application.

(5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.

*****

I. IN GENERAL

37 CFR 1.53(b) is the section under which all appli- cations are filed EXCEPT: (A) an application result- ing from entry of an international application into the national stage under 35 U.S.C. 371 and 37 CFR 1.495; (B) a provisional application under 35 U.S.C. 111(b) and 37 CFR 1.53(c); or (C) a continued prose- cution application (CPA) of a design application under 37 CFR 1.53(d). Applications submitted under 37 CFR 1.53(b), as well as CPAs submitted under 37 CFR 1.53(d), are applications filed under 35 U.S.C. 111(a). An application filed under 37 CFR 1.53(b) may be an original, a continuation, a divi- sional, a continuation-in-part, or a substitute. (See MPEP § 201.09 for substitute application.) The appli- cation may be for a “utility” patent under 35 U.S.C.

101, a design patent under 35 U.S.C. 171, a plant patent under 35 U.S.C. 161, or a reissue under 35 U.S.C. 251.

37 CFR 1.53(b) is the “default” application. An application that is not (A) the result of the entry of an international application into the national stage after compliance with 35 U.S.C. 371 and 37 CFR 1.495, (B) a provisional application under 37 CFR 1.53(c), or (C) a CPA of a design application filed under 37 CFR 1.53(d), is an application filed under 37 CFR 1.53(b). An application will be treated as one filed under 37 CFR 1.53(b) unless otherwise desig- nated.

In order to be complete for filing date purposes, all applications filed under 37 CFR 1.53(b) must include a specification as prescribed by 35 U.S.C. 112 con- taining a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing required by 37 CFR 1.81(a). The statutory filing fee and an oath or declaration in compliance with 37 CFR 1.63 (and 37 CFR 1.175 (if a reissue) or 37 CFR 1.162 (if for a plant patent)) are also required by 37 CFR 1.51(b) for a complete application, but the filing fee and oath or declaration may be filed after the application filing date upon payment of the sur- charge set forth in 37 CFR 1.16(f). See 37 CFR 1.53(f) and MPEP § 607.

Any application filed on or after December 1, 1997, which is identified by the applicant as an application filed under 37 CFR 1.60 will be processed as an appli- cation under 37 CFR 1.53(b) (using the copy of the specification, drawings and signed oath/declaration filed in the prior application supplied by the appli- cant). Any submission of an application including or relying on a copy of an oath or declaration that would have been proper under 37 CFR 1.60 will be a proper filing under 37 CFR 1.53(b).

A new application containing a copy of an oath or declaration under 37 CFR 1.63 referring to an attached specification is indistinguishable from a con- tinuation or divisional application containing a copy of an oath or declaration from a prior application sub- mitted pursuant to 37 CFR 1.63(d). Unless an applica- tion is submitted with a statement that the application is a continuation or divisional application, see 37 CFR 1.78(a)(2), the Office will process the application as a new non-continuing application. Applicants are advised to clearly designate any continuation, divi-

201.06(c) MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 200-24

sional, or continuation-in-part application as such by submitting a reference to the prior-filed application with the appropriate relationship (i.e., continuation, divisional, or continuation-in-part) in compliance with 37 CFR 1.78(a) in the first sentence(s) of the specification or in an application data sheet to avoid the need for a petition to accept an unintentionally delayed claim under 37 CFR 1.78(a) and the sur- charge set forth in 37 CFR 1.17(t), and the issuance of a filing receipt that does not indicate that the applica- tion is a continuation, divisional, or continuation-in- part. See MPEP § 201.11.

II. OATH/DECLARATION

37 CFR 1.63(d) provides that a newly executed oath or declaration is not required in a continuation or divisional application filed by all or by fewer than all of the inventors named in a prior nonprovisional application containing a signed oath or declaration as required by 37 CFR 1.63, provided that a copy of the signed oath or declaration filed in the prior applica- tion is submitted for the continuation or divisional application and the specification and drawings filed in the continuation or divisional application do not con- tain any subject matter that would have been new matter in the prior application. The copy of the oath or declaration must show the signature of the inventor(s) or contain an indication thereon that the oath or decla- ration was signed (e.g., the notation “/s/” on the line provided for the signature). >If the copy of the signed oath or declaration from the prior application included a power of attorney, the power of attorney in the copy of the signed oath or declaration from the prior appli- cation would carry over to the continuation or divi- sional application. If the power of attorney was changed during the prosecution of the prior applica- tion, see subsection VII below.<

It is not necessary to have the inventor sign a new oath or declaration merely to include a reference to the duty of disclosure if the parent application was filed prior to January 1, 1978, to indicate that the inventor has reviewed and understands the contents of the application if the parent application was filed prior to October 1, 1983, or to indicate the inventor’s post office address if the parent application was filed prior to December 1, 1997, and the inventor’s mailing or

post office address is identified elsewhere in the appli- cation.

When a copy of an oath or declaration from a prior application is filed in a continuation or divisional application under 37 CFR 1.53(b), special care should be taken by the applicant to ensure that the copy is matched with the correct application file. Applicant should file the copy of the oath or declaration with a cover letter explaining that the copy of the oath or declaration is for the attached application or for a pre- viously-filed 37 CFR 1.53(b) application (identified by application number which consists of a two-digit series code, e.g., 08/, and a six-digit serial number, e.g., 123,456). An adhesive label may be attached to the front of the copy of the oath or declaration. The label should clearly state that the copy of the oath or declaration is intended for the attached application submitted therewith or for Application No. XX/ YYY,YYY. During initial processing, attachments (e.g., a cover letter) to application papers may be sep- arated. Therefore, applicant should not rely solely upon a cover letter. Note: 37 CFR 1.5(a) states that no correspondence relating to an application should be filed prior to receipt of the application number infor- mation from the Patent and Trademark Office.

37 CFR 1.63(d) requires a copy of the signed oath or declaration from the prior application. In instances in which the oath or declaration filed in the prior application is itself a copy of an oath or declaration from a prior application, either a copy of the copy of the oath or declaration in the prior application or a direct copy of the original oath or declaration is acceptable, as both are a copy of the oath or declara- tion in the prior application, see 37 CFR 1.4(d)(1)(ii).

The patent statute and rules of practice do not require that an oath or declaration include a date of execution, and no objection should be made to an oath or declaration because it lacks either a recent date of execution or any date of execution. The applicant’s duty of candor and good faith including compliance with the duty of disclosure requirements of 37 CFR 1.56 is continuous and applies to the continuing appli- cation.

A newly executed oath or declaration is required in a continuation or divisional application filed under 37 CFR 1.53(b) naming an inventor not named in the prior application, and in a continuation-in-part appli- cation.

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III. SPECIFICATION AND DRAWINGS

A continuation or divisional application may be filed under 35 U.S.C. 111(a) using the procedures set forth in 37 CFR 1.53(b), by providing: (A) a new specification and drawings and a copy of the signed oath or declaration as filed in the prior application provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application; or (B) a new specifica- tion and drawings and a newly executed oath or decla- ration provided the new specification and drawings do not contain any subject matter that would have been new matter in the prior application. To claim the bene- fit of a prior application under 35 U.S.C. 120, 121, or 365(c), applicant must include a reference to the prior application in compliance with 37 CFR 1.78(a) in the first sentence(s) of the specification or in an applica- tion data sheet. See MPEP § 201.11. The new specifi- cation and drawings of a continuation or divisional application filed under 37 CFR 1.53(b) may include changes to the specification and drawings originally filed in the prior application in the manner that an applicant may file a substitute specification, see 37 CFR 1.125, or amend the drawings of an application so long as it does not result in the introduction of new matter. Applicant should file a new set of claims as the original claims of the continuing application instead of filing a copy of the claims from the prior application and a preliminary amendment to those claims. It is the applicant’s responsibility to review any new specification or drawings submitted for a continuation or divisional application under 37 CFR 1.53(b) and 37 CFR 1.63(d) to determine that it con- tains no new matter. An applicant is advised to simply file a continuing application with a newly executed oath or declaration when it is questionable as to whether the continuing application adds material that would have been new matter if presented in the prior application. If one or more claims are allowed in the continuation or divisional application which are directed to matter shown and described in the prior nonprovisional application but not claimed in the prior application, the applicant should be required to file a supplemental oath or declaration under 37 CFR 1.67(b).

If a continuation or divisional application filed with a newly executed oath or declaration contains subject matter that would have been new matter in the prior

application, the application will have to be amended to indicate that it is a continuation-in-part application rather than a continuation or a divisional application. Form paragraph 2.10.01 may be used to require the applicant to correct the relationship of the applica- tions. See MPEP § 201.11.

Where a copy of the oath or declaration from a prior application was filed in a continuation or divi- sional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require: (A) a new oath or declara- tion along with the surcharge set forth in 37 CFR 1.16(f); and (B) that the application be redesignated as a continuation-in-part.

Any utility or plant patent application, including any continuing application, that will be published pur- suant to 35 U.S.C. 122(b) should be filed under 37 CFR 1.53(b) with a specification (including the claims), and drawings, that the applicant would like to have published. This is important because the Office will generally publish the specification (including the claims) and drawings as filed and, under 35 U.S.C. 154(d), a patentee may obtain provisional rights if the invention claimed in a patent is substantially identical to the invention claimed in the application publica- tion. Filing a continuing application under 37 CFR 1.53(b) with a preliminary amendment (which makes all the desired changes to the specification, including adding, deleting or amending claims) is NOT recom- mended because the changes made by the preliminary amendment will generally not be reflected in the patent application publication even if the preliminary amendment is referred to in an oath or declaration. As noted above, a continuation or divisional application filed under 37 CFR 1.53(b) may be filed with a new specification and corrected drawings, along with a copy of an oath or declaration from a prior (parent) application, provided the new specification and draw- ings do not contain any subject matter that would have been new matter in the prior application. Thus, the new specification and corrected drawings may include some or all of the amendments entered during the prosecution of the prior application(s), as well as additional amendments submitted for clarity or con- textual purposes, and a new set of claims. In order to have a patent application publication of a continuation

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or divisional application contain only a desired set of claims, rather than the set of claims in the prior appli- cation, it is strongly recommended that the continua- tion or divisional application be filed under 37 CFR 1.53(b) with a new specification containing only the desired set of claims. If the continuation or divisional application is filed with a copy of the specification from the prior application along with a preliminary amendment which cancels, amends and/or adds new claims, publication of the application may exclude the preliminary amendment unless a copy of the specifi- cation (with the amended set of claims) was also sub- mitted through the Office’s Electronic Filing System (EFS).

IV. INCORPORATION BY REFERENCE

An applicant may incorporate by reference the prior application by including, in the continuation or divi- sional application-as-filed, an explicit statement that such specifically enumerated prior application or applications are “hereby incorporated by reference.” The statement must appear in the specification. See 37 CFR 1.57(b) and MPEP § 608.01(p). The inclusion of this incorporation by reference statement will per- mit an applicant to amend the continuation or divi- sional application to include subject matter from the prior application(s), without the need for a petition provided the continuation or divisional application is entitled to a filing date notwithstanding the incorpora- tion by reference. For applications filed prior to Sep- tember 21, 2004, the incorporation by reference statement may appear in the transmittal letter or in the specification. Note that for applications filed prior to September 21, 2004, if applicants used a former ver- sion of the transmittal letter form provided by the USPTO, the incorporation by reference statement could only be relied upon to add inadvertently omitted material to the continuation or divisional application.

For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120 and 37 CFR 1.78 for benefit of a prior-filed nonprovisional application or international application designating the U.S. that was present on the filing date of the continuation or divisional application is considered an incorporation by reference of the prior-filed application as to inad- vertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(a). The purpose of 37 CFR 1.57(a) is to provide a safeguard for appli-

cants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. For applications filed on or after Septem- ber 21, 2004, applicants are encouraged to provide an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed under 35 U.S.C. 120 if applicants do not wish the incorporation by reference to be limited to inadvert- ently omitted material pursuant to 37 CFR 1.57(a). See 37 CFR 1.57(b) and MPEP § 608.01(p) for dis- cussion regarding explicit incorporation by reference.

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)). If an incor- poration by reference statement is included in an amendment to the specification to add a benefit claim under 35 U.S.C. 120 after the filing date of the appli- cation, the amendment would not be proper. When a benefit claim under 35 U.S.C. 120 is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by refer- ence statement of the prior application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980).

Mere reference to another application, patent, or publication is not an incorporation of anything therein into the application containing such reference for the purpose of the disclosure required by 35 U.S.C. 112, first paragraph. In re de Seversky, 474 F.2d 671, 177 USPQ 144 (CCPA 1973). See MPEP § 608.01(p). As noted above, however, for applications filed on or after September 21, 2004, 37 CFR 1.57(a) provides that a claim for the benefit of a prior-filed application under 37 CFR 1.78 is considered an incorporation by reference as to inadvertently omitted material. See MPEP § 201.17.

A. Application NOT Entitled to a Filing Date

Material needed to accord an application a filing date may not be incorporated by reference unless an appropriate petition under 37 CFR 1.57(a)(3) or under 37 CFR 1.182 is granted. Until such a petition has been granted, the application will not be entitled to a filing date.

For an application filed on or after September 21, 2004, if the material needed for a filing date is com- pletely contained within a prior-filed application to

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which benefit is claimed, applicant may file a petition under 37 CFR 1.57(a)(3) along with the fee set forth in 37 CFR 1.17(f) and an amendment with the inad- vertently omitted material requesting that the amend- ment be entered and the application be accorded a filing date as of the original date of deposit of the application papers. See 37 CFR 1.57(a)(3) and MPEP § 201.17.

In an application containing an explicit incorpora- tion by reference statement in the specification or in a transmittal letter (if the transmittal letter was filed prior to September 21, 2004), a petition for the grant- ing of a filing date may be made under 37 CFR 1.182. A petition under 37 CFR 1.182 and the required peti- tion fee, including an amendment submitting the nec- essary omitted material, requesting that the necessary omitted material contained in the prior application and submitted in the amendment, be included in the continuation or divisional application based upon the incorporation by reference statement, is required in order to accord the application a filing date as of the date of deposit of the continuation or divisional appli- cation. An amendment submitting the omitted mate- rial and relying upon the incorporation by reference will not be entered in the continuation or divisional application unless a decision granting the petition states that the application is accorded a filing date and that the amendment will be entered.

B. Application Entitled to a Filing Date

If a continuation or divisional application as origi- nally filed on or after September 21, 2004 does not include an explicit incorporation by reference state- ment and is entitled to a filing date despite the inad- vertent omission of a portion of the prior application(s), applicant may be permitted to add the omitted material by way of an amendment under 37 CFR 1.57(a). Such an amendment must be made within any time period set by the Office. See 37 CFR 1.57(a)(1).

If an application as originally filed included a proper explicit incorporation by reference statement (or an explicit incorporation by reference statement that has been made effective under 37 CFR 1.57(g)), the omitted specification page(s) and/or drawing fig- ure(s) may be added by amendment provided the omitted item(s) contains only subject matter in com- mon with a document that has been properly incorpo-

rated by reference. If the Office identified the omitted item(s) in a “Notice of Omitted Item(s),” applicant need not respond to the “Notice of Omitted Item(s).” Applicant should, however, submit the amendment adding the omitted material prior to the first Office action to avoid delays in the prosecution of the appli- cation. See MPEP § 601.01(d) and § 601.01(g).

V. INVENTORSHIP

The filing of a continuation or divisional applica- tion by all or by fewer than all of the inventors named in a prior application without a newly executed oath or declaration is permitted. Applicant has the option of filing: (A) a newly executed oath or declaration signed by the inventors for the continuation or divi- sional application; or (B) a copy of the oath or decla- ration filed in the prior application accompanied by a statement from applicant, applicant’s representative or other authorized party requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application. See 37 CFR 1.63(d). Where the continuation or divisional application and a copy of the oath or declaration from the prior application are filed without a statement from an authorized party requesting deletion of the names of any person or persons named in the prior application, the continuation or divisional application will be treated as naming as inventors the person or persons named in the copy of the executed oath or declaration from the prior application. Accordingly, if a petition or request under 37 CFR 1.48(a) or (c) was granted in the prior application, the oath or declara- tion filed in a continuation or divisional application pursuant to 37 CFR 1.53(b) and 37 CFR 1.63(d) should be a copy of the oath or declaration executed by the added inventor(s) filed in the prior application. The statement requesting the deletion of the names of the person or persons who are not inventors in the continuation or divisional application must be signed by person(s) authorized pursuant to 37 CFR 1.33(b) to sign an amendment in the continuation or divisional application.

A newly signed oath or declaration in compliance with 37 CFR 1.63 is required where an inventor who was not named as an inventor in the signed oath or declaration filed in the prior application is to be named in a continuation or divisional application filed

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under 37 CFR 1.53(b). The newly signed oath or dec- laration must be signed by all the inventors.

VI. RULE 47 ISSUES

37 CFR 1.63(d)(3) provides for the situation in which the executed oath or declaration, of which a copy is submitted for a continuation or divisional application, was originally filed in a prior application accorded status under 37 CFR 1.47. 37 CFR 1.63(d)(3)(i) requires a copy of any decision granting a petition to accord 37 CFR 1.47 status to such appli- cation, unless all nonsigning inventor(s) or legal rep- resentative (pursuant to 37 CFR 1.42 or 1.43) have filed an oath or declaration to join in an application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121 or 365(c). Where one or more, but not all, nonsigning inven- tor(s) or legal representative (pursuant to 37 CFR 1.42 or 1.43) subsequently joins in any application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121 or 365(c), 37 CFR 1.63(d)(3)(ii) also requires a copy of any oath or declaration filed by the inventor or legal represen- tative who subsequently joined in such application.

New continuation or divisional applications filed under 37 CFR 1.53(b) which contain a copy of an oath or declaration that is not signed by one of the inven- tors and a copy of the decision according 37 CFR 1.47 status in the prior application, should be forwarded by the Office of Initial Patent Examination (OIPE) to the Office of Petitions before being forwarded to the Technology Center (TC). The Office of Petitions will mail applicant a letter stating that “Rule 47” status has been accorded to the continuation or divisional appli- cation, but will not repeat the notice to the nonsigning inventor nor the announcement in the Official Gazette. See 37 CFR 1.47(c).

VII. CHANGE OF ATTORNEY/CORRESPON- DENCE ADDRESS

37 CFR 1.63(d)(4) provides that where the power of attorney or correspondence address was changed during the prosecution of the prior application, the change in power of attorney or correspondence address must be identified in the continuation or divi- sional application. Otherwise, the Office may not rec- ognize in the continuation or divisional application the change of power of attorney or correspondence

address which occurred during the prosecution of the prior application.

VIII. SMALL ENTITY STATUS

If small entity status has been established in a par- ent application and is still proper and desired in a con- tinuation or divisional application filed under 37 CFR 1.53(b), a new assertion as to the continued entitle- ment to small entity status under 37 CFR 1.27 is required. See MPEP § 509.03.

IX. COPIES OF AFFIDAVITS

Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the prior nonprovisional application do not automatically become a part of a continuation or divisional application filed under 37 CFR 1.53(b). Where it is desired to rely on an earlier filed affidavit or declaration, the applicant should make such remarks of record in the 37 CFR 1.53(b) application and include a copy of the original affidavit or declara- tion filed in the prior nonprovisional application.

Use form paragraph 2.03 for instructions to appli- cant concerning affidavits or declarations filed in the prior application.

¶ 2.03 Affidavits or Declarations in Prior Application Applicant refers to an affidavit or declaration filed in the prior

application. Affidavits or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132, filed during the prosecu- tion of the prior application do not automatically become a part of this application. Where it is desired to rely on an earlier filed affi- davit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affida- vit or declaration filed in the prior application.

Examiner Note: This form paragraph is to be used in applications filed under 37

CFR 1.53(b). Do not use this form paragraph in applications filed under 37 CFR 1.53(d) since affidavits and/or declarations, such as those submitted under 37 CFR 1.130, 1.131 and 1.132 filed during the prosecution of the parent nonprovisional application automati- cally become a part of the 37 CFR 1.53(d) application.

X. EXTENSIONS OF TIME

If an extension of time is necessary to establish continuity between the prior application and the con- tinuing application filed under 37 CFR 1.53(b), the petition for an extension of time must be filed as a

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separate paper directed to the prior nonprovisional application. Under 37 CFR 1.136(a)(3), an authoriza- tion to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees will be treated as a constructive petition for an extension of time in any concurrent or future reply requiring a petition for an extension of time for its timely submis- sion. A continuing application filed under 37 CFR 1.53(b) is a new application which is assigned a new application number and filing date and is maintained separately from the file of the prior application. The filing of a continuing application is not a paper directed or placed in the file of the prior application and is not a “reply” to the last Office action in the prior application. Thus, a petition for an extension of time and the fee set forth in 37 CFR 1.17 are required to be filed as a separate paper in the prior application. Any petition for an extension of time directed to the prior application must be accompanied by its own cer- tificate of mailing under 37 CFR 1.8 (if mailed by first class mail) or under 37 CFR 1.10 (if mailed by Express Mail), if the benefits of those rules are desired.

XI. ABANDONMENT OF THE PRIOR NON- PROVISIONAL APPLICATION

Under 37 CFR 1.53(b) and 37 CFR 1.63(d) prac- tice, the prior nonprovisional application is not auto- matically abandoned upon filing of the continuing application. If the prior nonprovisional application is to be expressly abandoned, such a paper must be signed in accordance with 37 CFR 1.138. A registered **>patent practitioner< not of record acting in a rep- resentative capacity under 37 CFR 1.34 may also expressly abandon a prior nonprovisional application as of the filing date granted to a continuing applica- tion when filing such a continuing application.

If the prior nonprovisional application which is to be expressly abandoned has a notice of allowance issued therein, the prior nonprovisional application can become abandoned by the nonpayment of the issue fee. However, once an issue fee has been paid in the prior application, even if the payment occurs fol- lowing the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior non- provisional application from issue must be filed before the prior nonprovisional application can be abandoned (37 CFR 1.313). See MPEP § 711.01.

If the prior nonprovisional application which is to be expressly abandoned is before the Board of Patent Appeals and Interferences >(Board)<, a separate notice should be forwarded by the appellant to the Board, giving them notice thereof.

After a decision by the Court of Appeals for the Federal Circuit (CAFC) in which the rejection of all claims is affirmed, the proceeding is terminated when the mandate is issued by the Court.

XII. EXAMINATION

The practice relating to making first action rejec- tions final also applies to continuation and divisional applications filed under 37 CFR 1.53(b). See MPEP § 706.07(b).

Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure. Amendments must be filed in compliance with the requirements of 37 CFR 1.121 (e.g., the amendment must include a complete claim listing whenever a claim is added, canceled, or amended). See MPEP § 714. Applica- tions should be classified and assigned to the proper Technology Center (TC) by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment.

Where a copy of the oath or declaration from a prior application was filed in a continuation or divi- sional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require: (A) a new oath or declara- tion along with the surcharge set forth in 37 CFR 1.16(f); and (B) that the application be redesignated as a continuation-in-part. See MPEP § 608.04(b) when new matter is contained in a preliminary amendment.

If the examiner finds that pages of the specification or drawings figures described in the specification are missing and the application is a continuation or divi- sional application filed prior to September 21, 2004 under 37 CFR 1.53(b) using a copy of the oath or dec- laration filed in the prior application under 37 CFR 1.63(d), the examiner must check to determine whether the continuation or divisional application, as originally filed, includes a statement incorporating by reference the prior application(s). For applications filed prior to September 21, 2004, the statement could

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appear in the application transmittal letter (or the specification, rather than only in the specification). The inclusion of this incorporation by reference of the prior application(s) was necessary in these applica- tions to permit applicant to amend the continuation or divisional application to include subject matter in the prior application(s) without the need for a petition. See also the subsection above regarding “Incorpora- tion by Reference.” If the continuation or divisional application filed prior to September 21, 2004 under 37 CFR 1.53(b) does not include the incorporation by reference statement in the application papers (in the specification or in the transmittal letter) as originally filed and applicant has not been informed of the omit- ted items, the application should be returned to OIPE for mailing of a “Notice of Omitted Item(s).” For applications filed on or after September 21, 2004, see 37 CFR 1.57(a) and MPEP § 201.17.

201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice [R-5]

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

*****

(d) Application filing requirements - Continued prosecution (nonprovisional) application.

(1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:

(i) The application is for a design patent:

(ii) The prior nonprovisional application is a design application that is complete as defined by § 1.51(b); and

(ii) The application under this paragraph is filed before the earliest of:

(A) Payment of the issue fee on the prior applica- tion, unless a petition under § 1.313(c) is granted in the prior application;

(B) Abandonment of the prior application; or (C) Termination of proceedings on the prior appli-

cation. (2) The filing date of a continued prosecution application

is the date on which a request on a separate paper for an applica- tion under this paragraph is filed. An application filed under this paragraph:

(i) Must identify the prior application;

(ii) Discloses and claims only subject matter disclosed in the prior application;

(iii) Names as inventors the same inventors named in the prior application on the date the application under this para- graph was filed, except as provided in paragraph (d)(4) of this sec- tion;

(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or dec- laration from the prior application, to constitute the new applica- tion, and will be assigned the application number of the prior application for identification purposes; and

(v) Is a request to expressly abandon the prior applica- tion as of the filing date of the request for an application under this paragraph.

(3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16 (l), and the examination fee as set forth in § 1.16(p).

(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, pro- vided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior applica- tion on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.

(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an appli- cation under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be con- sidered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.

(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of con- fidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the pro- visions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.

(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every applica- tion assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.

(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relat- ing to the prior application to the best of his or her ability:

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(i) Title of invention; (ii) Name of applicant(s); and (iii) Correspondence address.

(9) **See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.

*****

I. CPA PRACTICE HAS BEEN ELIMINAT- ED AS TO UTILITY AND PLANT APPLI- CATIONS

Effective July 14, 2003, continued prosecution application (CPA) practice has been eliminated as to utility and plant applications. Applicants who wish to continue examination of the same claimed invention after the prosecution of a utility or plant application is closed should consider filing a request for continued examination (RCE) under 37 CFR 1.114. For more information on RCE practice, see MPEP § 706.07(h). Applicants who wish to file a continuation, divisional, or continuation-in-part application should file an application under 37 CFR 1.53(b). See MPEP § 201.06(c). CPAs filed prior to July 14, 2003 will con- tinue to be processed and examined under the proce- dures set forth in prior 37 CFR 1.53(d). Any request for a CPA filed on or after July 14, 2003 in a utility or plant application is improper, regardless of the filing date of the utility or plant application in which the CPA is filed.

The Office will not convert an improper CPA into an application under 37 CFR 1.53(b) unless the appli- cant shows that there are extenuating circumstances that warrant the burdensome process of such conver- sion.

If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the Technology Center (TC) who will reprocess the CPA and correct the application records as appropriate.

A. Applications Filed on or After June 8, 1995

If a utility or plant application has a filing date on or after June 8, 1995, an improper CPA filed on or after July 14, 2003 will be treated as a request for con- tinued examination (RCE) under 37 CFR 1.114. See MPEP § 706.07(h) and form paragraph 7.42.15. If the improper CPA does not satisfy the requirements of 37

CFR 1.114 (e.g., the request lacks a submission or the fee under 37 CFR 1.17(e), or the prosecution of the application is not closed), the Office will treat the improper CPA as an improper RCE, and the time period set in the last Office action (or notice) will con- tinue to run. The Office will send the applicant a Notice of Improper Request for Continued Examina- tion (RCE), PTO-2051. If the time period for reply to the last Office action (or notice) has expired, the application is abandoned and the applicant must file a petition under 37 CFR 1.137 and the required petition fee to revive the abandoned application. Unless prose- cution in the application was not closed, the petition must be accompanied by a submission as defined by 37 CFR 1.114(c) and the fee set forth in 37 CFR 1.17(e), unless previously filed. If the last Office action is a notice of allowance, the issue fee must also be paid at the time of filing the petition to revive. If prosecution in the application was not closed, the peti- tion must be accompanied by a reply to the non-final Office action.

Applicants cannot, as a matter of right, obtain con- tinued examination on claims that are independent and distinct from the invention previously claimed (i.e., applicants cannot switch inventions when filing an RCE). See 37 CFR 1.145. Therefore, if applicants file a request for a divisional CPA on or after July 14, 2003 and the request satisfies all the requirements in 37 CFR 1.114 (e.g., the request is accompanied by the fee as set forth in 37 CFR 1.17(e) and a submission), the Office will treat the improper divisional CPA as a proper RCE. However, any amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention will be treated as nonresponsive. See MPEP § 821.03. Any newly submitted claims that are directed to an inven- tion distinct from and independent of the invention previously claimed will be withdrawn from consider- ation. Applicants should be notified by using form paragraph 8.26 or 8.27.

B. Applications Filed Before June 8, 1995

If a utility or plant application has a filing date before June 8, 1995, the Office cannot treat an improper CPA filed on or after July 14, 2003 as an RCE because RCE practice does not apply to applica- tions filed before June 8, 1995. The Office will notify the applicant of the improper CPA by mailing a

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Notice of Improper CPA (or FWC) Filing For Utility or Plant Applications Filed Before June 8, 1995, PTO-2011 (Rev. 7/03 or later). The time period for reply set in the last Office action (or notice) will continue to run. Applicant may file a continuing application under 37 CFR 1.53(b). If the time period for reply has expired, the application is abandoned. If the application in which the improper CPA is filed is abandoned when a continuing application is filed, applicant would need to file a petition under 37 CFR 37 CFR 1.137 to revive the prior application to estab- lish copendency with the continuing application under 37 CFR 1.53(b).

II. FILING AND INITIAL PROCESSING OF CPAs FOR DESIGN APPLICATIONS

A. In General

In addition to the provisions of 37 CFR 1.53(b), a continuation or divisional (but not a continuation-in- part) application may be filed under 37 CFR 1.53(d) if the prior application is a design application that is complete as defined by 37 CFR 1.51(b). A continua- tion or divisional application filed under 37 CFR 1.53(d) is called a “Continued Prosecution Applica- tion” or “CPA.” A CPA has a number of advantages compared to a continuation or divisional application filed under 37 CFR 1.53(b). For example, the papers required to be filed in the U.S. Patent and Trademark Office in order to secure a filing date under 37 CFR 1.53(d) are minimal compared to 37 CFR 1.53(b). In addition, the Office will not normally issue a new fil- ing receipt for a CPA. See 37 CFR 1.54(b). The time delay between the filing date and the first Office action should be less for a CPA than for an application filed under 37 CFR 1.53(b). For examination priority purposes only, the USPTO will treat continuation CPAs as if they were “amended” applications (as of the CPA filing date) and not as “new” applications. This treatment is limited to CPAs in which the prior application has an Office action issued by the exam- iner. If no Office action has been issued in the prior application, the CPA will be treated, for examination purposes, like a “new” application unless a petition to make special under 37 CFR 1.102 or a request for expedited examination under 37 CFR 1.155 is filed in the CPA. As “amended” applications generally have a shorter time frame for being acted on by examiners

than “new” applications, the treatment of a CPA as an “amended” application will result in a first Office action being mailed in the CPA much sooner than if it had been filed as a continuation application under 37 CFR 1.53(b) (or under former 37 CFR 1.60 or 1.62). Therefore, applicants are strongly encouraged to file any preliminary amendment in a CPA at the time the CPA is filed. See 37 CFR 1.115 and MPEP § 714.03(a).

A request for a CPA expressly abandons the prior application as of the filing date of the request for the CPA. See 37 CFR 1.53(d)(2)(v). Therefore, where the prior application is not to be abandoned, any continu- ation or divisional application must be filed under 37 CFR 1.53(b). If applicant wants the USPTO to dis- regard a previously filed request for a CPA filed in a design application (and not recognize its inherent request to expressly abandon the prior application) and to treat the paper as the filing of an application under 37 CFR 1.53(b), the applicant must file a peti- tion under 37 CFR 1.182. A request to expressly abandon an application is not effective until the aban- donment is acknowledged, including the express abandonment of the prior application of a CPA that occurs by operation of 37 CFR 1.53(d)(2)(v). The express abandonment of the prior application is acknowledged and becomes effective upon processing and entry of the CPA into the file of the prior applica- tion. Thus, such a petition under 37 CFR 1.182 should be filed expeditiously since the petition will not be granted once the request for a CPA has been entered into the prior application (and the inherent request to expressly abandon the prior application has been acknowledged). If the request for a CPA has been entered into the prior application by the time the peti- tion under 37 CFR 1.182 and the application file are before the deciding official for a decision on the peti- tion, the petition will be denied. It is noted, however, that if the applicant intended to file a second applica- tion (either a continuation or a divisional) without abandoning the prior application, applicant can still achieve that result without loss of the benefit of the original filing date by: (A) continuing the prosecution of the original application via the CPA; and (B) filing a new continuation/divisional under 37 CFR 1.53(b) claiming benefit of the CPA and its parent applica- tions under 35 U.S.C. 120 during the pendency of the CPA.

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Since no new matter may be introduced in a CPA, the procedure set forth in 37 CFR 1.53(d) is not avail- able for filing a continuation-in-part application. All continuation-in-part applications must be filed under 37 CFR 1.53(b) and a newly executed oath or declara- tion is required.

Under the CPA procedure, the continuation or divi- sional application will utilize the file wrapper and contents of the prior nonprovisional application, including the specification, drawings and oath or dec- laration from the prior nonprovisional application, and will be assigned the same application number as the prior nonprovisional application. Any changes to the continuation or divisional application desired when filing the CPA must be made in the form of an amendment to the prior application as it existed prior to filing the CPA, see 37 CFR 1.53(d)(5). Any new specification filed with the CPA request will not be considered part of the original application papers, but will be treated as a substitute specification in accor- dance with 37 CFR 1.125. However, the applicant must comply with the requirements of 37 CFR 1.125(b) before the substitute specification will be entered into the CPA. Since 37 CFR 1.125(b) requires that a substitute specification be accompanied by, inter alia, a statement that the substitute specification includes no new matter, any substitute specification containing new matter will be denied entry by the examiner. Any preliminary amendment to the written description and claims, other than a substitute specifi- cation, filed with a CPA request will ordinarily be entered. Any new matter which is entered, however, will be required to be canceled pursuant to 35 U.S.C. 132 from the descriptive portion of the specification. Further, any claim(s) which relies upon such new mat- ter for support will be rejected under 35 U.S.C. 112, first paragraph. See MPEP § 2163.06. In the event that a substitute specification or preliminary amend- ment containing new matter was filed with a request for a CPA, applicant may file a petition under 37 CFR 1.182 requesting that the substitute specification or preliminary amendment be removed from the CPA application file, and be accorded the status as a sepa- rate application by being placed in a new file wrapper and assigned a new application number, with the new application being accorded a filing date as of the date the request for a CPA and substitute specification/pre- liminary amendment were filed. Of course, a request

for a CPA is not improper simply because the request is accompanied by a substitute specification or pre- liminary amendment containing new matter. Thus, an applicant will not be entitled to a refund of the filing fee paid in a proper CPA as a result of the granting of a petition under 37 CFR 1.182 requesting that the sub- stitute specification or preliminary amendment be removed from the CPA application file.

A CPA may be based on a prior CPA so long as the prior CPA is complete under 37 CFR 1.51(b) and is a design application. There is no other limit to the num- ber of CPAs that may be filed in a chain of continuing applications. However, only one CPA may be pending at one time based on the same prior nonprovisional application.

Under 37 CFR 1.53(d), the specification, claims, and drawings, and any amendments entered in the prior nonprovisional application are used in the CPA. A new basic filing fee, search fee, and examination fee are required in accordance with 35 U.S.C. 41 and 37 CFR 1.16. No search and examination fees are required for a CPA filed before December 8, 2004. The only other statutory requirement under 35 U.S.C. 111(a) is a signed oath or declaration. Since a CPA cannot contain new matter, the oath or declaration filed in the prior nonprovisional application would supply all the information required under the statute and rules to have a complete application and to obtain a filing date. Accordingly, the previously filed oath or declaration will be considered to be the oath or decla- ration of the CPA.

The original disclosure of a CPA is the same as the original disclosure of the parent non-continued prose- cution application and amendments entered in the par- ent application(s). However, any subject matter added by amendment in the parent application which is deemed to be new matter in the parent application will also be considered new matter in the CPA. No amend- ment filed in a CPA, even if filed on the filing date of the CPA, may include new matter.

If application papers for a design application are in any way designated as a CPA filing under 37 CFR 1.53(d) (e.g., contain a reference to 37 CFR 1.53(d), CPA, or continued prosecution application), the appli- cation papers will be treated by the Office as a CPA filed under 37 CFR 1.53(d), even if the application papers also contain other inconsistent designations (e.g., if the papers are also designated as an applica-

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tion filed under 37 CFR 1.53(b) or include a reference to a “continuation-in-part CPA”). If application papers for a utility or plant application are in any way desig- nated as a CPA filing under 37 CFR 1.53(d), the appli- cation papers will be treated as a request for continued examination (RCE) under 37 CFR 1.114. See I. CPA PRACTICE HAS BEEN ELIMINATED AS TO UTILITY AND PLANT APPLICATIONS, above.

B. Conditions for Filing a CPA

A continuation or divisional application may be filed under 37 CFR 1.53(d), if the prior nonprovi- sional application is a design application that is com- plete as defined by 37 CFR 1.51(b). The term “prior nonprovisional application” in 37 CFR 1.53(d)(1) means the nonprovisional application immediately prior to the CPA. A complete application as defined by 37 CFR 1.51(b) must contain, inter alia, the appro- priate filing fee (including the basic filing fee, search fee, and examination fee) and a signed oath or decla- ration under 37 CFR 1.63.

In addition, a continuation or divisional application filed under 37 CFR 1.53(d) must be filed before the earliest of: (A) payment of the issue fee on the prior application, unless a petition under 37 CFR 1.313(c) is granted in the prior application; (B) abandonment of the prior application; or (C) termination of pro- ceedings on the prior application.

Note that request for continued examination (RCE) practice under 37 CFR 1.114 is not available in design applications. Any improper RCE filed in a design application will not be treated as a CPA. An improper RCE filed in a design application will not toll the run- ning of any time period for reply.

C. Initial Processing

A CPA request will be initially processed by the TC assigned the prior application. The TC will verify that (A) the prior application is a design application, (B) the correct application number of the prior nonprovi- sional application is identified in the request, (C) the request is properly signed, (D) the prior nonprovi- sional application was pending on, and that the issue fee has not been paid in the prior nonprovisional application on or prior to, the filing date of the CPA request, (E) the prior nonprovisional application was complete under 37 CFR 1.51(b) (e.g., the filing fee has been paid and a signed oath or declaration under

37 CFR 1.63 has been filed in the prior application), and (F) the proper filing fee has been paid in the CPA. If one or more other conditions for filing a CPA have not been satisfied or the proper basic filing fee, search fee, and examination fee have not been paid, the applicant will be so notified and no examination will be made in the CPA until the filing error has been cor- rected or the proper fees have been submitted. See 37 CFR 1.53(h). If an examiner discovers that an improper or incomplete CPA has been processed as a proper CPA in error, the examiner should immediately notify a supervisory applications examiner (SAE) or other technical support staff within the TC who will reprocess the CPA and correct the application records.

D. Incorrect Patent Application Number Identi- fied

A request for a CPA must identify the prior nonpro- visional application (37 CFR 1.53(d)(2)(i)) by appli- cation number (series code and serial number) or by serial number and filing date. Where a paper request- ing a CPA is filed which does not properly identify the prior nonprovisional application number, the TC should attempt to identify the proper application num- ber by reference to other identifying information pro- vided in the CPA papers, e.g., name of the inventor, filing date, title of the invention, and attorney’s docket number of the prior application. If the TC is able to identify the correct application number of the prior application, the correct application number should be entered in red ink on the paper requesting the CPA and the entry should be dated and initialed. For Image File Wrapper (IFW) processing, see IFW Manual. If the TC is unable to identify the application number of the prior application and the party submitting the CPA papers is a registered practitioner, the practitioner may be requested by telephone to supply a letter signed by the practitioner providing the correct application num- ber. If all attempts to obtain the correct application number are unsuccessful, the paper requesting the CPA should be returned by the TC to the sender where a return address is available. The returned CPA request must be accompanied by a cover letter which will indicate to the sender that if the returned CPA request is resubmitted to the U.S. Patent and Trade- mark Office with the correct application number within two weeks of the mail date on the cover letter, the original date of receipt of the CPA request will be

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considered by the U.S. Patent and Trademark Office as the date of receipt of the CPA request. See 37 CFR 1.5(a). A copy of the returned CPA request and a copy of the date-stamped cover letter should be retained by the TC. Applicants may use either the Certificate of Mailing or Transmission procedure under 37 CFR 1.8 or the “Express Mail” procedure under 37 CFR 1.10 for resubmissions of returned CPA requests if they desire to have the benefit of the date of deposit in the United States Postal Service. If the returned CPA request is not resubmitted within the two-week period with the correct application number, the TC should cancel the original “Office Date” stamp on the CPA request and re-stamp the returned CPA request with the date of receipt of the resubmission or with the date of deposit as “Express Mail” with the United States Postal Service, if the CPA request is resubmitted under 37 CFR 1.10. Where the CPA request is resub- mitted later than two weeks after the return mailing by the U.S. Patent and Trademark Office, the later date of receipt or date of deposit as “Express Mail” of the resubmission will be considered to be the filing date of the CPA request. The two-week period to resubmit the returned CPA request is not extendible. See 37 CFR 1.5(a).

In addition to identifying the application number of the prior application, applicant is urged to furnish in the request for a CPA the following information relating to the prior application to the best of his or her ability: (A) title of invention; (B) name of appli- cant(s); and (C) correspondence address. See 37 CFR 1.53(d)(8).

E. Signature Requirement

A CPA is a request to expressly abandon the prior application (37 CFR 1.53(d)(2)(v)) and, therefore, must be properly signed. For a listing of the individu- als who may properly sign a CPA request, see 37 CFR 1.33(b). In a joint application with no attorney or agent, all applicants must sign the CPA request in order for the CPA request to be considered properly signed. An unsigned or improperly signed CPA request will be placed in the file of the prior applica- tion, and is entitled to an application filing date, but is ineffective to abandon the prior application. A CPA will NOT be examined until the CPA request is prop- erly signed.

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

A request for a CPA may also be signed by the assignee or assignees of the entire interest. However, the request must be accompanied by papers establish- ing the assignee's ownership under 37 CFR 3.73(b), unless such papers were filed in the prior application and ownership has not changed.

F. Filing Date

The filing date of a CPA is the date on which a request on a separate paper for a CPA is filed. A request for a CPA cannot be submitted as a part of papers filed for another purpose, see 37 CFR 1.53(d)(2), (e.g., the filing of a request for a CPA within an amendment after final for the prior applica- tion is an improper request for a CPA).

A paper requesting a CPA may be sent to the U.S. Patent and Trademark Office by mail (see MPEP § 501), by facsimile transmission (see MPEP § 502.01) or it may be filed directly at the Customer Service Window located in the Randolph Building, 401 Dulany Street, Alexandria, VA 22314.

The date of receipt accorded to a CPA request sent by facsimile transmission is the date the complete transmission is received by an Office facsimile unit, unless the transmission is completed on a Saturday, Sunday, or Federal holiday within the District of Columbia. Correspondence for which transmission was completed on a Saturday, Sunday, or Federal hol- iday within the District of Columbia, will be accorded a receipt date of the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the Dis- trict of Columbia.

Applicants filing a CPA by facsimile transmission may include a “Receipt for Facsimile Transmitted CPA” (PTO/SB/29A) containing a mailing address and identifying information (e.g., the prior application number, filing date, title, first named inventor) with the request for a CPA. The USPTO will: (A) separate the “Receipt for Facsimile Transmitted CPA” from the

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CPA request papers; (B) date-stamp the “Receipt for Facsimile Transmitted CPA”; (C) verify that the iden- tifying information provided by the applicant on the “Receipt for Facsimile Transmitted CPA” is the same information provided on the accompanying request for a CPA; and (D) mail the “Receipt for Facsimile Transmitted CPA” to the mailing address provided on the “Receipt for Facsimile Transmitted CPA.” The “Receipt for Facsimile Transmitted CPA” cannot be used to acknowledge receipt of any paper(s) other than the request for a CPA. A returned “Receipt for Facsimile Transmitted CPA” may be used as prima facie evidence that a request for a CPA containing the identifying information provided on the “Receipt for Facsimile Transmitted CPA” was filed by facsimile transmission on the date stamped thereon by the USPTO. As the USPTO will verify only the identify- ing information contained on the request for a CPA, and will not verify whether the CPA was accompanied by other papers (e.g., a preliminary amendment), the “Receipt for Facsimile Transmitted CPA” cannot be used as evidence that papers other than a CPA were filed by facsimile transmission in the USPTO. Like- wise, applicant-created “receipts” for acknowledg- ment of facsimile transmitted papers (whether created for the acknowledgment of a CPA or other papers) cannot be used as evidence that papers were filed by facsimile in the USPTO. Applicants are cautioned not to include information on a “Receipt for Facsimile Transmitted CPA” that is intended for retention in the application file, as the USPTO does not plan on retaining a copy of such receipts in the file of the application.

If an applicant filing a CPA by facsimile does not include an authorization to charge the basic filing fee, search fee, and examination fee to a deposit account or to a credit card using PTO-2038 (See MPEP § 509), the application will be treated under 37 CFR 1.53(f) as having been filed without the appropriate fees (as fees cannot otherwise be transmitted by facsimile).

37 CFR 1.6(f) provides for the situation in which the Office has no evidence of receipt of a CPA trans- mitted to the Office by facsimile transmission. 37 CFR 1.6(f) requires that a showing thereunder include, inter alia, a copy of the sending unit’s report confirming transmission of the application or evi- dence that came into being after the complete trans-

mission of the application and within one business day of the complete transmission of the application.

The Certificate of Mailing Procedure under 37 CFR 1.8 does not apply to filing a request for a CPA, since the filing of such a request is considered to be a filing of national application papers for the purpose of obtaining an application filing date (37 CFR 1.8(a)(2)(i)(A)). Thus, if (A) the Patent and Trade- mark Office mails a final Office action on July 2, 1997 (Wednesday), with a shortened statutory period of 3 months to reply and (B) a petition for a three- month extension of time (and the fee) and a CPA are received in the U.S. Patent and Trademark Office on January 5, 1998 (Monday), accompanied by a certifi- cate of mailing under 37 CFR 1.8 dated January 2, 1998 (Friday), then the prior application was aban- doned on January 3, 1998, and the CPA is improper because the CPA was not filed before the abandon- ment of the prior application. As a further example, if (A) the U.S. Patent and Trademark Office mails a final Office action on July 2, 1997 (Wednesday), with a shortened statutory period of 3 months to reply and (B) applicant submits a petition for a three-month extension of time (and the fee) and a CPA request via facsimile transmission accompanied by a certificate of transmission under 37 CFR 1.8 at 9:00 PM (PST) on January 2, 1998 (Friday), but the U.S. Patent and Trademark Office does not receive the complete trans- mission until 12:01 AM (EST) on January 3, 1998 (Saturday), then the CPA is improper because the CPA request was not filed until January 5, 1998, see 37 CFR 1.6(a)(3), which is after the abandonment (midnight on Friday, January 2, 1998) of the prior application.

G. Filing Fee

The filing fees for a CPA are the basic filing fee as set forth in 37 CFR 1.16(b)(1), the search fee as set forth in 37 CFR 1.16(l), and the examination fee as set forth in 37 CFR 1.16(p). See 37 CFR 1.53(d)(3).

A general authorization to charge fees to a deposit account which was filed in the prior application car- ries over from the prior nonprovisional application to a CPA. Thus, where a general authorization to charge fees to a deposit account was filed in the prior appli- cation the TC should charge the necessary filing fee of the CPA to the deposit account.

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Where a general authorization to charge fees to a deposit account was filed in the prior application and applicant desires to file a CPA without paying the fil- ing fee on the filing date of the application, applicant may file the CPA with specific instructions revoking the general authorization filed in the prior application.

Where a filing date has been assigned to a CPA, but the basic filing fee, search fee, and examination fee are insufficient or have been omitted, applicant will be so notified by the TC and given a period of time in which to file the missing fee(s) and to pay the sur- charge set forth in 37 CFR 1.16(f) in order to prevent abandonment of the application. For CPAs filed on or after December 8, 2004 but prior to July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(d), if the search and/or examination fees are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is not required. For CPAs filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(d), if any of the basic filing fee, search fee, or examination fee are paid on a date later than the filing date of the CPA, the surcharge under 37 CFR 1.16(f) is required. The time period usually set is 2 months from the date of notification. This time period is subject to the pro- visions of 37 CFR 1.136(a). A CPA will not be placed upon the files for examination until all of its required parts, including the basic filing fee, search fee, exami- nation fee, and any necessary surcharge, are received. See 37 CFR 1.53(h). Thus, it would be inappropriate to conduct an interview or to issue an action on the merits in the CPA until the basic filing fee, search fee, examination fee, and any necessary surcharge, are received.

Small Entity Status

Small entity status established in the parent applica- tion does not automatically carry over to a CPA. Sta- tus as a small entity must be specifically established in every application in which the status is available and desired. 37 CFR 1.27(c)(4) provides that the refil- ing of an application as a continued prosecution appli- cation under 37 CFR 1.53(d) requires a new assertion of continued entitlement to small entity status.

Because small entity status does not automatically carry over from the prior application to the CPA, unless the request for a CPA specifically indicates that the filing fee is to be charged in the small entity amount or otherwise includes an assertion of entitle- ment to small entity status, the large entity filing fee should be charged.

H. Extensions of Time

If an extension of time is necessary to establish continuity between the prior application and the CPA, the petition for extension of time should be filed as a separate paper directed to the prior nonprovisional application. However, a CPA is not improper simply because the request for a CPA is combined in a single paper with a petition for extension of time. The “sepa- rate paper” requirement of 37 CFR 1.53(d)(2) is intended to preclude an applicant from burying a request for a CPA in a paper submitted primarily for another purpose, e.g., within an amendment after final for the prior application.

While the filing of a CPA is not strictly a reply to an Office action mailed in a prior application, a request for a CPA is a paper directed to and placed in the file of the prior application, and seeks to take action in (i.e., expressly abandon) the prior application. Thus, it will be considered a “reply” for purposes of 37 CFR 1.136(a)(3). As a result, an authorization in the prior application to charge all required fees, fees under 37 CFR 1.17, or all required extension of time fees to a deposit account or to a credit card (See MPEP § 509) will be treated as a constructive petition for an extension of time in the prior application for the purpose of establishing continuity with the CPA. The correct extension fee to be charged in the prior appli- cation would be the extension fee necessary to estab- lish continuity between the prior application and the CPA on the filing date of the CPA.

If an extension of time directed to the prior applica- tion is filed as a separate paper, it must be accompa- nied by its own certificate of mailing under 37 CFR 1.8 (if mailed by first class mail) or under 37 CFR 1.10 (if mailed by Express Mail), if the benefits of those rules are desired.

I. Notice of CPA Filing

Since a “Notice of Abandonment” is not mailed in the prior application as a result of the filing of a CPA

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nor is a filing receipt normally mailed for a CPA, the examiner should advise the applicant that a request for a CPA has been granted by including form para- graph 2.30 in the first Office action of the CPA.

¶ 2.30 CPA Status Acceptable (for Design Applications) The request filed on [1] for a Continued Prosecution Applica-

tion (CPA) under 37 CFR 1.53(d) based on parent Application No. [2] is acceptable and a CPA has been established. An action on the CPA follows.

Examiner Note: 1. Use this form paragraph in the first Office action of a CPA to advise the applicant that a request for a CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent nor is a filing receipt normally sent for a CPA. If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form para- graph 7.42.15 instead). See MPEP § 706.07(h). 2. In bracket 1 insert the filing date of the request for a CPA. 3. In bracket 2 insert the Application Number of the parent application.

A “conditional” request for a CPA will not be per- mitted. Any “conditional” request for a CPA submit- ted as a separate paper with an amendment after final in an application will be treated as an unconditional request for a CPA of the application. This will result (by operation of 37 CFR 1.53(d)(2)(v)) in the aban- donment of the prior application, and (if so instructed in the request for a CPA) the amendment after final in the prior application will be treated as a preliminary amendment in the CPA. The examiner should advise the applicant that a “conditional” request for a CPA has been treated as an unconditional request for a CPA and has been accepted by including form paragraph 2.35 in the first Office action of the CPA.

¶ 2.35 CPA Status Acceptable - Conditional Request (for Design Applications)

Receipt is acknowledged of the “conditional” request for a Continued Prosecution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on prior Application No. [2]. Any “condi- tional” request for a CPA submitted as a separate paper is treated as an unconditional request for a CPA. Accordingly, the request for a CPA application is acceptable and a CPA has been estab- lished. An action on the CPA follows.

Examiner Note: 1. Use this form paragraph in the first Office action of a CPA to advise the applicant that a “conditional” request for a CPA is treated as an unconditional request and the CPA is acceptable and that a CPA has been established. This notice should be given, since applicant is not notified of the abandonment of the parent

nor is a filing receipt normally sent for a CPA. If the request for a CPA in a utility or plant application is improper and the CPA has been treated as an RCE, do not use this form paragraph (use form paragraph 7.42.15 instead). See MPEP § 706.07(h). 2. In bracket 1 insert the filing date of the request for a CPA. 3. In bracket 2 insert the Application Number identified in the CPA request.

Where the examiner recognizes that a paper filed in the prior application contains a request for a CPA, but the request is not in a separate paper, the examiner should, if possible, contact applicant by telephone to notify applicant that the request for a CPA is ineffec- tive or notify the applicant in the next Office action that the CPA request is ineffective by using form para- graph 2.31.

¶ 2.31 CPA Status Not Acceptable - Request Not on Separate Paper

Receipt is acknowledged of the request for a Continued Prose- cution Application (CPA) filed on [1] under 37 CFR 1.53(d) based on Application No. [2]. However, because the request was not submitted on a separate paper as required by 37 CFR 1.53(d)(2), the request is not acceptable and no CPA has been established.

Examiner Note: 1. Use this form paragraph to inform applicant that a request for a CPA in a design application is not in compliance with 37 CFR 1.53(d)(2) and, therefore, no CPA has been established. 2. In bracket 1 insert the filing date of the paper containing the request for a CPA. 3. In bracket 2 insert the Application Number identified in the CPA request.

J. Inventorship

The inventive entity set forth in the prior nonprovi- sional application automatically carries over into the CPA UNLESS the request for a CPA is accompanied by or includes on filing a statement requesting the deletion of the name or names of the person or per- sons who are not inventors of the invention being claimed in the CPA. 37 CFR 1.53(d)(4). The state- ment requesting the deletion of the names of the per- son or persons who are not inventors in the continuation or divisional application must be signed by person(s) authorized pursuant to 37 CFR 1.33(b) to sign an amendment in the continuation or divisional application. The examiner should acknowledge receipt of a statement filed with a CPA requesting the deletion of the name or names of the person or per- sons who are not inventors of the invention being

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claimed in the CPA in the first Office action in the CPA by using form paragraph 2.32.

¶ 2.32 Request To Delete a Named Inventor Receipt is acknowledged of the statement requesting that [1] be

deleted as a named inventor which was filed with the Continued Prosecution Application (CPA) on [2]. The inventorship has been corrected as requested.

Examiner Note: 1. Use this form paragraph where a Continued Prosecution Application (CPA) is filed accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new applica- tion. Any request to delete a named inventor in a CPA filed after the CPA is filed must be accompanied by a request under 37 CFR 1.48. 2. In bracket 1 insert the name or names of the inventor(s) requested to be deleted. 3. In bracket 2 insert the filing date of the CPA.

After the first Office action is mailed, the applica- tion file should be sent to OIPE for revision of its records to reflect the change of inventorship. For paper application files, the examiner should note the change of inventorship on the original oath or declara- tion by writing in red ink in the left column “See Paper No. __ for inventorship changes.” See MPEP § 201.03 and § 605.04(g). For Image File Wrapper (IFW) processing, see the IFW Manual. Any request by applicant for a corrected filing receipt to show the change in inventorship should not be submitted until after the examiner has acknowledged the change in inventorship in an Office action. Otherwise, the “cor- rected” filing receipt may not show the change in inventorship.

The inventive entity of the CPA will be the same as the inventive entity of the prior application even if the CPA papers include a transmittal letter or a new oath or declaration naming an inventor not named in the prior application. However, the new oath or declara- tion will be placed in the application file. Upon review of the application, the examiner will notify the applicant in the first Office action using form para- graph 2.33 that the inventive entity of the prior appli- cation has been carried over into the CPA. If the inventive entity set forth in the transmittal letter of the new oath or declaration is desired, then a request under 37 CFR 1.48 along with the required fee set forth in 37 CFR 1.17(i) must be filed. No new oath or declaration need be filed with the later-filed request under 37 CFR 1.48 if such was submitted on filing of

the CPA. If a request under 37 CFR 1.48 is not filed, it should be noted that the filing in a CPA of a transmit- tal letter or a new oath or declaration containing an inventor not named in the prior nonprovisional appli- cation may result in the claims in the CPA being rejected under 35 U.S.C. 102(f).

¶ 2.33 New Inventor Identified It is noted that [1] identified as a named inventor in the Contin-

ued Prosecution Application (CPA) filed under 37 CFR 1.53(d) on [2], but no request under 37 CFR 1.48, as is required, was filed to correct the inventorship. Any request to add an inventor must be in the form of a request under 37 CFR 1.48. Otherwise, the inven- torship in the CPA shall be the same as in the prior application.

Examiner Note: 1. Use this form paragraph where a request for a Continued Prosecution Application (CPA) identifies one or more inventors who were not named as inventors in the prior application on the filing date of the CPA. 2. In bracket 1 insert the name or names of the inventor(s) requested to be added followed by either --was-- or --were--, as appropriate. 3. In bracket 2 insert the filing date of the CPA.

III. EXAMINATION OF CPAs

A. Benefit of Earlier Filing Date

A request for a CPA is a specific reference under 35 U.S.C. 120 to every application assigned the application number identified in the request, and 37 CFR 1.78(a)(2) provides that a request for a CPA is the specific reference under 35 U.S.C. 120 to the prior application. That is, the CPA includes the request for an application under 37 CFR 1.53(d) and the recita- tion of the application number of the prior application in such request is the “specific reference to the earlier filed application” required by 35 U.S.C. 120. No fur- ther amendment to the specification of the CPA nor a reference in the CPA’s application data sheet is required by 35 U.S.C. 120 or 37 CFR 1.78(a) to iden- tify or reference the prior application, as well as any other application assigned the application number of the prior application (e.g., in instances in which a CPA is the last in a chain of CPAs).

Where an application claims a benefit under 35 U.S.C. 120 of a chain of applications, the applica- tion must make a reference to the first (earliest) appli- cation and every intermediate application. See Sampson v. Ampex Corp., 463 F.2d 1042, 1044-45, 174 USPQ 417, 418-19 (2d Cir. 1972); Sticker Indus.

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Rev. 5, Aug. 2006 200-40

Supply Corp. v. Blaw-Knox Co., 405 F.2d 90, 93, 160 USPQ 177, 179 (7th Cir. 1968); Hovlid v. Asari, 305 F.2d 747, 751, 134 USPQ 162, 165 (9th Cir. 1962). See also MPEP § 201.11. In addition, every interme- diate application must also make a reference to the first (earliest) application and every application after the first application and before such intermediate application.

In the situation in which there is a chain of CPAs, each CPA in the chain will, by operation of 37 CFR 1.53(d)(7), contain the required specific reference to its immediate prior application, as well as every other application assigned the application number identified in such request. Put simply, a specific reference to a CPA by application number and filing date will con- stitute a specific reference to: (A) the non-continued prosecution application originally assigned such application number (the prior application as to the first CPA in the chain); and (B) every CPA assigned the application number of such non-continued prose- cution application.

Where the non-continued prosecution application originally assigned such application number itself claims the benefit of a prior application or applica- tions under 35 U.S.C. 119(e), 120, 121, or 365(c), 37 CFR 1.78(a)(2) and (a)(5) continue to require that such application contain a reference to any such prior application(s). The reference(s) can be in an applica- tion data sheet (37 CFR 1.76) or in the first sen- tence(s) of the specification. See 37 CFR 1.78(a)(2) and (a)(5). As a CPA uses the application file of the prior application, a specific reference in the prior application (as to the CPA) will constitute a specific reference in the CPA, as well as every CPA in the event that there is a chain of CPAs.

Where an applicant in an application filed under 37 CFR 1.53(b) seeks to claim the benefit of a CPA under 35 U.S.C. 120 or 121 (as a continuation, divi- sional, or continuation-in-part), 37 CFR 1.78(a)(2) requires a reference to the CPA by application number in the first sentence(s) of such application unless such reference is made in an application data sheet. 37 CFR 1.78(a)(2) provides that “[t]he identification of an application by application number under this section is the specific reference required by 35 U.S.C. 120 to every application assigned that application number.” Thus, where a referenced CPA is in a chain

of CPAs, this reference will constitute a reference under 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to every CPA in the chain as well as the non-continued prose- cution application originally assigned such applica- tion number.

Therefore, regardless of whether an application is filed under 37 CFR 1.53(b) or (d), a claim under 35 U.S.C. 120 to the benefit of a CPA is, by operation of 37 CFR 1.53(d)(7) and 37 CFR 1.78(a)(2), a claim to every application assigned the application number of such CPA. In addition, applicants will not be per- mitted to choose to delete such a claim as to certain applications assigned that application number (e.g., for patent term purposes). See 37 CFR 1.53(d)(7).

Further, an applicant in a CPA is not permitted to amend the first sentence(s) of the specification to pro- vide the specific reference to the prior application, or to provide such a reference in an application data sheet. Any such amendment will not be entered. The applicant should be advised in the next Office action that any such amendment to the specification or refer- ence in the application data sheet has not been entered by using form paragraph 2.34. See 37 CFR 1.78(a)(2).

¶ 2.34 Reference in CPA to Prior Application (by Amendment to the Specification)

The amendment filed [1] requesting that the specification be amended to refer to the present Continued Prosecution Applica- tion (CPA) as a [2] application of Application No. [3] has not been entered. As set forth in 37 CFR 1.53(d)(7), a request for a CPA is the specific reference required by 35 U.S.C. 120 to every applica- tion assigned the application number identified in such request. Thus, there is no need to amend the first sentence(s) of the specifi- cation to refer back to the prior application and any such amend- ment shall be denied entry.

Examiner Note: 1. Use this form paragraph to inform the applicant that an amendment to the first sentence(s) of the specification referring to the CPA as a continuing application of the prior application has not been entered and will not be entered if submitted again. 2. In bracket 1, insert the filing date of the amendment. 3. In bracket 2, insert either --continuation-- or --divisional--. 4. In bracket 3, insert the Application Number of the prior non- provisional application.

Claims under 35 U.S.C. 119(a)-(d) and (e) for the benefit of the filing dates of earlier applications in a parent application will automatically carry over to a CPA.

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B. Terminal Disclaimer

A terminal disclaimer filed in the parent application carries over to a CPA. The terminal disclaimer filed in the parent application carries over because the CPA retains the same application number as the parent application, i.e., the application number to which the previously filed terminal disclaimer is directed. If applicant does not want the terminal disclaimer to carry over to the CPA, applicant must file a petition under 37 CFR 1.182 along with the required petition fee, requesting the terminal disclaimer filed in the par- ent application not be carried over to the CPA. See MPEP § 1490, “Withdrawing a Terminal Disclaimer,” subheading entitled “A. Before Issuance of Patent.”

C. Prior Election

An election made in the prior application carries over to the CPA only if all of the following conditions are met: (A) the CPA is designated as a continuation or is not designated at all (i.e., the CPA is NOT desig- nated as a divisionan( � (B) there was an express elec- tion by the applicant in reply to a restriction requirement in the prior application; (C) the CPA pre- sents claim(s) drawn only to invention(s) claimed in the prior application; and (D) the CPA does not con- tain an indication that a shift in election is desired.

Where all of the conditions are met, the examiner’s first action should repeat the restriction requirement made in the prior application to the extent it is still applicable in the CPA and include a statement that prosecution is being continued on the invention elected and prosecuted by applicant in the prior appli- cation.

D. Information Disclosure Statements and Pre- liminary Amendments

All information disclosure statements filed in the prior application that comply with the content require- ments of 37 CFR 1.98 will be considered in a CPA by the examiner. No specific request that the previously submitted information be considered in a CPA is required.

In addition, all information disclosure statements that comply with the content requirements of 37 CFR 1.98 and are filed before the mailing of a first Office action on the merits will be considered by the exam- iner, regardless of whatever else has occurred in the

examination process up to that point in time. The sub- mission of an information disclosure statement after the first Office action is mailed could delay prosecu- tion. Therefore, applicants are encouraged to file any information disclosure statement in a CPA as early as possible, preferably at the time of filing the CPA. For further discussion of information disclosure state- ments, see MPEP § 609.

Applicants are also encouraged to file all prelimi- nary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action. See MPEP § 714.03(a). In a situation where the applicant needs more time to prepare a preliminary amendment or to file an information disclosure statement, appli- cant can request a three-month suspension of action under 37 CFR 1.103(b). The three-month suspension of action under 37 CFR 1.103(b) must be filed at the time of filing a CPA. See MPEP § 709.

E. Copies of Affidavits

Affidavits and declarations, such as those under 37 CFR 1.130, 1.131 and 1.132 filed during the prose- cution of the parent nonprovisional application, auto- matically become a part of the CPA. Therefore, no copy of the original affidavit or declaration filed in the parent nonprovisional application need be filed in the CPA.

IV. PUBLIC ACCESS TO CPAs

A. Waiver of Confidentiality

A CPA is construed to include a waiver of confi- dentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to obtain access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of 37 CFR 1.53(d) may be given similar access to, copies of, or similar information concerning, the other application(s) in the application file. 37 CFR 1.53(d)(6). However, all applications in the file jacket of a pending CPA are treated as pend- ing, rather than abandoned, in determining whether copies of, and access to, such applications will be granted. For Image File Wrapper (IFW) processing,

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Rev. 5, Aug. 2006 200-42

see IFW Manual. See MPEP § 103 for further discus- sion of access to an abandoned application contained in the file of a pending CPA.

B. Certified Copy

A certified copy of a CPA will be prepared by the Certification Branch upon request. The certified copy will consist of a copy of the most recent non-contin- ued prosecution application in the chain of CPAs. The filing date of the CPA will be shown in the certified copy as the filing date of the most recent non-contin- ued prosecution application in the chain of CPAs.

V. FORMS

Form PTO/SB/29, “For Design Applications Only: Continued Prosecution Application (CPA) Request

Transmittal” and Form PTO/SB/29A, “For Design Applications Only: Receipt For Facsimile Transmit- ted CPA” may be used by applicant for filing a CPA under 37 CFR 1.53(d). The forms used by the TCs to notify applicants of defects regarding applications filed under 37 CFR 1.53(d) are shown below. “Notice of Improper CPA (or FWC) Filing For Utility or Plant Applications Filed Before June 8, 1995” Form PTO- 2011; “Notice of Improper CPA For Design Applica- tions” Form PTO-2012; “Notice To File Missing Parts Of Application (CPA), For Design Applications” Form PTO-2021; “Notice Of Incomplete Reply (CPA) For Design Applications” Form PTO-2018; and “Notice Of Abandonment Under 37 CFR 1.53(f) (CPA) For Design Applications” Form PTO-2019.

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200-43 Rev. 5, Aug. 2006

**> Form PTO/SB/29. Continued Prosecution Application (CPA) Request Transmittal

PTO/SB/29 (07-06) Approved for use through 01/31/2007. OMB 0651-0032

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.

FOR DESIGN APPLICATIONS ONLY: CONTINUED PROSECUTION APPLICATION (CPA) REQUEST TRANSMITTAL

CHECK BOX, if applicable: (Only for Continuation or Divisional applications under 37 CFR 1.53(d)) DUPLICATE

Attorney Docket No. of Prior Application First Named Inventor

Examiner Name

Art Unit

Address to: Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450

Express Mail Label No.

This is a request for a continuation or Divisional application under 37 CFR 1.53(d), (continued prosecution application (CPA)) of prior application number ______________________________________________________,

filed on ___________________, entitled ______________________________________________________________________________.

NOTES A CPA may only be filed in a design application. A CPA cannot be filed in a utility or plant application. See “Elimination of Continued Prosecution Application Practice as to Utility and Plant Applications; Final Rule,” 68 FR 32376 (May 30, 2003). Applicant may consider filing a Request for Continued Examination (RCE) under 37 CFR 1.114 in utility or plant applications. See MPEP 706.07(h) and form PTO/SB/30.

Filing Qualifications: The prior application identified above must be a design application that is complete as defined by 37 CFR 1.51(b).

C-I-P NOT PERMITTED: A continuation-in-part application cannot be filed as a CPA under 37 CFR 1.53(d), but must be filed under 37 CFR 1.53(b).

EXPRESS ABANDONMENT OF PRIOR APPLICATION: The filing of this CPA is a request to expressly abandon the prior application as of the filing date of the request for a CPA. 37 CFR 1.53(b) must be used to file a continuation, divisional, or continuation-in-part of an application that is not to be abandoned.

ACCESS TO PRIOR APPLICATION: The filing of this CPA will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public who is entitled under the provisions of 37 CFR 1.14 to access to, copies of, or information concerning, the prior application may be given similar access to, copies of, or similar information concerning, the other application or applications in the file.

35 U.S.C. 120 STATEMENT: In a CPA, no reference to the prior application is needed in the first sentence of the specification and none should be submitted. If a sentence referencing the prior application is submitted, it will not be entered. A request for a CPA is the specific reference required by 35 U.S.C. 120 and to every application assigned the application number identified in such request, 37 CFR 1.78(a).

WARNING: Information on this form may become public. Credit card information should not be included on this form. Provide credit card information and authorization on PTO-2038.

1. Enter the unentered amendment previously filed on ____________________________________________________________ under 37 CFR 1.116 in the prior design application.

2. A preliminary amendment is enclosed. 3. This application is filed by fewer than all the inventor(s) named in the prior application, 37 CFR 1.53(d)(4).

a. DELETE the following inventor(s) named in the prior design application: _____________________________________________________________ _____________________________________________________________

b. The inventor(s) to be deleted are set forth on a separate sheet attached hereto. 4. A new power of attorney (PTO/SB/81) is enclosed. 5. Information Disclosure Statement (IDS) is enclosed;

a. PTO/SB/08, PTO-1449 or equivalent b. Copies of IDS Citations

Page 1 of 2 This collection of information is required by 37 CFR 1.53(d). The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 24 minutes to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

If you need assistance in completing the form, call 1-800-PTO-9199 (1-800-786-9199) and select option 2.

Doc Code:

201.06(d) MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 200-44

Form PTO/SB/29. Continued Prosecution Application (CPA) Request Transmittal

PTO/SB/29 (07-06) Approved for use through 01/31/2007. OMB 0651-0032

U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.

6. Small entity status: Applicant claims small entity status. See 37 CFR 1.27.

7. The Director is hereby authorized to credit overpayments or change the following fees to Deposit Account No._______________________________________: (A duplicative copy of this form is enclosed)

a. Fees required under 37 CFR 1.16.

b. Fees required under 37 CFR 1.17.

c. Fees required under 37 CFR 1.18.

8. A check in the amount of $ ________________is enclosed.

9. Payment by credit card. Form PTO-2038 is attached.

10. Applicant requests suspension of action under 37 CFR 1.103(b) for a period of ____________months (not to exceed 3 months) and the fee under 37 CFR 1.17(i) is enclosed.

11. New Attorney Docket Number, if desired _____________________________________________ [Prior application Attorney Docket Number will carry over to this CPA unless a new Attorney Docket Number has been provided herein.]

12. a. Receipt For Facsimile Transmitted CPA (PTO/SB/29A)

b. Return Receipt Postcard (Should be specifically itemized. See MPEP 503)

13. Other:

The prior application’s correspondence address will carry over to this CPA NOTE: UNLESS a new correspondence address is provided below.

14. NEW CORRESPONDENCE ADDRESS

The address associated with Customer Number:

OR New correspondence address below

Name

Address City State

Zip Code Country Email

15. SIGNATURE OF APPLICANT, ATTORNEY, OR AGENT REQUIRED Signature

Name (Print/Type)

Registration No. (Attorney/Agent)

Date

Telephone Number

Page 2 of 2

Doc Code:

TYPES, CROSS-NOTING, AND STATUS OF APPLICATION 201.06(d)

200-45 Rev. 5, Aug. 2006

Form PTO/SB/29. Continued Prosecution Application (CPA) Request Transmittal

Privacy Act Statement

The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your submission of the attached form related to a patent application or patent. Accordingly, pursuant to the requirements of the Act, please be advised that: (1) the general authority for the collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark Office is to process and/or examine your submission related to a patent application or patent. If you do not furnish the requested information, the U.S. Patent and Trademark Office may not be able to process and/or examine your submission, which may result in termination of proceedings or abandonment of the application or expiration of the patent.

The information provided by you in this form will be subject to the following routine uses:

1. The information on this form will be treated confidentially to the extent allowed under the Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of records may be disclosed to the Department of Justice to determine whether disclosure of these records is required by the Freedom of Information Act.

2. A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel in the course of settlement negotiations.

3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress submitting a request involving an individual, to whom the record pertains, when the individual has requested assistance from the Member with respect to the subject matter of the record.

4. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency having need for the information in order to perform a contract. Recipients of information shall be required to comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 552a(m).

5. A record related to an International Application filed under the Patent Cooperation Treaty in this system of records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.

6. A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C. 218(c)).

7. A record from this system of records may be disclosed, as a routine use, to the Administrator, General Services, or his/her designee, during an inspection of records conducted by GSA as part of that agency’s responsibility to recommend improvements in records management practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance with the GSA regulations governing inspection of records for this purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not be used to make determinations about individuals.

8. A record from this system of records may be disclosed, as a routine use, to the public after either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the record was filed in an application which became abandoned or in which the proceedings were terminated and which application is referenced by either a published application, an application open to public inspection or an issued patent.

9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regulation.

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Rev. 5, Aug. 2006 200-46

Form PTO/SB/29A. Receipt for Facsimile Transmitted CPA

PTO/SB/29A (07-06) Approved for use through 01/31/2007. OMB 0651-0032

Patent and Trademark Office: U.S. DEPARTMENT OF COMMERCE Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.

If this RECEIPT is included with a request for a CPA filed by facsimile transmission, it will be date stamped and mailed to the ADDRESS in item 1.

NOTE: By this receipt, the USPTO (a) acknowledges that a request for a CPA in a design application was filed by facsimile transmission on the date stamped below by the USPTO and (b) verifies only that the application number provided by the applicant on this receipt is the same as the application number provided on the accompanying request for a CPA. This receipt CANNOT be used to acknowledge receipt of any paper(s) other than the request for a CPA.

2. APPLICATION IDENTIFICATION: (Provide at least enough information to identify the application)

a. For prior application Application No: ………………………………………….....………..…………...

Filing Date: ………………………………………….....………..…………...

Title: ………………………………………….....………..…………...

Attorney Docket No: ………………………………………….....………..…………...

First Named Inventor: ………………………………………….....………..…………...

b. For instant CPA application New Attorney Docket No: ………………………………………….....………..…………...

(if applicable)

FOR DESIGN APPLICATIONS ONLY

RECEIPT

FOR

FACSIMILE TRANSMITTED

CPA

1. ADDRESS

USPTO HANDLING INSTRUCTIONS: Please stamp area to the right with the date the complete transmission of the request for a CPA was received in the USPTO and also include the USPTO organization name that provided the date stamp (stamp may include both items). Verify that the application number provided by applicant on this receipt is the same as the application number provided by applicant on the request for a CPA accompanying this receipt. If there is an inconsistency between the application number provided on this receipt and the request for a CPA, strike through the inconsistent application number provided on this receipt and insert the correct application number, if possible. Then place in a window envelope and mail.

(To accompany a request for a Continued Prosecution Application (CPA)

under 37 CFR 1.53(d) filed by facsimile transmission)

Applicant’s Mailing Address for this receipt must be CLEARLY PRINTED or TYPED in the box below.

(THIS AREA FOR PTO DATE STAMP USE)The USPTO date stamp, which appears in the box to the right, is an acknowledgement by the USPTO of receipt of a request for a CPA filed by facsimile transmission on the date indicated below.

This collection of information is required by 37 CFR 1.8. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 24 minutes to complete, including gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND TO: Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.

If you need assistance in completing the form, call 1-800-PTO-9199 (1-800-786-9199) and select option 2.

TYPES, CROSS-NOTING, AND STATUS OF APPLICATION 201.06(d)

200-47 Rev. 5, Aug. 2006

<

Privacy Act Statement

The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your submission of the attached form related to a patent application or patent. Accordingly, pursuant to the requirements of the Act, please be advised that: (1) the general authority for the collection of this information is 35 U.S.C. 2(b)(2); (2) furnishing of the information solicited is voluntary; and (3) the principal purpose for which the information is used by the U.S. Patent and Trademark Office is to process and/or examine your submission related to a patent application or patent. If you do not furnish the requested information, the U.S. Patent and Trademark Office may not be able to process and/or examine your submission, which may result in termination of proceedings or abandonment of the application or expiration of the patent.

The information provided by you in this form will be subject to the following routine uses:

1. The information on this form will be treated confidentially to the extent allowed under the Freedom of Information Act (5 U.S.C. 552) and the Privacy Act (5 U.S.C 552a). Records from this system of records may be disclosed to the Department of Justice to determine whether disclosure of these records is required by the Freedom of Information Act.

2. A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence to a court, magistrate, or administrative tribunal, including disclosures to opposing counsel in the course of settlement negotiations.

3. A record in this system of records may be disclosed, as a routine use, to a Member of Congress submitting a request involving an individual, to whom the record pertains, when the individual has requested assistance from the Member with respect to the subject matter of the record.

4. A record in this system of records may be disclosed, as a routine use, to a contractor of the Agency having need for the information in order to perform a contract. Recipients of information shall be required to comply with the requirements of the Privacy Act of 1974, as amended, pursuant to 5 U.S.C. 552a(m).

5. A record related to an International Application filed under the Patent Cooperation Treaty in this system of records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property Organization, pursuant to the Patent Cooperation Treaty.

6. A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes of National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C. 218(c)).

7. A record from this system of records may be disclosed, as a routine use, to the Administrator, General Services, or his/her designee, during an inspection of records conducted by GSA as part of that agency’s responsibility to recommend improvements in records management practices and programs, under authority of 44 U.S.C. 2904 and 2906. Such disclosure shall be made in accordance with the GSA regulations governing inspection of records for this purpose, and any other relevant (i.e., GSA or Commerce) directive. Such disclosure shall not be used to make determinations about individuals.

8. A record from this system of records may be disclosed, as a routine use, to the public after either publication of the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a record may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the record was filed in an application which became abandoned or in which the proceedings were terminated and which application is referenced by either a published application, an application open to public inspection or an issued patent.

9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regulation.

201.06(d) MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 200-48

Form PTO-2011. Notice of Improper Application

TYPES, CROSS-NOTING, AND STATUS OF APPLICATION 201.06(d)

200-49 Rev. 5, Aug. 2006

**> Form PTO-2012. Notice of Improper CPA Filing Under 37 CFR 1.53(d)

201.06(d) MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 200-50

Form PTO-2018. Notice of Incomplete Reply (CPA)

TYPES, CROSS-NOTING, AND STATUS OF APPLICATION 201.06(d)

200-51 Rev. 5, Aug. 2006

Form PTO-2019. Notice of Abandonment Under 37 CFR 1.53(f) (CPA)

201.06(d) MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 200-52

Form PTO-2019. Notice of Abandonment Under 37 CFR 1.53(f) (CPA)

TYPES, CROSS-NOTING, AND STATUS OF APPLICATION 201.08

200-53 Rev. 5, Aug. 2006

201.07 Continuation Application [R-3]

A continuation is a second application for the same invention claimed in a prior nonprovisional applica- tion and filed before the original prior application becomes abandoned or patented. The continuation application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application). The applicant in the continuation application must include at least one inventor named in the prior nonprovi- sional application. The disclosure presented in the continuation must be the same as that of the original application; i.e., the continuation should not include anything which would constitute new matter if inserted in the original application. The continuation application must claim the benefit of the prior nonpro- visional application under 35 U.S.C. 120 or 365(c). >For more information on claiming the benefit of a prior nonprovisional application, see MPEP § 201.11.<

An application claiming the benefits of a provi- sional application under 35 U.S.C. 119(e) should not be called a “continuation” of the provisional applica- tion since an application that claims benefit of a pro- visional application is a nonprovisional application of a provisional application, not a continuation, division, or continuation-in-part of the provisional application.

At any time before the patenting or abandonment of or termination of proceedings on his or her earlier nonprovisional application, an applicant may have recourse to filing a continuation in order to introduce into the application a new set of claims and to estab- lish a right to further examination by the primary examiner. *>A continued prosecution< application >(CPA)< under 37 CFR 1.53(d) >(available only for design applications)<, however, must be filed prior to payment of the issue fee unless a petition under 37 CFR 1.313(c) is granted in the prior application. In addition, a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior non- provisional application is a design application that is complete as defined by 37 CFR 1.51(b).

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

Use form paragraph 2.05 to remind applicant of possible continuation status.

¶ 2.05 Possible Status as Continuation This application discloses and claims only subject matter dis-

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

Examiner Note: 1. This form paragraph should only be used if it appears that the application may be a continuation, but priority has not been prop- erly established. 2. An application claiming the benefits of a provisional applica- tion under 35 U.S.C. 119(e) should not be called a “continuation” of the provisional application since an application that claims ben- efit of a provisional application is a nonprovisional application of a provisional application, not a continuation, division, or continu- ation-in-part of the provisional application.

201.08 Continuation-in-Part Applica- tion [R-3]

A continuation-in-part is an application filed during the lifetime of an earlier nonprovisional application, repeating some substantial portion or all of the earlier nonprovisional application and adding matter not dis- closed in the said earlier nonprovisional application. (In re Klein, 1930 C.D. 2, 393 O.G. 519 (Comm’r Pat. 1930)). The continuation-in-part application may only be filed under 37 CFR 1.53(b). The continuation-in- part application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120 or 365(c). >For more information on claiming the bene- fit of a prior nonprovisional application, see MPEP § 201.11.<

A continuation-in-part application CANNOT be filed as a continued prosecution application (CPA) under 37 CFR 1.53(d).

An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “continuation-in-part” of the provisional application since an application that claims benefit of a provisional application is a nonprovisional applica- tion of a provisional application, not a continuation, division, or continuation-in-part of the provisional application.

The mere filing of a continuation-in-part does not itself create a presumption that the applicant acqui- esces in any rejections which may be outstanding in the copending national nonprovisional application or

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applications upon which the continuation-in-part application relies for benefit.

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

Unless the filing date of the earlier nonprovisional application is actually needed, for example, in the case of an interference or to overcome a reference, there is no need for the Office to make a determina- tion as to whether the requirement of 35 U.S.C. 120, that the earlier nonprovisional application discloses the invention of the second application in the manner provided by the first paragraph of 35 U.S.C. 112, is met and whether a substantial portion of all of the ear- lier nonprovisional application is repeated in the sec- ond application in a continuation-in-part situation. Accordingly, an alleged continuation-in-part applica- tion should be permitted to claim the benefit of the fil- ing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the **>other< requirements of 35 U.S.C. 120 >and 37 CFR 1.78, such as<:

(A) The first application and the alleged continua- tion-in-part application were filed with at least one common inventor;

(B) The alleged continuation-in-part application was “filed before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application”; and

(C) The alleged continuation-in-part application “contains or is amended to contain a specific refer- ence to the earlier filed application.” (The specific ref- erence **>must be submitted either in the first sentence(s) of the specification or in an application data sheet (see 37 CFR 1.76(b)(5)).)

See MPEP § 201.11 for more information on claiming the benefit of a prior nonprovisional applica- tion.<

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

Use form paragraph 2.06 to remind applicant of possible continuation-in-part status.

¶ 2.06 Possible Status as Continuation-in-Part This application repeats a substantial portion of prior Applica-

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

Examiner Note: 1. This form paragraph should only be used when it appears that the application may qualify as a continuation-in-part, but no priority claim has been perfected. 2. An application claiming the benefits of a provisional applica- tion under 35 U.S.C. 119(e) should not be called a “continuation- in-part” of the provisional application since an application that claims benefit of a provisional application is a nonprovisional application of a provisional application, not a continuation, divi- sion, or continuation-in-part of the provisional application.

201.09 Substitute Application [R-5]

The use of the term “Substitute” to designate any application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application, finds official recog- nition in the decision Ex parte Komenak, 45 USPQ 186, 1940 C.D. 1, 512 O.G. 739 (Comm’r Pat. 1940). Current practice does not require applicant to insert in the specification reference to the earlier application; however, attention should be called to the earlier application. The notation in the file history (see MPEP § 202.02) that one application is a “Substitute” for another is printed in the heading of the patent cop- ies. See MPEP § 202.02.

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

Use form paragraph 2.07 to remind applicant of possible substitute status. **>

¶ 2.07 Definition of a Substitute Applicant refers to this application as a “substitute” of Appli-

cation No. [1], filed [2]. The use of the term “substitute” to des- ignate an application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later case finds official recognition in the decision, Ex parte Komenak, 45 USPQ 186, 1940 C.D. 1, 512 O.G. 739 (Comm’r Pat. 1940). The notation on the file wrapper (See MPEP § 202.02) that one case is a “substitute” for another is printed in the

TYPES, CROSS-NOTING, AND STATUS OF APPLICATION 201.11

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heading of the patent copies. A “substitute” does not obtain the benefit of the filing date of the prior application.

<

201.10 Refile [R-2] No official definition has been given the term

“Refile,” though it is sometimes used as an alternative for the term “Substitute.”

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

Use form paragraph 2.08 to remind applicant of possible refile status. **>

¶ 2.08 Definition of a Refile It is noted that applicant refers to this application as a “refile.”

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

<

201.11 Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) [R-5]

Under certain circumstances a later-filed applica- tion for patent is entitled to the benefit of the filing date of a prior-filed nonprovisional application or pro- visional application which has at least one common inventor. The conditions are specified in 35 U.S.C. 120 and 37 CFR 1.78(a)(1) – (a)(3) for the benefit claim of a prior nonprovisional application and 35 U.S.C. 119(e) and 37 CFR 1.78(a)(4) – (a)(6) for the benefit claim of a prior provisional application.

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

An application for patent for an invention disclosed in the man- ner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same

effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or ter- mination of proceedings on the first application or on an applica- tion similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. No application shall be entitled to the benefit of an earlier filed application under this sec- tion unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the pen- dency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this section. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under this section.

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

*****

(e)(1) An application for patent filed under section 111(a) or section 363 of this title for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in a pro- visional application filed under section 111(b) of this title, by an inventor or inventors named in the provisional application, shall have the same effect, as to such invention, as though filed on the date of the provisional application filed under section 111(b) of this title, if the application for patent filed under section 111(a) or section 363 of this title is filed not later than 12 months after the date on which the provisional application was filed and if it con- tains or is amended to contain a specific reference to the provi- sional application. No application shall be entitled to the benefit of an earlier filed provisional application under this subsection unless an amendment containing the specific reference to the ear- lier filed provisional application is submitted at such time during the pendency of the application as required by the Director. The Director may consider the failure to submit such an amendment within that time period as a waiver of any benefit under this sub- section. The Director may establish procedures, including the pay- ment of a surcharge, to accept an unintentionally delayed submission of an amendment under this subsection during the pendency of the application

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

(3) If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the period of pendency of the provisional application shall be extended to the next succeed- ing secular or business day.

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

(a)(1) A nonprovisional application or international applica- tion designating the United States of America may claim an invention disclosed in one or more prior-filed copending nonpro-

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visional applications or international applications designating the United States of America. In order for an application to claim the benefit of a prior-filed copending nonprovisional application or international application designating the United States of Amer- ica, each prior-filed application must name as an inventor at least one inventor named in the later-filed application and disclose the named inventor’s invention claimed in at least one claim of the later-filed application in the manner provided by the first para- graph of 35 U.S.C. 112. In addition, each prior-filed application must be:

(i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States of America; or

(ii) Entitled to a filing date as set forth in § 1.53(b) or § 1.53(d) and have paid therein the basic filing fee set forth in § 1.16 within the pendency of the application.

(2)(i) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application or interna- tional application designating the United States of America claim- ing the benefit of one or more prior-filed copending nonprovisional applications or international applications designat- ing the United States of America must contain or be amended to contain a reference to each such prior-filed application, identify- ing it by application number (consisting of the series code and serial number) or international application number and interna- tional filing date and indicating the relationship of the applica- tions. Cross references to other related applications may be made when appropriate (see § 1.14).

(ii) This reference must be submitted during the pen- dency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed application. If the later-filed applica- tion is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371 (b) or (f) in the later-filed inter- national application or sixteen months from the filing date of the prior-filed application. These time periods are not extendable. Except as provided in paragraph (a)(3) of this section, the failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (a)(2)(i) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior-filed application. The time periods in this paragraph do not apply if the later-filed application is:

(A) An application for a design patent; (B) An application filed under 35 U.S.C. 111 (a)

before November 29, 2000; or (C) A nonprovisional application which entered the

national stage after compliance with 35 U.S.C. 371 from an inter- national application filed under 35 U.S.C. 363 before November 29, 2000.

(iii) If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76), or the specification

must contain or be amended to contain such reference in the first sentence(s) following the title.

(iv) The request for a continued prosecution applica- tion under § 1.53(d) is the specific reference required by 35 U.S.C. 120 to the prior-filed application. The identification of an application by application number under this section is the identification of every application assigned that application num- ber necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.

(3) If the reference required by 35 U.S.C. 120 and para- graph (a)(2) of this section is presented after the time period pro- vided by paragraph (a)(2)(ii) of this section, the claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed copending nonprovisional application or international application designating the United States of America may be accepted if the reference identifying the prior-filed application by application number or international application number and international fil- ing date was unintentionally delayed. A petition to accept an unin- tentionally delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application must be accompanied by:

(i) The reference required by 35 U.S.C. 120 and para- graph (a)(2) of this section to the prior-filed application, unless previously submitted;

(ii) The surcharge set forth in § 1.17(t); and (iii) A statement that the entire delay between the date

the claim was due under paragraph (a)(2)(ii) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

(4) A nonprovisional application, other than for a design patent, or an international application designating the United States of America may claim an invention disclosed in one or more prior-filed provisional applications. In order for an applica- tion to claim the benefit of one or more prior-filed provisional applications, each prior-filed provisional application must name as an inventor at least one inventor named in the later-filed appli- cation and disclose the named inventor’s invention claimed in at least one claim of the later-filed application in the manner pro- vided by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(d) must be paid within the time period set forth in § 1.53(g).

(5)(i) Any nonprovisional application or international application designating the United States of America claiming the benefit of one or more prior-filed provisional applications must contain or be amended to contain a reference to each such prior- filed provisional application, identifying it by the provisional application number (consisting of series code and serial number).

(ii) This reference must be submitted during the pen- dency of the later-filed application. If the later-filed application is an application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four months from the actual filing date of the later-filed application or sixteen months from the filing date of the prior-filed provisional application. If the later- filed application is a nonprovisional application which entered the national stage from an international application after compliance

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with 35 U.S.C. 371, this reference must also be submitted within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed inter- national application or sixteen months from the filing date of the prior-filed provisional application. These time periods are not extendable. Except as provided in paragraph(a)(6) of this section, the failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is:

(A) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or

(B) A nonprovisional application which entered the national stage after compliance with 35 U.S.C. 371 from an inter- national application filed under 35 U.S.C. 363 before November 29, 2000.

(iii) If the later-filed application is a nonprovisional application, the reference required by this paragraph must be included in an application data sheet (§ 1.76), or the specification must contain or be amended to contain such reference in the first sentence(s) following the title.

**> (iv) If the prior-filed provisional application was filed

in a language other than English and both an English-language translation of the prior-filed provisional application and a state- ment that the translation is accurate were not previously filed in the prior-filed provisional application, applicant will be notified and given a period of time within which to file, in the prior-filed provisional application, the translation and the statement. If the notice is mailed in a pending nonprovisional application, a timely reply to such a notice must include the filing in the nonprovisional application of either a confirmation that the translation and state- ment were filed in the provisional application, or an amendment or Supplemental Application Data Sheet withdrawing the benefit claim, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional applica- tion, even if the provisional application has become abandoned.<

(6) If the reference required by 35 U.S.C. 119(e) and paragraph (a)(5) of this section is presented in a nonprovisional application after the time period provided by paragraph (a)(5)(ii) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior filed provisional application may be accepted during the pendency of the later-filed application if the reference identifying the prior-filed application by provisional application number was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior- filed provisional application must be accompanied by:

(i) The reference required by 35 U.S.C. 119(e) and paragraph (a)(5) of this section to the prior-filed provisional appli- cation, unless previously submitted;

(ii) The surcharge set forth in § 1.17(t); and (iii) A statement that the entire delay between the date

the claim was due under paragraph (a)(5)(ii) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

*****

There are several conditions for a later-filed appli- cation to receive the benefit of the filing date of a prior-filed application under 35 U.S.C. 120, 121, or 365(c), or, provided the later-filed application is not a design application (see 35 U.S.C. 172), under 35 U.S.C. 119(e). The conditions are briefly summarized as follows:

(A) The prior-filed application must disclose the claimed invention of the later-filed application in the manner provided by the first paragraph of 35 U.S.C. 112 for a benefit claim under 35 U.S.C. 120, 121, or 365(c), and also for a benefit claim under 35 U.S.C. 119(e).

(B) The later-filed application must be copending with the prior-filed nonprovisional application for a benefit claim under 35 U.S.C. 120, 121, or 365(c). For a benefit claim under 35 U.S.C. 119(e), the later-filed application must be filed not later than 12 months after the filing date of the prior provisional applica- tion.

(C) The later-filed application must contain a ref- erence to the prior-filed application in the first sen- tence(s) of the specification or in an application data sheet, for a benefit claim under 35 U.S.C. 120, 121, or 365(c), and also for a benefit claim under 35 U.S.C. 119(e).

(D) The later-filed application must be filed by an inventor or inventors named in the prior-filed applica- tion for a benefit claim under 35 U.S.C. 120, 121, or 365(c), and also for a benefit claim under 35 U.S.C. 119(e).

(E) If the later-filed application is a utility or plant application filed on or after November 29, 2000, the reference to the prior-filed application must be submitted within the time period set forth in 37 CFR 1.78(a) (e.g., during the pendency of the later-filed application and within the later of 4 months from the actual filing date of the later-filed application or 16 months from the filing date of the prior-filed applica- tion) for a benefit claim under 35 U.S.C. 120, 121, or 365(c), and also for benefit claim under 35 U.S.C. 119(e).

(F) If the prior-filed application is a provisional application filed in a language other than English, a benefit claim under 35 U.S.C. 119(e) *>requires the following to be filed in the provisional application<: (1) an English language translation of the provisional

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application; and (2) a statement that the translation is accurate. See 37 CFR 1.78(a)(5)(iv).

(G) If the prior-filed application was an interna- tional application designating the United States of America, it must be entitled to a filing date in accor- dance with PCT Article 11. See 37 CFR 1.78(a)(1)(i).

(H) If the prior-filed application was filed under 35 U.S.C. 111, the prior-filed application must be entitled to a filing date and the basic filing fee of the prior-filed application must have been paid. See 37 CFR 1.78(a)(1)(ii) regarding a benefit claim under 35 U.S.C. 120, 121, or 365(c), and see 37 CFR 1.78(a)(4) regarding a benefit claim under 35 U.S.C. 119(e).

More information for each condition is provided in the subsections below.

If the claims in the later-filed application are not entitled to the benefit of an earlier filing date, the examiner should:

(A) Notify applicant that the claims in the later- filed application are not entitled to the benefit of an earlier filing date because one or more conditions for receiving the benefit of an earlier filing date have not been satisfied (the examiner may use form paragraph 2.09 and other appropriate form paragraphs provided in the following subsections); and

(B) Conduct a prior art search based on the actual filing date of the application instead of the earlier fil- ing date. The examiner may use an intervening refer- ence in a rejection until applicant corrects the benefit claim or shows that the conditions for claiming the benefit of the prior application have been met. The effective filing date of the later-filed application is the actual filing date of the later-filed application, not the filing date of the prior-filed application. See MPEP § 706.02.

I. DISCLOSURE REQUIREMENT

The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovi- sional application or provisional application); the dis- closure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Prods., Inc. v. Perfor- mance Contracting, Inc., 38 F.3d 551, 32 USPQ2d

1077 (Fed. Cir. 1994). The prior-filed application must disclose the common named inventor’s inven- tion claimed in the later-filed application in the man- ner provided by the first paragraph of 35 U.S.C. 112. See 37 CFR 1.78(a)(1). Accordingly, the disclosure of the prior-filed application must provide adequate sup- port and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112, first paragraph.

A. Claiming the Benefit of Provisional Applica- tions

Under 35 U.S.C. 119(e), the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter claimed in the nonprovisional application that claims the benefit of the provisional application. In New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298 F.3d 1290, 1294, 63 USPQ2d 1843, 1846 (Fed. Cir. 2002), the court held that for a nonprovisonal application to be afforded the priority date of the provisional appli- cation, “the specification of the provisional must ‘contain a written description of the invention and the manner and process of making and using it, in such full, clear, concise, and exact terms,’ 35 U.S.C. § 112 ¶1, to enable an ordinarily skilled artisan to practice the invention claimed in the nonprovisional applica- tion.”

In New Railhead, the patented drill bit was the sub- ject of a commercial offer for sale. A provisional application was filed after the sale offer, but well within the one year grace period of 35 U.S.C. 102(b). A nonprovisional application, which issued as Patent No. 5,899,283, was filed within one year of the filing of the provisional application but more than one year after the sale offer. If the ‘283 patent was not afforded the priority date of the provisional application, the patent would be invalid under 35 U.S.C. 102(b) since it was filed more than one year after the commercial offer for sale. The court looked at claim 1 of the ‘283 patent which recites a bit body being angled with respect to the sonde housing. The court then reviewed the provisional application and concluded that nowhere in the provisional application is the bit body expressly described as “being angled with respect to the sonde housing” as recited in claim 1 of the ‘283 patent. The court held that the disclosure of the provi- sional application does not adequately support the

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invention claimed in the ‘283 patent as to the angle limitation and therefore, the ‘283 patent is not entitled to the filing date of the provisional application under 35 U.S.C. 119(e)(1) and the ‘283 patent is invalid under 35 U.S.C. 102(b).

A claim is not required in a provisional application. However, for a claim in a later filed nonprovisional application to be entitled to the benefit of the filing date of the provisional application, the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter of the claim in the later filed nonprovi- sional application. If a claim in the nonprovisional application is not adequately supported by the written description and drawing(s) (if any) of the provisional application (as in New Railhead), that claim in the nonprovisional application is not entitled to the bene- fit of the filing date of the provisional application. If the filing date of the earlier provisional application is necessary, for example, in the case of an interference or to overcome a reference, care must be taken to ensure that the disclosure filed as the provisional application adequately provides (1) a written descrip- tion of the subject matter of the claim(s) at issue in the later filed nonprovisional application, and (2) an enabling disclosure to permit one of ordinary skill in the art to make and use the claimed invention in the later filed nonprovisional application without undue experimentation.

B. Claiming the Benefit of Nonprovisional Appli- cations

The disclosure of a continuation application must be the same as the disclosure of the prior-filed appli- cation. See MPEP § 201.07. The disclosure of a divi- sional application must be the same as the disclosure of the prior-filed application, or include at least that portion of the disclosure of the prior-filed application that is germane to the invention claimed in the divi- sional application. See MPEP § 201.06. The disclo- sure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. A continua- tion-in-part application may include matter not dis- closed in the prior-filed application. See MPEP § 201.08. Only the claims of the continuation-in-part application that are disclosed in the manner provided by the first paragraph of 35 U.S.C. 112 in the prior-

filed application are entitled to the benefit of the filing date of the prior-filed application. If there is a contin- uous chain of copending nonprovisional applications, each copending application must disclose the claimed invention of the later-filed application in the manner provided by the first paragraph of 35 U.S.C. 112, in order for the later-filed application to be entitled to the benefit of the earliest filing date.

Under 35 U.S.C. 120, a claim in a U.S. application is entitled to the benefit of the filing date of an earlier filed U.S. application if the subject matter of the claim is disclosed in the manner provided by 35 U.S.C. 112, first paragraph, in the earlier filed application. See, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 47 USPQ2d 1829 (Fed. Cir. 1998); In re Scheiber, 587 F.2d 59, 199 USPQ 782 (CCPA 1978). A claim in a subsequently filed application that relies on a com- bination of prior applications may not be entitled to the benefit of an earlier filing date under 35 U.S.C. 120 since 35 U.S.C. 120 requires that the earlier filed application contain a disclosure which complies with 35 U.S.C. 112, first paragraph for each claim in the subsequently filed application. Studiengesellschaft Kohle m.b.H. v. Shell Oil Co., 112 F.3d 1561, 1564, 42 USPQ2d 1674, 1677 (Fed. Cir. 1997).

A claim in the later-filed application is not entitled to the benefit of the filing date of the prior-filed appli- cation if the disclosure of the prior-filed application does not enable one skilled in the art to “use” the claimed invention. See In re Hafner, 410 F.2d 1403, 1406, 161 USPQ 783, 786 (CCPA 1969) (“[T]o be entitled to the benefits provided by [35 U.S.C. 120], the invention disclosed in the “previously filed” appli- cation must be described therein in such a manner as to satisfy all the requirements of the first paragraph of [35 U.S.C.] 112, including that which requires the description to be sufficient to enable one skilled in the art to use the [invention].”).

Where the prior application (a nonprovisional application) is found to be fatally defective because of insufficient disclosure to support allowable claims, a later-filed application filed as a “continuation-in-part” of the first application to supply the deficiency is not entitled to the benefit of the filing date of the first application. Hunt Co. v. Mallinckrodt Chemical Works, 177 F.2d 583, 587, 83 USPQ 277, 281 (2d Cir. 1949) and cases cited therein.

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Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the par- ent nonprovisional application is entitled to the bene- fit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in- part application recites a feature which was not dis- closed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or ade- quately supported in the continuation-in-part applica- tion, such a claim is entitled only to the filing date of the continuation-in-part application; In re Chu, 66 F.3d 292, 36 USPQ2d 1089 (Fed. Cir. 1995); Transco Products, Inc. v. Performance Contracting Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994); In re Van Lagenhoven, 458 F.2d 132, 136, 173 USPQ 426, 429 (CCPA 1972); and Chromalloy American Corp. v. Alloy Surfaces Co., Inc., 339 F. Supp. 859, 874, 173 USPQ 295, 306 (D. Del. 1972).

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

C. Form Paragraphs

Form paragraphs 2.09 and 2.10 should be used where the claims of the later-filed application are not adequately disclosed or enabled by the disclosure of the prior application. **>

¶ 2.09 Heading for Conditions for Benefit Claims Under 35 U.S.C. 119(e), 120, 121, or 365(c)

Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Applicant has not complied with one or more con-

ditions for receiving the benefit of an earlier filing date under 35 U.S.C. [1] as follows:

Examiner Note: 1. In bracket 1, insert either or both --119(e)-- or --120--. 2. One or more of form paragraphs 2.10 to 2.11.01 or 2.38 to 2.40 must follow depending upon the circumstances.

<

¶ 2.10 Disclosure of Prior-Filed Application Does Not Provide Support for Claimed Subject Matter

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

The disclosure of the prior-filed application, Application No. [1], fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for one or more claims of this application. [2] Examiner Note: 1. This form paragraph must be preceded by heading form para- graph 2.09. 2. This form paragraph may be used when there is lack of sup- port or enablement in the prior-filed application for the claims in the application that is claiming the benefit of the prior-filed appli- cation under 35 U.S.C. 120, 121, or 365(c) or under 35 U.S.C. 119(e). The prior-filed application can be a provisional applica- tion or a nonprovisional application. 3. In bracket 1, insert the application number of the prior-filed application. 4. In bracket 2, provide an explanation of lack of support or enablement. If only some of the claims are not entitled to the ben- efit of the filing date of the prior application, the examiner should include a list those claims after the explanation (e.g., “Accord- ingly, claims 1-10 are not entitled to the benefit of the prior appli- cation.”).

Form paragraph 2.10.01 should be used where applicant is claiming the benefit of a prior nonprovi- sional application under 35 U.S.C. 120, 121, or 365(c) and the relationship (continuation or divisional) of the applications should be changed to continuation-in- part because the disclosure of the later-filed applica- tion contains matter not disclosed in the prior-filed nonprovisional application.

¶ 2.10.01 Continuation or Divisional Application Contains New Matter Relative to the Prior-Filed Application

Applicant states that this application is a continuation or divi- sional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to change the relationship (continuation or divisional

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application) to continuation-in-part because this application con- tains the following matter not disclosed in the prior-filed applica- tion: [1].

Examiner Note: 1. This form paragraph should be used when an application claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, or 365(c), contains new matter, and purports to be a “continu- ation,” “division,” or “divisional application” of the prior-filed application. Do not use this form paragraph if the applicant is claiming the benefit of a provisional application under 35 U.S.C. 119(e). 2. In bracket 1, provide an example of the matter not disclosed in the prior-filed application.

II. TIME FOR FILING LATER-FILED AP- PLICATIONS

A. Claiming the Benefit of Provisional Applica- tions

When a later-filed application is claiming the bene- fit of a prior-filed provisional application under 35 U.S.C. 119(e), the nonprovisional application must be filed not later than 12 months after the date on which the provisional application was filed. If the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the nonprovi- sional application may be filed on the next succeeding business day. See 35 U.S.C. 21(b), 37 CFR 1.7(b), and MPEP § 201.04(b) and § 505.

Public Law 106-113 amended 35 U.S.C. 119(e)(2) to eliminate the copendency requirement for a non- provisional application claiming benefit of a provi- sional application. 35 U.S.C. 119(e)(2) as amended by Public Law 106-113 is effective as of November 29, 1999 and applies to any provisional applications filed on or after June 8, 1995 but has no effect on any patent which is the subject of litigation in an action commenced before November 29, 1999. Although a nonprovisional application claiming the benefit of a provisional application is not required to be copend- ing with the provisional application, abandonment of a provisional application for failure to pay the basic filing fee would indicate that the nonprovisional application could not claim the benefit of the provi- sional application because the basic filing fee was not paid within the time period set forth in 37 CFR 1.53(g) as required by 37 CFR 1.78(a)(4).

Applicant may claim the benefit of a provisional application by claiming the benefit of an intermediate

copending nonprovisional application. The later-filed application must claim the benefit of the intermediate nonprovisional application under 35 U.S.C. 120, 121, or 365(c); the intermediate application must be filed not later than 12 months after the filing date of the provisional application; and both the later-filed appli- cation and the intermediate application must claim the benefit of the provisional application under 35 U.S.C. 119(e).

B. Claiming the Benefit of Nonprovisional Applica- tions — Copendency

When a later-filed application is claiming the bene- fit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, or 365(c), the later-filed applica- tion must be copending with the prior application or with an intermediate nonprovisional application simi- larly entitled to the benefit of the filing date of the prior application. Copendency is defined in the clause which requires that the later-filed application must be filed before: (A) the patenting of the prior application; (B) the abandonment of the prior application; or (C) the termination of proceedings in the prior applica- tion.

If the prior application issues as a patent, it is suffi- cient for the later-filed application to be copending with it if the later-filed application is filed on the same date, or before the date that the patent issues on the prior application. Thus, the later-filed application may be filed under 37 CFR 1.53(b) while the prior applica- tion is still pending before the examiner, or is in issue, or even between the time the issue fee is paid and the patent issues. Patents usually will be published within four weeks of payment of the issue fee. Applicants are encouraged to file any continuing applications no later than the date the issue fee is paid, to avoid issu- ance of the prior application before the continuing application is filed.

If the prior application is abandoned, the later-filed application must be filed before the abandonment in order for it to be copending with the prior application. The term “abandoned,” refers to abandonment for failure to prosecute (MPEP § 711.02), express aban- donment (MPEP § 711.01), abandonment for failure to pay the issue fee (37 CFR 1.316), and abandonment for failure to notify the Office of a foreign filing after filing a nonpublication request under 35 U.S.C. 122(b)(2)(B)(iii) (MPEP § 1124).

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The expression “termination of proceedings” includes the situations when an application is aban- doned or when a patent has been issued, and hence this expression is the broadest of the three.

After a decision by the Court of Appeals for the Federal Circuit in which the rejection of all claims is affirmed, the proceeding is terminated when the mandate is issued by the Court. There are several other situations in which proceedings are terminated as is explained in MPEP § 711.02(c).

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

The term “continuity” is used to express the rela- tionship of copendency of the same subject matter in two different applications of the same inventor. The later-filed application may be referred to as a continu- ing application when the prior application is not a pro- visional application. Continuing applications include those applications which are called divisions, continu- ations, and continuations-in-part. The statute is so worded that the prior application may contain more than the later-filed application, or the later-filed appli- cation may contain more than the prior application, and in either case the later-filed application is entitled to the benefit of the filing date of the prior application as to the common subject matter disclosed in compli- ance with 35 U.S.C. 112, first paragraph.

A later-filed application which is not copending with the prior application (which includes those called “substitute” applications as set forth in MPEP § 201.09) is not entitled to the benefit of the filing date of the prior application. Therefore, prior art against the claims of the later-filed application is determined based on the filing date of the later-filed application. An applicant is not required to refer to such prior application(s) in an application data sheet or in the specification of the later-filed application, but is required to otherwise call the examiner’s atten- tion to the prior application if it or its contents or pros- ecution is material to patentability of the later-filed application as defined in 37 CFR 1.56(b).

C. Form Paragraphs

Use form paragraphs 2.09 and 2.11 to indicate the benefit claim under 35 U.S.C. 120, 121, or 365(c) is improper because there is no copendency between the applications.

¶ 2.11 Application Must Be Copending With Parent This application is claiming the benefit of prior-filed nonprovi-

sional application No. [1] under 35 U.S.C. 120, 121, or 365(c). Copendency between the current application and the prior appli- cation is required. Since the applications are not copending, the benefit claim to the prior-filed nonprovisional application is improper. Applicant is required to delete the reference to the prior- filed application from the first sentence(s) of the specification, or the application data sheet, depending on where the reference was originally submitted, unless applicant can establish copendency between the applications.

Examiner Note: 1. This form paragraph must be preceded by heading form para- graph 2.09. 2. Do not use this form paragraph for benefit claims under 35 U.S.C. 119(e) to provisional applications. 3. In bracket 1, insert the application number of the prior-filed nonprovisional application.

Use form paragraphs 2.09 and 2.11.01 and to indi- cate that the later-filed application must be filed not later than 12 months after the filing date of the provi- sional application for which a benefit is sought.

¶ 2.11.01 Application Must Be Filed Within 12 Months From the Provisional Application

This application is claiming the benefit of provisional applica- tion No. [1] under 35 U.S.C. 119(e). However, this application was not filed within twelve months from the filing date of the pro- visional application, and there is no indication of an intermediate nonprovisional application that is directly claiming the benefit of the provisional application and filed within 12 months of the filing date of the provisional application.

Note: If the day that is 12 months after the filing date of the provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia, the nonprovisional appli- cation claiming the benefit of the provisional application may be filed on the next succeeding business day.

Applicant is required to delete the reference to the prior-filed provisional application from the first sentence(s) of the specifica- tion or the application data sheet, depending on where the refer- ence was originally submitted, unless applicant can establish that this application, or an intermediate nonprovisional application, was filed within 12 months of the filing date of the provisional application.

Examiner Note: 1. This form paragraph must be preceded by heading form para- graph 2.09.

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2. In bracket 1, insert the application number of the prior-filed provisional application.

III. REFERENCE TO PRIOR APPLICA- TION(S)

The third requirement of the statute is that the later- filed application must contain a specific reference to the prior application. This should appear as the first sentence(s) of the specification following the title preferably as a separate paragraph (37 CFR 1.78(a)) and/or in an application data sheet (37 CFR 1.76). If the specific reference is only contained in the applica- tion data sheet, then the benefit claim information will be included on the front page of any patent or patent application publication, but will not be included in the first sentence(s) of the specification. When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement of the prior application, unless an incorporation by reference statement of the prior application was presented upon filing of the application. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980).

A. Reference to Prior Nonprovisional Applica- tions

Except for benefit claims to the prior application in a continued prosecution application (CPA), benefit claims under 35 U.S.C. 120, 121, and 365(c) must identify the prior application by application number, or by international application number and interna- tional filing date, and indicate the relationship be- tween the applications. See 37 CFR 1.78(a)(2)(i). The relationship between the applications is whether the instant application is a continuation, divisional, or continuation-in-part of the prior nonprovisional appli- cation. An example of a proper benefit claim is “this application is a continuation of prior Application No. ---, filed ---.” A benefit claim that merely states that “this application claims the benefit of Application No. ---, filed ---” does not comply with 35 U.S.C. 120 and 37 CFR 1.78(a)(2)(i), since the relationship between the applications is not stated. In addition, a benefit claim that merely states that “this application is a con- tinuing application of Application No. ---, filed ---” does not comply with 35 U.S.C. 120 and 37 CFR 1.78(a)(2)(i) since the proper relationship, which in-

cludes the type of continuing (i.e., continuation, divi- sional, or continuation-in-part) application, is not stated.

A request for a CPA filed under 37 CFR 1.53(d) is itself the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to every application assigned the same application number identified in the request. (Note: The CPA is assigned the same application number as the prior application.) In a CPA, a specific reference in the first sentence(s) of the specification following the title, or in an application data sheet, to a prior application assigned the same application num- ber is not required and may not be made. Any such reference should be deleted. No amendment in a CPA may delete the specific reference to the prior applica- tion assigned the same application number. A specific reference to an application not assigned the same application number, but relied on for benefit under 35 U.S.C. 120 and 37 CFR 1.78(a)(2) is required. Cross references to other related applications not assigned the same application as the CPA may be made when appropriate.

When a nonprovisional application (other than a CPA) is entitled under 35 U.S.C. 120 to an earlier U.S. effective filing date, a statement such as “This is a divisional (or continuation, or continuation-in-part, as appropriate) application of Application No. ---, filed ---” should appear as the first sentence(s) of the specification or in an application data sheet, except in the case of design applications where it should appear as set forth in MPEP § 1504.20. In the case of an application filed under 37 CFR 1.53(b) as a divi- sional, continuation or continuation-in-part of a CPA, there should be only one reference to the series of applications assigned the same application number, with the filing date cited being that of the original noncontinued application. Where a nonprovisional application is claiming the benefit under 35 U.S.C. 120 of a prior national stage application under 35 U.S.C. 371, a suitable reference would read “This application is a continuation of U.S. Application No. 08/---, which was the National Stage of International Application No. PCT/DE95/---, filed ---.”

Any benefit claim that does not both identify a prior application by its application number and specify a relationship between the applications will not be con- sidered to contain a specific reference to a prior appli- cation as required by 35 U.S.C. 120. Such benefit

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claim may not be recognized by the Office and may not be included on the filing receipt even if the claim appears in the first sentence(s) of the specification or an application data sheet. As a result, publication of the application may not be scheduled as a function of the prior application’s filing date. If the Office does not recognize a benefit claim under 35 U.S.C. 120 because it does not contain the required reference and the time period set forth in 37 CFR 1.78(a)(2)(ii) for submitting the required reference has expired, appli- cant must submit a petition under 37 CFR 1.78(a)(3) and the surcharge set forth in 37 CFR 1.17(t) in order for the Office to accept the unintentionally delayed claim under 35 U.S.C. 120 since the application will not have been scheduled for publication on the basis of the prior application’s filing date.

To specify the relationship between the applica- tions, applicant must specify whether the application is a continuation, divisional, or continua- tion-in-part of the prior application. Note that the terms are exclusive. An application cannot be, for example, both a continuation and a divisional or a continuation and a continuation-in-part of the same application. Moreover, if the benefit of more than one nonprovisional application is claimed, then the rela- tionship between each application (i.e., continuation, divisional, or continuation-in-part) must be specified in order to establish copendency throughout the entire chain of prior-filed applications. For example, a state- ment that “this application claims the benefit of Application Nos. C, B, and A” or “this application is a continuing application of Application Nos. C, B, and A” is improper. Applicant instead must state, for example, that “this application is a continuation of Application No. C, filed ---, which is a continuation of Application No. B, filed ---, which is a continuation of Application No. A, filed ---.

B. Reference to Prior Provisional Applications

When the nonprovisional application is entitled to an earlier U.S. effective filing date of one or more provisional applications under 35 U.S.C. 119(e), a statement such as “This application claims the benefit of U.S. Provisional Application No. 60/---, filed ---, and U.S. Provisional Application No. 60/ ---, filed --- .” should appear as the first sentence(s) of the descrip- tion or in an application data sheet. In addition, for an application which is claiming the benefit under 35

U.S.C. 120 of a prior application, which in turn claims the benefit of a provisional application under 35 U.S.C. 119(e), a suitable reference would read, “This application is a continuation of U.S. Application No. 10/---, filed ---, which claims the benefit of U.S. Pro- visional Application No. 60/---, filed ---.”. In the case of design applications, it should appear as set forth in MPEP § 1504.20.

The relationship (i.e., continuation, divisional, or continuation-in-part) is not required and should not be specified when a prior provisional application is being claimed under 35 U.S.C. 119(e). No relationship should be specified because whenever a priority claim to a provisional application under 35 U.S.C. 119(e) is made, it is implicit that the relationship is “nonprovi- sional application of a provisional application.” If a relationship between a prior provisional application and the nonprovisional application is submitted, it may be unclear whether the applicant wishes to claim the benefit of the filing date of the provisional appli- cation under 35 U.S.C. 119(e) or 120. Thus, appli- cants seeking to claim the priority to a provisional application under 35 U.S.C. 119(e) should not state that the application is a “continuation” of a provi- sional application or that the application claims 35 U.S.C. 120 benefit to a provisional application. Although 35 U.S.C. 120 does not preclude a benefit claim to a provisional application, it is not recom- mended that applicants claim the benefit to a provi- sional application under 35 U.S.C. 120 since such a claim could have the effect of reducing the patent term, as the term of a patent issuing from such an application may be measured from the filing date of the provisional application pursuant to 35 U.S.C. 154(a)(2).

C. Benefit Claims to Multiple Prior Applications

Sometimes a pending application is one of a series of applications wherein the pending application is not copending with the first filed application but is copending with an intermediate application entitled to the benefit of the filing date of the first application. If applicant wishes that the pending application have the benefit of the filing date of the first filed application, applicant must, besides making reference to the inter- mediate application, also make reference to the first application. See Sticker Indus. Supply Corp. v. Blaw-

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Knox Co., 405 F.2d 90, 160 USPQ 177 (7th Cir. 1968) and Hovlid v. Asari, 305 F. 2d 747, 134 USPQ 162 (9th Cir. 1962). The reference to the prior applications must identify all of the prior applications and indicate the relationship (i.e., continuation, divisional, or con- tinuation-in-part) between each nonprovisional appli- cation in order to establish copendency throughout the entire chain of prior applications. Appropriate refer- ences must be made in each intermediate application in the chain of prior applications. If an applicant desires, for example, the following benefit claim: “this application is a continuation of Application No. C, filed ---, which is a continuation of Application No. B, filed ---, which claims the benefit of provisional Application No. A, filed ---,” then Application No. C must have a reference to Application No. B and provi- sional Application No. A, and Application No. B must have a reference to provisional Application No. A.

There is no limit to the number of prior applications through which a chain of copendency may be traced to obtain the benefit of the filing date of the earliest of a chain of prior copending applications. See In re Henriksen, 399 F2.d 253, 158 USPQ 224 (CCPA 1968).

A nonprovisional application that directly claims the benefit of a provisional application under 35 U.S.C. 119(e) must be filed within 12 months from the filing date of the provisional application. Although an application that itself directly claims the benefit of a provisional application is not required to specify the relationship to the provisional application, if the instant nonprovisional application is not filed within the 12 month period, but claims the benefit of an intermediate nonprovisional application under 35 U.S.C. 120 that was filed within 12 months from the filing date of the provisional application and claimed the benefit of the provisional application, the intermediate application must be clearly identified as claiming the benefit of the provisional application so that the Office can determine whether the intermedi- ate nonprovisional application was filed within 12 months of the provisional application and thus, whether the claim is proper. Applicant must state, for example, “this application is a continuation of Appli- cation No. C, filed ---, which is a continuation of Application No. B, filed ---, which claims the benefit of provisional Application No. A, filed ---.” A benefit claim that merely states “this application claims the

benefit of nonprovisional Application Nos. C and B, and provisional Application No. A” would be improper. Where the benefit of more than one provi- sional application is being claimed, the intermediate nonprovisional application(s) claiming the benefit of each provisional application must be indicated. Appli- cant must state, for example, “this application is con- tinuation of Application No. D, filed ---, which is a continuation-in-part of Application No. C, filed ---, Application No. D claims the benefit of provisional Application No. B, filed ---, and Application No. C claims the benefit of provisional Application No. A, filed ---.” If a benefit claim to a provisional applica- tion is submitted without an indication that an inter- mediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period or the relationship between each nonprovisional applica- tion is not indicated, the Office will not recognize such benefit claim and will not include the benefit claim on the filing receipt. Therefore, a petition under 37 CFR 1.78(a) and the surcharge set forth in 37 CFR 1.17(t) will be required if the intermediate application and the relationship of each nonprovisional applica- tion are not indicated within the period set forth in 37 CFR 1.78(a).

D. Reference Must Be Included in the Specifica- tion or an Application Data Sheet (ADS)

The reference required by 37 CFR 1.78(a)(2) or (a)(5) must be included in an ADS or the specification must contain or be amended to contain such reference in the first sentence(s) following the title. If applicant is claiming the benefit of multiple prior applications, the reference to the prior applications may be in a continuous string of multiple sentences at the begin- ning of the specification. The multiple sentences must begin as the first sentence after the title, and any addi- tional sentence(s) including a benefit claim must fol- low the first sentence and not be separated from the first sentence by any other sentence not making a ben- efit claim. If an applicant includes a benefit claim in the application but not in the manner specified by 37 CFR 1.78(a) (e.g., if the claim is included in an oath or declaration or the application transmittal let- ter) within the time period set forth in 37 CFR 1.78(a), the Office will not require a petition under 37 CFR 1.78(a) and the surcharge under 37 CFR 1.17(t) to

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correct the claim if the information concerning the claim was recognized by the Office as shown by its inclusion on the filing receipt. If, however, a claim is not included in the first sentence(s) of the specifica- tion or in an ADS and is not recognized by the Office as shown by its absence on the filing receipt, the Office will require a petition under 37 CFR 1.78(a) and the surcharge to correct the claim. The Office may not recognize any benefit claim where there is no indication of the relationship between the nonprovi- sional applications or no indication of the intermedi- ate nonprovisional application that is directly claiming the benefit of the provisional application. Even if the Office has recognized a benefit claim by entering it into the Office’s database and including it on applicant’s filing receipt, the benefit claim is not a proper benefit claim under 35 U.S.C. 119(e) or 35 U.S.C. 120 and 37 CFR 1.78 unless the reference is included in an ADS or in the first sentence>(s)< of the specification and all other requirements are met.

E. Examiners Should Require the Reference if Missing

In view of this requirement, the right to rely on a prior application may be waived by an applicant if a reference to the prior application is not included in the later-filed application. If the examiner is aware of the fact that an application is a continuing application of a prior application or the applicant fails to submit the reference to the prior application in compliance with 37 CFR 1.78(a) (e.g., the reference was submitted in the transmittal letter but not in the first sentence(s) of the specification or in an application data sheet), he or she should merely call attention to this in an Office action by using the wording of form paragraphs 2.15 or 2.16.

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

If applicant desires to claim the benefit of a prior-filed applica- tion under 35 U.S.C. [1], a specific reference to the prior-filed application in compliance with 37 CFR 1.78(a) must be included in the first sentence(s) of the specification following the title or in an application data sheet. For benefit claims under 35 U.S.C. 120, 121 or 365(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applica- tions.

If the instant application is a utility or plant application filed under 35 U.S.C. 111(a) on or after November 29, 2000, the spe- cific reference must be submitted during the pendency of the application and within the later of four months from the actual fil-

ing date of the application or sixteen months from the filing date of the prior application. If the application is a utility or plant application which entered the national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the specific reference must be submitted dur- ing the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(2)(ii) and (a)(5)(ii). This time period is not extendable and a failure to sub- mit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121 and 365(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable peti- tion to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e), 120, 121 and 365(c). The petition must be accom- panied by (1) the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78(a)(2) or (a)(5) to the prior application (unless previously submitted), (2) a surcharge under 37 CFR 1.17(t), and (3) a statement that the entire delay between the date the claim was due under 37 CFR 1.78(a)(2) or (a)(5) and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unin- tentional. The petition should be addressed to: Mail Stop Peti- tion, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

If the reference to the prior application was previously submit- ted within the time period set forth in 37 CFR 1.78(a), but not in the first sentence(s) of the specification or an application data sheet (ADS) as required by 37 CFR 1.78(a) (e.g., if the reference was submitted in an oath or declaration or the application trans- mittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78(a) and the surcharge under 37 CFR 1.17(t) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78(a) by fill- ing an amendment to the first sentence(s) of the specification or an ADS. See MPEP § 201.11.

Examiner Note: 1. In bracket 1, insert --119(e)-- or --120--. 2. In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), a specific reference in the first sentence(s) of the specification, or in an application data sheet, to the prior applica- tion is not required and may not be made. The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA. 37 CFR 1.53(d)(2)(iv) and (d)(7).

¶ 2.16 Reference to a Prior Application It is noted that this application appears to claim subject matter

disclosed in prior Application No. [1], filed [2]. A reference to the prior application must be inserted as the first sentence(s) of the specification of this application or in an application data sheet (37 CFR 1.76), if applicant intends to rely on the filing date of the prior application under 35 U.S.C. 119(e), 120, 121, or 365(c). See 37 CFR 1.78(a). For benefit claims under 35 U.S.C. 120, 121, or

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365(c), the reference must include the relationship (i.e., continua- tion, divisional, or continuation-in-part) of all nonprovisional applications.

If the application is a utility or plant application filed under 35 U.S.C. 111(a) on or after November 29, 2000, the specific refer- ence to the prior application must be submitted during the pen- dency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a utility or plant application which entered the national stage from an interna- tional application filed on or after November 29, 2000, after com- pliance with 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(2)(ii) and (a)(5)(ii). This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121 and 365(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable peti- tion to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e), 120, 121 and 365(c). The petition must be accom- panied by (1) the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78(a)(2) or (a)(5) to the prior application (unless previously submitted), (2) a surcharge under 37 CFR 1.17(t), and (3) a statement that the entire delay between the date the claim was due under 37 CFR 1.78(a)(2) or (a)(5) and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unin- tentional. The petition should be addressed to: Mail Stop Peti- tion, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

If the reference to the prior application was previously submit- ted within the time period set forth in 37 CFR 1.78(a), but not in the first sentence(s) of the specification or an application data sheet (ADS) as required by 37 CFR 1.78(a) (e.g., if the reference was submitted in an oath or declaration or the application trans- mitted letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 CFR 1.78(a) and the surcharge under 37 CFR 1.17(t) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78(a) by fil- ing an amendment to the first sentence(s) of the specification or an ADS. See MPEP § 201.11

Examiner Note: In a continued prosecution application (CPA) filed under 37

CFR 1.53(d), a specific reference in the first sentence(s) of the specification, or in an application data sheet, to the prior applica- tion is not required and may not be made. The specific reference requirement of 35 U.S.C. 120 is met by the transmittal request for the CPA which is considered to be part of the CPA. 37 CFR 1.53(d)(2)(iv) and (d)(7).

If the examiner is aware of a prior application he or she should note it in an Office action, as indicated

above, but should not require the applicant to call attention to the prior application.

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

F. Correcting or Adding a Benefit Claim After Filing

The Office will not grant a request for a corrected filing receipt to include a benefit claim unless the proper reference to the prior application is included in the first sentence(s) of the specification or an ADS within the time period required by 37 CFR 1.78(a) with a few exceptions. See subsection V., “TIME PERIOD FOR MAKING A CLAIM FOR BENEFIT UNDER 37 CFR 1.78(a)(2) AND (a)(5)”. If the proper reference was previously submitted, a copy of the amendment, the first page of the specification, or the ADS containing the benefit claim should be included with the request for a corrected filing receipt. The Office plans to notify applicants on or with the filing receipt that a benefit claim may not have been recognized because the benefit claim was improper but applicants are advised that only the benefit claims that are listed on the filing receipt have been recog- nized by the Office. Therefore, applicants should carefully and promptly review their filing receipts in order to avoid the need for a petition (37 CFR 1.78(a)(3) or (a)((6)) and the surcharge.

If a benefit claim is added after the time period required by 37 CFR 1.78(a), a petition and the sur- charge are required. See subsection V. “TIME PERIOD FOR MAKING A CLAIM FOR BENEFIT 37 CFR 1.78(a)(2) AND (a)(5).” Any petition under 37 CFR 1.78(a)(3) or (a)(6) must be accompanied by an amendment to the specification or an ADS unless the proper reference was previously submitted. In addition to the petition under 37 CFR 1.78 and the amendment or ADS, to add a benefit claim it may be necessary for applicant to file one of the following, depending on the status of the application:

(A) a request for continued examination (RCE) under 37 CFR 1.114, if the application is under a final rejection or has been allowed (see MPEP §706.07(h)). An amendment or ADS filed after final rejection or allowance is not entered as a matter of right and must be filed in compliance with 37 CFR 1.116 or 1.312, respectively; or

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(B) a reissue application or a request for a certifi- cate of correction under 37 CFR 1.323, if appropriate (see MPEP §§ 1402 and 1481), if the application has issued as a patent.

An incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date (see 35 U.S.C. 132(a)). If an incor- poration by reference statement is included in an amendment to the specification to add a benefit claim after the filing date of the application, the amendment would not be proper. When a benefit claim is submit- ted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement of the prior application unless an incorporation by reference statement of the prior application was presented upon filing of the applica- tion. See Dart Indus. v. Banner, 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980).

G. Deleting Benefit Claims

Effective June 8, 1995, Public Law 103-465 amended 35 U.S.C. 154 to change the term of a patent to 20 years measured from the filing date of the earli- est U.S. application for which benefit under 35 U.S.C. 120, 121, or 365(c) is claimed. The 20-year patent term applies to all utility and plant patents issued on applications filed on or after June 8, 1995. As a result of the 20-year patent term, it is expected, in certain circumstances, that applicants may cancel their claim to priority by amending the specification or submit- ting a new application data sheet (no supplemental declaration is necessary) to delete any references to prior applications.

The examiner should consider whether any new prior art may now be available if a benefit claim is deleted. If an applicant is submitting an amendment to the specification or an ADS to delete a benefit claim after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116 (see MPEP § 714.12 and § 714.13). If the amendment or ADS to delete a benefit claim is submitted after the applica- tion has been allowed, the amendment or ADS will be treated under 37 CFR 1.312 (see MPEP § 714.16). A deletion of a benefit claim will not delay the publica-

tion of the application unless the amendment or ADS is recognized by the Office within nine weeks prior to the projected publication date that was originally cal- culated based on the benefit claim.

A cancellation of a benefit claim to a prior applica- tion may be considered as a showing that the appli- cant is intentionally waiving the benefit claim to the prior application in the instant application. If the applicant later files a petition to accept an uninten- tionally delayed claim to add the benefit claim to the prior application in the same application from which the benefit claim was canceled, the Office may refuse to accept such benefit claim because the delay was not unintentional.

In a continued prosecution application (CPA) filed under 37 CFR 1.53(d), no amendment may delete the specific reference to a prior application assigned the same application number. (Note: In the CPA, the request is the specific reference required by 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to every application assigned the same application number identified in the request. Further, in a CPA, a specific reference in the first sentence(s) of the specification following the title, or in an application data sheet, to a prior applica- tion assigned the same application number is not required and should not be made.) The correction or entry of the data in the PALM data base can be made by technical support staff of the TC. Upon entry of the data, a new PALM bib-data sheet should be printed and placed in the file. See also MPEP § 707.05 and § 1302.09.

IV. SAME INVENTOR OR INVENTORS

The statute also requires that the applications claiming benefit of the earlier filing date under 35 U.S.C. 119(e) or 120 be filed by an inventor or inventors named in the previously filed application or provisional application. 37 CFR 1.78(a)(1) and (a)(4) require that each prior-filed application must name as an inventor at least one inventor named in the later- filed application and disclose the named inventor’s invention claimed in at least one claim of the later- filed application in the manner provided by the first paragraph of 35 U.S.C. 112.

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V. TIME PERIOD FOR MAKING A CLAIM FOR BENEFIT UNDER 37 CFR 1.78(a)(2) AND (a)(5)

The time period requirement under 37 CFR 1.78(a)(2) and (a)(5) is only applicable to utility or plant applications filed on or after November 29, 2000.

The American Inventors Protection Act of 1999 (AIPA), Public Law 106-113, amended 35 U.S.C. 119 and 120 to provide that the Office may set a time period for the filing of benefit claims and establish procedures to accept an unintentionally delayed bene- fit claim. The Office has implemented these statutory changes, in part, by amending 37 CFR 1.78 to include: (A) a time period within which a benefit claim to a prior nonprovisional or provisional applica- tion must be stated or it is considered waived; and (B) provisions for the acceptance of the unintentionally delayed submission of a claim to the benefit of a prior nonprovisional or provisional application.

If the application is a utility or plant application filed under 35 U.S.C. 111(a) on or after November 29, 2000, the benefit claim of the prior application under 35 U.S.C. 119(e), 120, 121, or 365(c) must be made during the pendency of the application and within the later of four months from the actual filing date of the later-filed application or sixteen months from the fil- ing date of the prior-filed application. If the applica- tion is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, the benefit claim must be made within the later of: (1) four months from the date on which the national stage commenced under 37 U.S.C. 371(b) or (f); or (2) sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(2)(ii) and (a)(5)(ii). This time period is not extendable and a failure to submit the reference required by 35 U.S.C. 119(e) and/or 120, where appli- cable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. 119(e), 120, 121 and 365(c).

If the reference required by 35 U.S.C. 120 and 37 CFR 1.78(a)(2) is not submitted within the required time period, a petition for an unintentionally delayed claim may be filed. The petition must be accompanied by: (A) the reference required by 35 U.S.C. 120 and 37 CFR 1.78(a)(2) to the prior application (unless previously submitted); (B) a sur-

charge under 37 CFR 1.17(t); and (C) a statement that the entire delay between the date the claim was due under 37 CFR 1.78(a)(2) and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. See 37 CFR 1.78(a)(3).

Likewise, if the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(5) is not submitted within the required time period, a petition for an unintention- ally delayed claim may be filed. The petition for an unintentionally delayed benefit claim must be submit- ted during the pendency of the nonprovisional appli- cation. The petition must be accompanied by: (A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78(a)(5) to the prior provisional application (unless previously submitted); (B) a surcharge under 37 CFR 1.17(t); and (C) a statement that the entire delay between the date the claim was due under 37 CFR 1.78(a)(5) and the date the claim was filed was unin- tentional. The Director may require additional infor- mation where there is a question whether the delay was unintentional. See 37 CFR 1.78(a)(6).

Petitions for an unintentionally delayed benefit claim should be forwarded to the Office of Petitions. See MPEP § 1002.02(b).

If an applicant includes a claim to the benefit of a prior application elsewhere in the application but not in the manner specified in 37 CFR 1.78(a)(2)(i) and (a)(2)(iii) or 37 CFR 1.78(a)(5)(i) and (a)(5)(iii) (e.g., if the benefit claim is included in an unexecuted oath or declaration or the application transmittal letter) within the time period set forth in 37 CFR 1.78(a)(2)(ii) or (a)(5)(ii), the Office will not require a petition and the surcharge under 37 CFR 1.17(t) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the applica- tion was recognized by the Office as shown by its inclusion on a filing receipt. This is because the appli- cation will have been scheduled for publication on the basis of such information concerning the benefit claim. Applicant must still submit the benefit claim in the manner specified in 37 CFR 1.78(a)(2)(i) and (a)(2)(iii) or 37 CFR 1.78(a)(5)(i) and (a)(5)(iii) (i.e., by an amendment in the first sentence(s) of the speci- fication or in an ADS) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the bene- fit of a prior application. If, however, an applicant

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includes a benefit claim elsewhere in the application and not in the manner specified in 37 CFR 1.78(a), and the claim is not recognized by the Office as shown by its absence on a filing receipt (e.g., if the benefit claim is in a part of the application where ben- efit claims are not conventionally located, such as the body of the specification), the Office will require a petition and the surcharge under 37 CFR 1.17(t) to correct the benefit claim. This is because the applica- tion will not have been scheduled for publication on the basis of the information concerning the benefit claim contained elsewhere in the application.

A petition under 37 CFR 1.78(a)(3) and the sur- charge would not be required for correcting a timely submitted benefit claim for the following situations:

(A) Changing the relationship of the applications (e.g., changing from “continuation” or “divisional” to “continuation-in-part” or from “continuation-in-part” to “continuation” or “divisional”);

(B) Changing the filing date of a prior-filed non- provisional or provisional application; and

(C) Changing a benefit claim of a prior-filed pro- visional application under 35 U.S.C. 120 (e.g., “This application is a continuation of prior-filed provisional application No. ---”) to a benefit claim of the same provisional application under 35 U.S.C. 119(e) (e.g., “This application claims the benefit of prior-filed pro- visional application No. ---”) during the pendency of the later-filed application. Note, however: If the later- filed application has issued as a patent, the correction cannot be made by a certificate of correction and would not be effective in a reissue application because the term of a patent is measured from the prior appli- cation’s filing date and removing the benefit claim under 35 U.S.C. 120, 121, or 365(c) would have the effect of lengthening the term of the patent.

If a benefit claim is filed after the required time period and without a petition as required by 37 CFR 1.78(a)(3) or (a)(6), the applicant should be informed that the benefit claim was not entered and that a peti- tion needs to be filed using form paragraph 2.39.

¶ 2.39 35 U.S.C. 119(e), 120, 121 or 365(c) Benefit Claim is Untimely

The benefit claim filed on [1] was not entered because the required reference was not timely filed within the time period set forth in 37 CFR 1.78(a)(2) or (a)(5). If the application is an appli- cation filed under 35 U.S.C. 111(a) on or after November 29, 2000, the reference to the prior application must be submitted dur-

ing the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the appli- cation is a nonprovisional application which entered the national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the reference to the prior application must be made during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(2)(ii) and (a)(5)(ii). If applicant desires the benefit under 35 U.S.C. [2] based upon a previously filed applica- tion, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(a)(3) or (a)(6). The petition must be accompanied by: (1) the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78(a)(2) or (a)(5) to the prior applica- tion (unless previously submitted); (2) a surcharge under 37 CFR 1.17(t); and (3) a statement that the entire delay between the date the claim was due under 37 CFR 1.78(a)(2) or (a)(5) and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexan- dria, Virginia 22313-1450.

Examiner Note: 1. Use this form paragraph only for utility or plant applications filed on or after November 29, 2000. 2. In bracket 1, insert the filing date of the amendment or paper containing the benefit claim. 3. In bracket 2, insert --119(e)--, --120--, --121--, or --365(c)--. 4. Do not use this form paragraph if the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78(a), but not in the first sentence(s) of the specification or in an application data sheet (ADS) as required by 37 CFR 1.78(a) (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the informa- tion concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt. In this situation, the petition under 37 CFR 1.78(a) and the surcharge under 37 CFR 1.17(t) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78(a) by filling an amendment to the first sentence(s) of the specification or an ADS, if the reference has not been previously submitted. See MPEP § 201.11.

VI. ENGLISH TRANSLATION

If benefit is being claimed to a provisional applica- tion which was filed in a language other than English, (A) an English language translation of the provisional application, and (B) a statement that the translation is accurate, are required to be filed * in the provisional application **. >If a nonprovisional application claims the benefit of the filing date of a non-English language provisional application, a translation of the

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provisional application and a statement that the trans- lation was accurate required by 37 CFR 1.78(a)(5)(iv) will not be required to be filed in the provisional application, if the translation and statement were filed in the nonprovisional application before November 25, 2005.< If the translation and statement were not * filed in the provisional application or >in< the non- provisional application >before November 25, 2005,< the applicant will be notified in the nonprovisional application and given a period of time within which to file the translation and statement >in the provisional application, and a reply in the nonprovisional applica- tion confirming that the translation and statement were filed in the provisional application. In the alter- native, applicant may reply to the notice by filing an amendment or a supplemental application data sheet (37 CFR 1.76(c)) withdrawing the benefit claim<. In a pending nonprovisional application, failure to timely reply to such notice will result in the abandonment of the nonprovisional application.

Form paragraph 2.38 may be used to notify appli- cant that an English translation of the non-English language provisional application is required. **>

¶ 2.38 Claiming Benefit to a Non-English Language Provisional Application

This application claims benefit to provisional application No. [1], filed on [2], in a language other than English. An English translation of the non-English language provisional application and a statement that the translation is accurate must be filed in provisional application No. [3]. See 37 CFR 1.78(a)(5). The [4] required by 37 CFR 1.78(a)(5) is missing. Accordingly, applicant must supply 1) the missing [5] in provisional application No. [6] and 2) in the present application, a confirmation that the transla- tion and statement were filed in the provisional application. If 1) and 2) are not filed (or the benefit claim withdrawn by the filing of an amendment or Supplemental Application Data Sheet) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78(a)(5)(iv).

Examiner Note: 1. Use this form paragraph to notify applicant that an English translation of the non-English language provisional application and/or a statement that the translation is accurate is required. Do not use this form paragraph if a translation of the provisional application and a statement that the translation was accurate were filed in the nonprovisional application (the present application) before November 25, 2005. 2. In brackets 1 and 3, insert the application number of the non- English language provisional application.

3. In bracket 2, insert the filing date of the prior provisional application. 4. In brackets 4 and 5, insert --English translation and a state- ment that the translation is accurate-- or --statement that the trans- lation is accurate--, where appropriate.

<

VII. THE PRIOR-FILED APPLICATION MUST BE ENTITLED TO A FILING DATE

If the prior-filed application is a nonprovisional application filed under 35 U.S.C. 111(a), the applica- tion must be entitled to a filing date as set forth in 35 CFR 1.53(b) or (d), and the basic filing fee as set forth in 37 CFR 1.16 must have been paid within the pendency of the application. See 37 CFR 1.78(a)(1). If the prior-filed application is an international appli- cation designating the United States of America, the prior-filed application must be entitled to a filing date in accordance with PCT Article 11. If the prior-filed application is a provisional application, the provi- sional application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee of the provisional application must have been paid within the time period set in 37 CFR 1.53(g) (the fil- ing fee is paid within the time period set in 37 CFR 1.53(g) if an extension of time was filed to make a response to a notice to file missing parts requiring the filing fee timely).

Form paragraph 2.40 may be used to notify appli- cant that the application is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee.

¶ 2.40 Prior-Filed Application Not Entitled to a Filing Date or Basic Filing Fee Was Not Paid

This application claims the benefit of prior-filed application No. [1] under 35 U.S.C. 120, 121, or 365(c) or under 35 U.S.C. 119(e). If the prior-filed application is an international application designating the United States of America, it must be entitled to a filing date in accordance with PCT Article 11. See 37 CFR 1.78(a)(1)(i). If the prior-filed application is a nonprovisional application, the prior-filed application must been entitled to a fil- ing date as set forth in 37 CFR 1.53(b) or 1.53(d) and include the basic filing fee set forth in 37 CFR 1.16. See 37 CFR 1.78(a)(1)(ii). If the prior-filed application is a provisional appli- cation, the prior-filed application must be entitled to a filing date as set forth in 37 CFR 1.53(c) and the basic filing fee must be paid within the time period set forth in 37 CFR 1.53(g). See 37 CFR 1.78(a)(4).

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This application is not entitled to the benefit of the prior-filed application because the prior-filed application [2]. Applicant is required to delete the reference to the prior-filed application.

Examiner Note: 1. Use this form paragraph to notify applicant that the applica- tion is not entitled to the benefit of the prior-filed application because the prior-filed application was not entitled to a filing date and/or did not include the basic filing fee. 2. In bracket 1, insert the application number of the prior-filed application. 3. In bracket 2, insert “was not entitled to a filing date”; “did not include the basic filing fee”; or “was not entitled to a filing date and did not include the basic filing fee”.

201.11(a) Filing of Continuation or Con- tinuation-in-Part Application During Pendency of Interna- tional Application Designating the United States [R-3]

It is possible to file a U.S. national application under 35 U.S.C. 111(a) and 37 CFR 1.53(b) during the pendency (prior to the abandonment) of an inter- national application which designates the United States without completing the requirements for enter- ing the national stage under 35 U.S.C. 371(c). See MPEP §1895. The ability to take such action is based on provisions of the United States patent law. 35 U.S.C. 363 provides that “An international appli- cation designating the United States shall have the effect from its international filing date under article 11 of the treaty, of a national application for patent regu- larly filed in the Patent and Trademark Office...”. 35 U.S.C. 371(d) indicates that failure to timely com- ply with the requirements of 35 U.S.C. 371(c) “shall be regarded as abandonment by the parties thereof...”. It is therefore clear that an international application which designates the United States has the effect of a pending U.S. application from the international appli- cation filing date until its abandonment as to the United States. The first sentence of 35 U.S.C. 365(c) specifically provides that “In accordance with the conditions and requirements of section 120 of this title,... a national application shall be entitled to the benefit of the filing date of a prior international appli- cation designating the United States.” The condition of 35 U.S.C. 120 relating to the time of filing requires the later application to be “filed before the patenting

or abandonment of or termination of proceedings on the first application...”.

DELAYED SUBMISSION OF BENEFIT CLAIM IN INTERNATIONAL APPLICATION

A petition under 37 CFR 1.78(a)(3) for accepting an unintentionally delayed benefit claim and the sur- charge under 37 CFR 1.17(t) are required to add a benefit claim under 35 U.S.C. 120 >and 365(c)< in an abandoned international application >designating the United States< filed on or after November 29, 2000, even when the international application did not enter the national stage under 35 U.S.C. 371. For example, when filing a “bypass” continuation application under 35 U.S.C. 111(a) that claims the benefit of an interna- tional application >designating the United States< with a filing date on or after November 29, 2000 that could have but did not claim the benefit of an earlier U.S. application, and the benefit claim is to be added to the international application, a petition under 37 CFR 1.78(a)(3) must be filed in the international application.

201.12 **Title >to an Application Claiming Benefit of an Earlier Application< [R-3]

**>The assignment records of the USPTO will only reflect an assignment of a divisional application or continuation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.< See MPEP § 306. When the assignment is in a provisional application, see MPEP § 306.01.

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

Under certain conditions and on fulfilling certain requirements, an application for patent filed in the United States may be entitled to the benefit of the fil- ing date of a prior application filed in a foreign coun- try, to overcome an intervening reference or for similar purposes. The conditions are specified in 35 U.S.C. 119(a)-(d) and (f)>, and 37 CFR 1.55<.

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

(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or

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

(b)(1) No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the appli- cation number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.

(2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed claim under this section.

(3) The Director may require a certified copy of the origi- nal foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.

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

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

*****

(f) Applications for plant breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) shall

have the same effect for the purpose of the right of priority under subsections (a) through (c) of this section as applications for pat- ents, subject to the same conditions and requirements of this sec- tion as apply to applications for patents.

*****

37 CFR 1.55. Claim for foreign priority. (a) An applicant in a nonprovisional application may claim

the benefit of the filing date of one or more prior foreign applica- tions under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).

(1)(i) In an original application filed under 35 U.S.C. 111(a), the claim for priority must be presented during the pen- dency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable. The claim must identify the foreign application for which priority is claimed, as well as any foreign application for the same subject matter and having a filing date before that of the application for which priority is claimed, by specifying the appli- cation number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply in an application under 35 U.S.C. 111(a) if the applica- tion is:

(A) A design application; or (B) An application filed before November 29, 2000. (ii) In an application that entered the national stage

from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT.

(2) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by the processing fee set forth in § 1.17(i), but the patent will not include the priority claim unless corrected by a certificate of cor- rection under 35 U.S.C. 255 and § 1.323

**> (3) The Office may require that the claim for priority and

the certified copy of the foreign application be filed earlier than provided in paragraphs (a)(1) or (a)(2) of this section:

(i) When the application becomes involved in an interference (see § 41.202 of this title),

(ii) When necessary to overcome the date of a refer- ence relied upon by the examiner, or

(iii) When deemed necessary by the examiner. (4)(i)An English language translation of a non-English

language foreign application is not required except: (A) When the application is involved in an interference

(see § 41.202 of this title), (B) When necessary to overcome the date of a refer-

ence relied upon by the examiner, or (C) When specifically required by the examiner.

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(ii) If an English language translation is required, it must be filed together with a statement that the translation of the certi- fied copy is accurate.<

*****

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

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

(A) The foreign application must be one filed in “a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States or in a WTO member country.”

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

(C) The application, or its earliest parent United States application under 35 U.S.C. 120, must have been filed within 12 months from the date of the earliest foreign filing in a “recognized” country as explained below.

(D) The foreign application must be for the same invention as the application in the United States.

(E) For an original application filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, the claim for priority must be presented during the pendency of the applica- tion, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable.

(F) For applications that entered the national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT Article and Regula- tions.

(G) In the case where the basis of the claim is an application for an inventor's certificate, the require- ments of 37 CFR 1.55(b) must also be met.

Applicant may be informed of possible priority rights under 35 U.S.C. 119(a)-(d) >and (f)< by using the wording of form paragraph 2.18.

¶ 2.18 Right of Priority Under 35 U.S.C. 119(a)-(d) and (f) Applicant is advised of possible benefits under 35 U.S.C.

119(a)-(d) and (f), wherein an application for patent filed in the United States may be entitled to the benefit of the filing date of a prior application filed in a foreign country.

I. RECOGNIZED COUNTRIES OF FOR- EIGN FILING

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

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

An application for patent filed in the United States on or after January 1, 1996, by any person who has, or whose legal representatives or assigns have, previ- ously filed an application for patent in Thailand shall have the benefit of the filing date in Thailand in accordance with 35 U.S.C. 119 and 172.

NOTE: Following is a list of countries with respect to which the right of priority referred to in 35 U.S.C. 119(a)-(d) has been recognized. The letter “I” follow-

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ing the name of the country indicates that the basis for priority in the case of these countries is the Paris Con- vention for the Protection of Industrial Property (613 O.G. 23, 53 Stat. 1748). The letter “P” after the name of the country indicates the basis for priority of these countries is the Inter-American Convention relating to Inventions, Patents, Designs, and Industrial Models, signed at Buenos Aires, August 20, 1910 (207 O.G. 935, 38 Stat. 1811). The letter “L” follow- ing the name of the country indicates the basis for pri- ority is reciprocal legislation in the particular country. The letter “W” following the name of the country indicates the basis for priority is membership in the World Trade Organization (WTO). See 35 U.S.C. 119(a). The letter “W°” indicates that the country became a WTO member after January 1, 1996. See http://www.wto.org/english/thewto_e/whatis_e/tif_e/ org6_e.htm for a current list of WTO member coun- tries along with their dates of membership. Applica- tions for plant breeder’s rights filed in WTO member countries and foreign UPOV contracting parties may be relied upon for priority pursuant to 35 U.S.C. 119(f) and MPEP Chapter 1600.

Albania (I, W°),

Algeria (I),

Angola (W°),

>Andorra (I),<

Antigua and Barbuda (I, W),

Argentina (I, W),

Armenia (I>, W°<),

Australia (I, W),

Austria (I, W),

Azerbaijan (I),

Bahamas (I),

Bahrain (I, W),

Bangladesh (I, W),

Barbados (I, W),

Belarus (I),

Belgium (I, W),

Belize (I, W),

Benin (I, W°),

Bhutan (I),

Bolivia (I, P, W),

Bosnia and Herzegovina (I),

Botswana (I, W),

Brazil (I, P, W),

Brunei Darussalam (W),

Bulgaria (I, W°),

Burkina Faso (I, W),

Burundi (I, W),

Cambodia (I>, W°<),

Cameroon (I, W),

Canada (I, W),

Central African Republic (I, W),

Chad (I, W°),

Chile (I, W),

China (I, W°),

Colombia (I, W),

>Comoros (I),<

Congo (I, W°),

Costa Rica (I, P, W),

Cote d’Ivoire (I, W),

Croatia (I, W°),

Cuba (I, P, W),

Cyprus (I, W),

Czech Republic (I, W),

Democratic People’s Republic of Korea (I),

Democratic Republic of the Congo (I, W°),

Denmark (I, W),

Djibouti (I, W),

Dominica (I, W),

Dominican Republic (I, P, W),

Ecuador (I, P, W°),

Egypt (I, W),

El Salvador (I, W),

Equatorial Guinea (I),

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Estonia (I, W°),

European Community (W),

Fiji (W°),

Finland (I, W),

France (I, W),

Gabon (I, W),

Gambia (I, W°),

Georgia (I, W°),

Germany (I, W),

Ghana (I, W),

Greece (I, W),

Grenada (I, W°),

Guatemala (I, P, W),

Guinea (I, W),

Guinea-Bissau (I , W),

Guyana (I, W),

Haiti (I, P, W°),

Holy See (I),

Honduras (I, P, W),

Hong Kong Special Administrative Region of China (I, W),

Hungary (I, W),

Iceland (I, W),

India (I, W),

Indonesia (I, W),

Iran (Islamic Republic of) (I),

Iraq (I),

Ireland (I, W),

Israel (I, W),

Italy (I, W),

Jamaica (I, W),

Japan (I, W),

Jordan (I, W°),

Kazakstan (I),

Kenya (I, W),

Kuwait (W),

Kyrgyzstan (I, W°),

Lao People’s Democratic Republic (I),

Latvia (I, W°),

Lebanon (I),

Lesotho (I, W),

Liberia (I),

Libya (I),

Libyan Arab Jamahiriya (I),

Liechtenstein (I, W),

Lithuania (I, W°),

Luxembourg (I, W),

Macau Special Administrative Region of China (I, W),

Madagascar (I, W),

Malawi (I, W),

Malaysia (I, W),

Maldives (W),

Mali (I, W),

Malta (I, W),

Mauritania (I, W),

Mauritius (I, W),

Mexico (I, W),

Monaco (I),

Mongolia (I, W°),

Morocco (I, W),

Mozambique (I, W),

Myanmar (W),

Namibia (I, W),

Nepal (I>, W°<),

Netherlands (I, W,),

New Zealand (I, W),

Nicaragua (I, P, W),

Niger (I, W°),

Nigeria (I, W),

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Norway (I, W),

Oman (I, PW°),

Pakistan (>I,< W),

Panama (I, W°),

Papua New Guinea (I, W°),

Paraguay (I, P, W),

Peru (I, W),

Philippines (I, W),

Poland (I, W),

Portugal (I, W),

Qatar (I, W°),

Republic of Korea (I, W),

Republic of Moldova (I, W°),

Romania (I, W),

Russian Federation (I),

Rwanda (I, W°),

Saint Kitts and Nevis (I, W°),

Saint Lucia (I, W),

Saint Vincent and the Grenadines (I, W),

San Marino (I),

Sao Tome and Principe (I),

Saudi Arabia (I)

Senegal (I, W),

Serbia and Montenegro (I)

Seychelles (I)

Sierra Leone (I, W),

Singapore (I, W),

Slovakia (I, W),

Slovenia (I, W),

Solomon Islands (W°),

South Africa (I, W),

Spain (I, W),

Sri Lanka (I, W),

Sudan (I),

Suriname (I, W),

Swaziland (I, W),

Sweden (I, W),

Switzerland (I, W),

Syrian Arab Republic (I),

Taiwan>, Province of China (Chinese Taipei)< (L, W°),

Tajikistan (I),

Tanzania, United Republic of (I, W),

Thailand (L, W),

The former Yugoslav Republic of Macedonia (I, W°),

Togo (I, W),

Tonga (I),

Trinidad and Tobago (I, W),

Tunisia (I, W),

Turkey (I, W),

Turkmenistan (I),

Uganda (I, W),

Ukraine (I),

United Arab Emirates (I, W°),

United Kingdom (I, W),

Uruguay (I, P, W),

Uzbekistan (I),

Venezuela (I, W),

Viet Nam (I),

Zambia (I, W),

Zimbabwe (I, W).

Sixteen African Countries have joined together to create a common patent office and to promulgate a common law for the protection of inventions, trade- marks, and designs. The common patent office is called “Organisation Africain de la Propriete Intellec- tuelle” (OAPI) and is located in Yaounde, Cameroon. The English title is “African Intellectual Property Organization.” The member countries using the OAPI Patent Office are Benin, Cameroon, Central African Republic, Chad, Congo, Gabon, Cote d’Ivoire, Mauri- tania, Niger, Senegal, Republic of Togo, Burkina Faso>,< Guinea, Guinea-Bissau, Mali and Equatorial

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Guinea. Since all these countries adhere to the Paris Convention for the Protection of Industrial Property, priority under 35 U.S.C. 119(a)-(d) may be claimed of an application filed in the OAPI Patent Office.

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

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

Under Article 4A of the Paris Convention for the Protection of Industrial Property a right of priority may be based either on an application filed under the national law of a foreign country adhering to the Con- vention or on a foreign application filed under a bilat- eral or multilateral treaty concluded between two or more such countries. Examples of such treaties are The Hague Agreement Concerning the International Deposit of Industrial Designs, the Benelux Designs Convention, and the Libreville Agreement of Septem- ber 13, 1962, relating to the creation of an African Intellectual Property Office. The Convention on the Grant of European Patents, the Patent Cooperation Treaty (MPEP § 201.13(b)), the Office for Harmoni- zation in the Internal Market (OHIM), and the Com- munity Plant Variety Office (CPVO) are further examples of such treaties.

A. The Priority Claim

A priority claim need not be in any special form and may be a statement signed by a registered attor- ney or agent. A priority claim can be made on filing: (A) by including a copy of an unexecuted or executed oath or declaration specifying a foreign priority claim (see 37 CFR 1.63(c)(2)); or (B) by submitting an application data sheet specifying a foreign priority claim (see 37 CFR 1.76).

In claiming priority of a foreign application previ- ously filed under such a treaty, certain information must be supplied to the U.S. Patent and Trademark Office. In addition to the application number and the date of the filing of the application, the following

information is required: (A) the name of the treaty under which the application was filed; and (B) the name and location of the national or intergovernmen- tal authority which received such application.

B. Certification of the Priority Papers

35 U.S.C. 119(b)(3) authorizes the Office to require the applicant to furnish a certified copy of priority papers. Applicants are required to submit the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 before the patent is granted. If the claim for priority or the certified copy of the for- eign application is filed after the date the issue fee is paid, it must be accompanied by the processing fee set forth in 37 CFR 1.17(i), but the patent will not include the priority claim unless corrected by a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323. See 37 CFR 1.55(a)(2). Certification by the authority empowered under a bilateral or multilateral treaty to receive applications which give rise to a right of prior- ity under Article 4A(2) of the Paris Convention will be deemed to satisfy the certification requirement.

C. Identity of Inventors

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

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claim the benefit of their foreign filed applications. See MPEP § 605.07.

D. Time for Filing U.S. Nonprovisional Applica- tion

The United States nonprovisional application, or its earliest parent nonprovisional application under 35 U.S.C. 120, must have been filed within 12 months of the earliest foreign filing. In computing this 12 months, the first day is not counted; thus, if an application was filed in Canada on January 3, 1983, the U.S. nonprovisional application may be filed on January 3, 1984. The Convention specifies in Article 4C(2) that “the day of filing is not counted in this period.” (This is the usual method of computing peri- ods, for example a 6-month period for reply to an Office action dated January 2 does not expire on July 1, but the reply may be made on July 2.) If the last day of the 12 months is a Saturday, Sunday, or Federal holiday within the District of Columbia, the U.S. non- provisional application is in time if filed on the next succeeding business day; thus, if the foreign application was filed on September 4, 1981, the U.S. nonprovisional application is in time if filed on Sep- tember 7, 1982, since September 4, 1982, was a Satur- day and September 5, 1982 was a Sunday and September 6, 1982 was a Federal holiday. Since Janu- ary 1, 1953, the Office has not received applications on Saturdays and, in view of 35 U.S.C. 21, and the Convention which provides “if the last day of the period is an official holiday, or a day on which the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day” (Article 4C(3)), if the 12 months expires on Saturday, the U.S. application may be filed on the following Monday. Note Ex parte Olah, 131 USPQ 41 (Bd. App. 1960). See, e.g., Dubost v. U.S. Patent and Trademark Office, 777 F.2d 1561, 1562, 227 USPQ 977, 977 (Fed. Cir. 1985).

E. Filing of Papers During Unscheduled Clos- ings of the U.S. Patent and Trademark Office

37 CFR 1.9(h) provides that the definition of “Fed- eral holiday within the District of Columbia” includes an official closing of the Office. When the entire U.S. Patent and Trademark Office is officially closed for business for an entire day, for reasons due to adverse

weather or other causes, the Office will consider each such day a “Federal holiday within the District of Columbia” under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addi- tion, 37 CFR 1.6(a)(1) provides “[t]he U.S. Patent and Trademark Office is not open for the filing of corre- spondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia” to clarify that any day that is a Saturday, Sunday or Fed- eral holiday within the District of Columbia is a day that the U.S. Patent and Trademark Office is not open for the filing of applications within the meaning of Article 4C(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holi- day within the District of Columbia, correspondence deposited as Express Mail with the USPS in accor- dance with 37 CFR 1.10 will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or Federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).

When the U.S. Patent and Trademark Office is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers are due on that day even though the Office may be officially closed for some period of time during the business day because of an unscheduled event. The procedures of 37 CFR 1.10 may be used for filing applications.

Information regarding whether or not the Office is officially closed on any particular day may be obtained by calling **>1-800-PTO-9199 or (571) 272-1000<.

F. First Foreign Application

The 12 months is from earliest foreign filing except as provided in 35 U.S.C 119(c). If an inventor has filed an application in France on January 4, 1982, and an identical application in the United Kingdom on March 3, 1982, and then files in the United States on February 2, 1983, the inventor is not entitled to the right of priority at all; the inventor would not be enti- tled to the benefit of the date of the French application since this application was filed more than twelve months before the U.S. application, and the inventor would not be entitled to the benefit of the date of the

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United Kingdom application since this application is not the first one filed. Ahrens v. Gray, 1931 C.D. 9, 402 O.G. 261 (Bd. App. 1929). If the first foreign application was filed in a country which is not recog- nized with respect to the right of priority, it is disre- garded for this purpose.

Public Law 87-333 modified 35 U.S.C. 119(c) to extend the right of priority to “subsequent” foreign applications if one earlier filed had been withdrawn, abandoned, or otherwise disposed of, under certain conditions.

The United Kingdom and a few other countries have a system of “post-dating” whereby the filing date of an application is changed to a later date. This “post-dating” of the filing date of the application does not affect the status of the application with respect to the right of priority; if the original filing date is more than one year prior to the U.S. filing no right of prior- ity can be based upon the application. See In re Clamp, 151 USPQ 423 (Comm’r Pat. 1966).

If an applicant has filed two foreign applications in recognized countries, one outside the year and one within the year, and the later application discloses additional subject matter, a claim in the U.S. applica- tion specifically limited to the additional disclosure would be entitled to the date of the second foreign application since this would be the first foreign appli- cation for that subject matter.

G. Incorporation by Reference

**>An applicant may incorporate by reference the foreign priority application by including, in the U.S. application-as-filed, an explicit statement that such specifically enumerated foreign priority application or applications are “hereby incorporated by reference.” The statement must appear in the specification. See 37 CFR 1.57(b) and MPEP § 608.01(p). For U.S. applications filed prior to September 21, 2004, the incorporation by reference statement may appear in the transmittal letter or in the specification. The inclu- sion of this statement of incorporation by reference of the foreign priority application will permit an appli- cant to amend the U.S. application to include subject matter from the foreign priority application(s), with- out raising the issue of new matter. Thus, the incorpo- ration by reference statement can be relied upon to

permit the entering of a portion of the foreign priority application into the U.S. application when a portion of the foreign priority application has been inadvertently omitted from the U.S. application, or to permit the correction of translation error in the U.S. application where the foreign priority application is in a non- English language.

For U.S. applications filed on or after September 21, 2004, a claim under 37 CFR 1.55 for priority of a prior-filed foreign application that was present on the filing date of the U.S. application is considered an incorporation by reference of the prior-filed foreign priority application as to inadvertently omitted mate- rial, subject to the conditions and requirements of 37 CFR 1.57(a). The purpose of 37 CFR 1.57(a) is to provide a safeguard for applicants when all or a por- tion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. For U.S. applications filed on or after September 21, 2004, applicants are encouraged to provide an explicit incor- poration by reference statement to the prior-filed for- eign priority application(s) for which priority is claimed under 37 CFR 1.55 if applicants do not wish the incorporation by reference to be limited to inad- vertently omitted material pursuant to 37 CFR 1.57(a). See 37 CFR 1.57(b) and MPEP § 608.01(p) for discussion regarding explicit incorporation by ref- erence.<

III. EFFECT OF RIGHT OF PRIORITY

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

The right of priority can be based upon an applica- tion in a foreign country for a so-called “utility model,” called Gebrauchsmuster in Germany.

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201.13(a) Right of Priority Based Upon an Application for an Inven- tor’s Certificate

37 CFR 1.55. Claim for foreign priority.

*****

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

*****

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

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

Accordingly, affidavits or declarations filed pursu- ant to 37 CFR 1.55(b) need only show that in the country in which the original inventor’s certificate was filed, applicants generally have the right to apply

at their own option either for a patent or an inventor’s certificate as to the particular subject matter of the invention.

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

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

Effective Date

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

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

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

(a) In accordance with the conditions and requirements of subsections (a) through (d) of section 119 of this title, a national application shall be entitled to the right of priority based on a prior filed international application which designated at least one coun- try other than the United States.

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

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

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

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

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

An international application which seeks to estab- lish the right of priority will have to comply with the conditions and requirements as prescribed by the Treaty and the PCT Regulations, in order to avoid rejection of the claim to the right of priority. Refer- ence is especially made to the requirement of making a declaration of the claim of priority at the time of fil- ing of the international application (Article 8(1) of the Treaty and Rule 4.10 of the PCT Regulations) and the requirement of either filing a certified copy of the pri-

ority document with the international application, or submitting a certified copy of the priority document to the International Bureau at a certain time (Rule 17 of the PCT Regulations). The submission of the priority document to the International Bureau is only required in those instances where priority is based on an earlier filed foreign national application.

Thus, if the priority document is an earlier national application and did not accompany the international application when filed with the Receiving Office, an applicant must submit such document to the Interna- tional Bureau not later than 16 months after the prior- ity date. However, should an applicant request early processing of his or her international application in accordance with Article 23(2) of the Treaty, the prior- ity document would have to be submitted to the Inter- national Bureau at that time (Rule 17.1(a) of the PCT Regulations). If priority is based on an earlier interna- tional application, a copy does not have to be filed, either with the Receiving Office or the International Bureau, since the latter is already in possession of such international application.

The formal requirements for obtaining the right of priority under 35 U.S.C. 365 differ somewhat from those imposed by 35 U.S.C. 119(a)-(d) and (f), although the 1-year bar of 35 U.S.C. 102(b), as required by the last clause of section 119(a) is the same. However, the substantive right of priority is the same, in that it is derived from Article 4 of the Paris Convention for the Protection of Industrial Property (Article 8(2) of the Treaty).

35 U.S.C. 365(c) recognizes the benefit of the filing date of an earlier application under 35 U.S.C. 120. Any international application designating the United States, whether filed with a Receiving Office in this country or abroad, and even though other countries may have also been designated, has the effect of a reg- ular national application in the United States, as of the international filing date. As such, any later filed national application, or international application des- ignating the United States, may claim the benefit of the filing date of an earlier international application designating the United States, if the requirements and conditions of section 120 of title 35 U.S.C. are ful- filled. Under the same circumstances, the benefit of the earlier filing date of a national application may be obtained in a later filed international application des- ignating the United States. In those instances, where

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the applicant relies on an international application designating, but not originating in, the United States the *>Director< may require submission of a copy of such application together with an English translation, since in some instances, and for various reasons, a copy of that international application or its translation may not otherwise be filed in the U.S. Patent and Trademark Office.

PCT Rule 17. The Priority Document

17.1. Obligation to Submit Copy of Earlier National or International Application

**> (a) Where the priority of an earlier national or international

application is claimed under Article 8, a copy of that earlier appli- cation, certified by the authority with which it was filed (“the pri- ority document”), shall, unless that priority document has already been filed with the receiving Office together with the international application in which the priority claim is made, and subject to paragraphs (b) and (bbis), be submitted by the applicant to the International Bureau or to the receiving Office not later than 16 months after the priority date, provided that any copy of the said earlier application which is received by the International Bureau after the expiration of that time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the date of international publication of the inter- national application.

(b) Where the priority document is issued by the receiving Office, the applicant may, instead of submitting the priority docu- ment, request the receiving Office to prepare and transmit the pri- ority document to the International Bureau. Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office to the payment of a fee.

(bbis)Where the priority document is, in accordance with the Administrative Instructions, available to the receiving Office or to the International Bureau from a digital library, the applicant may, as the case may be, instead of submitting the priority document:

(i) request the receiving Office to obtain the priority doc- ument from such digital library and transmit it to the International Bureau; or

(ii) request the International Bureau to obtain the priority document from such digital library.

Such request shall be made not later than 16 months after the priority date and may be subjected by the receiving Office or the International Bureau to the payment of a fee.

(c) If the requirements of none of the three preceding para- graphs are complied with, any designated Office may, subject to paragraph (d), disregard the priority claim, provided that no desig- nated Office shall disregard the priority claim before giving the applicant an opportunity to furnish the priority document within a time limit which shall be reasonable under the circumstances.

(d) No designated Office shall disregard the priority claim under paragraph (c) if the earlier application referred to in para-

graph (a) was filed with it in its capacity as national Office or if the priority document is, in accordance with the Administrative Instructions, available to it from a digital library.<

17.2. Availability of Copies

**> (a) Where the applicant has complied with Rule 17.1(a), (b)

or (bbis), the International Bureau shall, at the specific request of the designated Office, promptly but not prior to the international publication of the international application, furnish a copy of the priority document to that Office. No such Office shall ask the applicant himself to furnish it with a copy. The applicant shall not be required to furnish a translation to the designated Office before the expiration of the applicable time limit under Article 22. Where the applicant makes an express request to the designated Office under Article 23(2) prior to the international publication of the international application, the International Bureau shall, at the specific request of the designated Office, furnish a copy of the pri- ority document to that Office promptly after receiving it.<

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

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

(i) the international application was withdrawn, (ii) the relevant priority claim was withdrawn or consid-

ered, under Rule 26bis.2(b), not to have been made. (iii)[Deleted]

(d) [Deleted]

37 CFR 1.451. The priority claim and priority document in an international application.

(a) The claim for priority must, subject to paragraph (d) of this section, be made on the Request (PCT Rule 4.10) in a manner complying with sections 110 and 115 of the Administrative Instructions.

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

(c) If a certified copy of the priority document is not submit- ted together with the international application on filing, or, if the priority application was filed in the United States and a request and appropriate payment for preparation of such a certified copy do not accompany the international application on filing or are not filed within 16 months of the priority date, the certified copy of the priority document must be furnished by the applicant to the

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International Bureau or to the United States Receiving Office within the time limit specified in PCT Rule 17.1(a).

(d) The applicant may correct or add a priority claim in accordance with PCT Rule 26bis.1.

201.14 Right of Priority, Formal Re- quirements [R-5]

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

For nonprovisional applications filed prior to November 29, 2000, the requirements of the statute are (a) that the applicant must file a claim for the right and (b) he or she must also file a certified copy of the original foreign application; these papers must be filed within a certain time limit. The maximum time limit specified in the statute is that the claim for prior- ity and the priority papers must be filed before the patent is granted, but the statute gives the Director authority to set this time limit at an earlier time during the pendency of the application.

Where a claim for priority under 35 U.S.C. 119(b) has not been made in the parent application, the claim for priority may be made in a **>continuing applica- tion< provided the parent application has been filed within 12 months from the date of the earliest foreign filing. **>See In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). If the claim for priority and the certified copy of the priority document are not filed in the continuing application within the time period set in 37 CFR 1.55,< the right of priority is lost. A reissue was granted in Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968), where the only ground urged was failure to file a certified copy of the original foreign application to obtain the right of for- eign priority under 35 U.S.C. 119 before the patent was granted.

It should be particularly noted that these papers must be filed in all cases even though they may not be necessary during the pendency of the application to overcome the date of any reference. The statute also gives the Director authority to require a translation of the foreign documents if not in the English language and such other information as the Director may deem necessary.

For original applications filed under 35 U.S.C.111(a) (other than a design application) on or after November 29, 2000, the requirements of the statute are that the applicant must (a) file a claim for the right of priority and (b) identify the original for- eign application by specifying the application number of the foreign application, the intellectual property authority or country in which the application was filed and the date of filing of the application. These papers must be filed within a certain time limit. The time limit specified in 35 U.S.C.119(b)(1) is that the claim for priority and the required identification information must be filed at such time during the pendency of the application as set by the Director. The Director has by rule set this time limit as the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign appli- cation. See 37 CFR 1.55(a)(1)(i). This time period is not extendable. In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT. See 37 CFR 1.55(a)(1)(ii). Claims for foreign priority not pre- sented within the time period specified in 37 CFR 1.55(a)(1)(i) are considered to have been waived. If a claim for priority under 35 U.S.C.119(a) - (d) or (f), or 365(a) is presented after the time period set in 37 CFR 1.55(a)(1)(i), the claim may be accepted if it includes the required identification information and is accom- panied by a grantable petition to accept the uninten- tionally delayed claim for priority. See 37 CFR 1.55(c). In addition, 35 U.S.C. 119(b)(3) gives the Director authority to require a certified copy of the foreign application and an English translation if the foreign application is not in the English language and such other information as the Director may deem nec- essary. The Director has by rule, 37 CFR 1.55(a)(2), required a certified copy of the foreign application to be submitted before the patent is granted. If the certi- fied copy of the foreign application is submitted after the payment of the issue fee, it must be accompanied by the processing fee set forth in 37 CFR 1.17(i). See MPEP § 201.14(a).

Unless provided in an application data sheet, 37 CFR 1.63 requires that the oath or declaration must identify the foreign application for patent or inven-

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tor’s certificate for which priority is claimed under 37 CFR 1.55, and any foreign applications having a filing date before that of the application on which pri- ority is claimed, by specifying the application num- ber, country, day, month, and year of its filing.

201.14(a) Right of Priority, Time for Filing Papers [R-3]

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

37 CFR 1.55. Claim for foreign priority. (a) An applicant in a nonprovisional application may claim

the benefit of the filing date of one or more prior foreign applica- tions under the conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, and 365(a) and (b).

(1)(i) In an original application filed under 35 U.S.C. 111(a), the claim for priority must be presented during the pen- dency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. This time period is not extendable. The claim must identify the foreign application for which priority is claimed, as well as any foreign application for the same subject matter and having a filing date before that of the application for which priority is claimed, by specifying the appli- cation number, country (or intellectual property authority), day, month, and year of its filing. The time periods in this paragraph do not apply in an application under 35 U.S.C. 111(a) if the applica- tion is:

(A)A design application; or (B)An application filed before November 29, 2000.

(ii) In an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT.

(2) The claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted. If the claim for priority or the certified copy of the foreign application is filed after the date the issue fee is paid, it must be accompanied by the processing fee set forth in § 1.17(i), but the patent will not include the priority claim unless corrected by a certificate of cor- rection under 35 U.S.C. 255 and § 1.323

**> (3) The Office may require that the claim for priority and

the certified copy of the foreign application be filed earlier than provided in paragraphs (a)(1) or (a)(2) of this section:

(i) When the application becomes involved in an interference (see § 41.202 of this title),

(ii) When necessary to overcome the date of a refer- ence relied upon by the examiner, or

(iii) When deemed necessary by the examiner. (4)(i)An English language translation of a non-English

language foreign application is not required except:

(A)When the application is involved in an interfer- ence (see § 41.202 of this title),

(B)When necessary to overcome the date of a refer- ence relied upon by the examiner, or

(C)When specifically required by the examiner. (ii) If an English language translation is required, it

must be filed together with a statement that the translation of the certified copy is accurate.<

*****

(c) Unless such claim is accepted in accordance with the provisions of this paragraph, any claim for priority under 35 U.S.C. 119(a)-(d) or 365(a) not presented within the time period provided by paragraph (a) of this section is considered to have been waived. If a claim for priority under 35 U.S.C. 119(a)-(d) or 365(a) is presented after the time period provided by paragraph (a) of this section, the claim may be accepted if the claim identifying the prior foreign application by specifying its application number, country (or intellectual property authority), and the day, month, and year of its filing was unintentionally delayed. A petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or 365(a) must be accompanied by:

(1) The claim under 35 U.S.C. 119(a)-(d) or 365(a) and this section to the prior foreign application, unless previously sub- mitted;

(2) The surcharge set forth in § 1.17(t); and (3) A statement that the entire delay between the date the

claim was due under paragraph (a)(1) of this section and the date the claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.

It should first be noted that the Director has by rule specified an earlier ultimate date than the date the patent is granted for filing a claim and a certified copy. For original applications filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, a claim for foreign priority must be presented during the pendency of the application, and within the later of four months from the actual fil- ing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(a)(1)(i). This time period is not extend- able. For applications that entered the national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT. Any foreign priority claim not presented within the time period set in 37 CFR 1.55(a)(1)(i) is consid- ered to have been waived. If a claim for foreign prior- ity is presented after the time period set in 37 CFR 1.55(a)(1)(i), the claim may be accepted if the claim

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properly identifies the prior foreign application and is accompanied by a grantable petition to accept an unintentionally delayed claim for priority. A grantable petition to accept an unintentionally delayed claim for priority must include: (1) the claim (i.e., the claim required by 35 U.S.C. 119(a)-(d) and (f) and 37 CFR 1.55) for priority to the prior foreign application, unless previously submitted; (2) the surcharge set forth in 37 CFR 1.17(t); and (3) a statement that the entire delay between the date the claim was due under 37 CFR 1.55(a)(1) and the date the claim was filed was unintentional. The Director may require addi- tional information where there is a question whether the delay was unintentional. See 37 CFR1.55(c).

For nonprovisional applications filed prior to November 29, 2000 and for design applications, a claim for foreign priority may be made up until the time when the patent is granted. Priority claims and certified copies of foreign applications filed after pay- ment of the issue fee will be placed in the application file but will not be reviewed, as explained in further detail below.

For all applications, assuming the claim for foreign priority has been made, the latest time at which the papers may be filed without a processing fee (37 CFR 1.17(i)) is the date of the payment of the issue fee, except that, under certain circumstances, they are required at an earlier date. These circumstances are specified in the rule as:

(A) in the case of interferences in which event the papers must be filed within the time specified in the interference rules;

(B) when necessary to overcome the date of a ref- erence relied on by the examiner; and

(C) when specifically required by the examiner.

The claim for foreign priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted. If the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the priority claim or certified copy must be accompanied by a processing fee set forth in 37 CFR 1.17(i). The prior- ity claim or certified copy will be placed in the file record but there will be no review of the papers and the patent when published will not include the priority

claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C. 111(a) (other than a design applica- tion) on or after November 29, 2000, a grantable peti- tion to accept an unintentionally delayed claim for priority under 37 CFR 1.55(c) must also be filed with the certificate of correction.

In view of the shortened periods for prosecution leading to allowances, it is recommended that priority papers be filed as early as possible. Although 37 CFR 1.55(a)(2) permits the filing of priority papers up to and including the date for payment of the issue fee, it is advisable that such papers be filed promptly after filing the application. Frequently, priority papers are found to be deficient in material respects, such as for example, the failure to include the correct certified copy, and there is not sufficient time to remedy the defect. Occasionally, a new oath or declaration may be necessary where the original oath or declaration omits the reference to the foreign filing date for which the benefit is claimed. The early filing of priority papers would thus be advantageous to applicants in that it would afford time to explain any inconsisten- cies that exist or to supply any additional documents that may be necessary.

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

If the priority claim in an original application filed under 35 U.S.C. 111(a) (other than a design applica- tion) on or after November 29, 2000 is submitted after the time period set forth in 37 CFR 1.55(a)(1) and without the required petition (37 CFR 1.55(c)), the examiner may use the following form paragraph to

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inform applicant that the foreign priority claim will not be entered.

¶ 2.21.01 35 U.S.C. 119(a)-(d) or (f) or 365(a) Foreign Priority Claim is Untimely

The foreign priority claim filed on [1] was not entered because the foreign priority claim was not filed during the time period set forth in 37 CFR 1.55(a)(1). For original applications filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, the time period is during the pendency of the application and within the later of four months from the actual fil- ing date of the application or sixteen months from the filing date of the prior foreign application. For applications that have entered national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the appli- cation and within the time limit set forth in the PCT and the Regu- lations under the PCT. See 37 CFR 1.55(a)(1)(ii). If applicant desires priority under 35 U.S.C. 119(a)-(d), (f) or 365(a) based upon a prior foreign application, applicant must file a petition for an unintentionally delayed priority claim (37 CFR 1.55(c)). The petition must be accompanied by (1) the claim (i.e., the claim required by 35 U.S.C. 119(a)-(d) and (f) and 37 CFR 1.55) for pri- ority to the prior foreign application, unless previously submitted; (2) a surcharge under 37 CFR 1.17(t); and (3) a statement that the entire delay between the date the claim was due under 37 CFR 1.55(a)(1) and the date the claim was filed was unintentional. The Director may require additional information where there is a ques- tion whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.

Examiner Note: 1. Use this form paragraph only for original applications filed under 35 U.S.C. 111(a) on or after November 29, 2000. DO NOT use for design applications. 2. In bracket 1, insert the date the amendment or paper contain- ing the foreign priority claim was filed.

201.14(b) Right of Priority, Papers Required [R-2]

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

The papers required are the claim for priority and the certified copy of the foreign application. For origi- nal applications filed under 35 U.S.C. 111(a) (other

than design applications) on or after November 29, 2000, the claim for foreign priority must identify the foreign application for which priority is claimed by specifying the application number, country (or intel- lectual property authority), day, month, and year of its filing. In addition, the claim for priority must also identify any foreign application for the same subject matter having a filing date before that of the foreign application for which priority is claimed.

For all applications, the claim to priority need be in no special form, and may be made by a person autho- rized to sign correspondence under 37 CFR1.33(b). No special language is required in making the claim for priority, and any expression which can be reason- ably interpreted as claiming the benefit of the foreign application is accepted as the claim for priority. The claim for priority may appear in the oath or declara- tion, an application data sheet (37 CFR1.76), or the application transmittal letter with the recitation of the foreign application. See MPEP § 201.13, paragraph A.

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

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

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of the foreign filing date on the basis of the disclosure thereof. In addition, for original applications filed under 35 U.S.C. 111(a) (other than design applica- tions) on or after November 29, 2000, the examiner should make sure that the claim for foreign priority is timely. Examiners may use form paragraph 2.21.01 to notify applicant that the foreign priority claim is untimely. >

I. < DURING INTERFERENCE

If priority papers are filed in an interference, it is not necessary to file an additional certified copy in the application file. The administrative patent judge will *>associate< them *>with< the application *. >

II. < LATER FILED APPLICATIONS, REIS- SUES

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

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

¶ 2.20 Priority Papers in Parent or Related (Reissue Situation) - Application

Applicant is reminded that in order for a patent issuing on the instant application to obtain the benefit of priority based on prior- ity papers filed in parent or related Application No. [1] under 35

U.S.C. 119(a)-(d) or (f), a claim for such foreign priority must be timely made in this application. To satisfy the requirement of 37 CFR 1.55(a)(2) for a certified copy of the foreign application, applicant may simply identify the application containing the certi- fied copy.

< Where the benefit of a foreign filing date, based on

a foreign application, is claimed in a later filed appli- cation or in a reissue application and a certified copy of the foreign application, as filed, has not been filed in a parent or related application, a claim for priority may be made in the later application. In re Tangsrud, 184 USPQ 746 (Comm’r Pat. 1973). When such a claim is made in the later application and a certified copy of the foreign application is placed therein, the examiner should acknowledge the claim on form PTOL-326. Note copy in MPEP § 707. >

III. < WHERE AN ACTUAL MODEL WAS ORIGINALLY FILED IN GERMANY

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

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

Article 4, section A(2) of the Paris Convention however states that “(a)ny filing that is equivalent to a regular national filing under the domestic legislation of any country of the Union . . . shall be recognized as giving rise to the right of priority.” Article 4D(3) of

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the Convention further provides that countries of the Union may require any person making a declaration of priority to produce a copy of the previously filed application (description, drawings, etc.) certified as correct by the authority which received this applica- tion.

As far as the physical production of a copy of the earlier filed paper application is concerned, an appli- cant should have no difficulty in providing a copy, certified by the authority which received it, if the ear- lier filed application contained drawings illustrating the design. A problem, however, arises when the only prior “regular national filing” consisted of the deposit of an actual model of the design. 35 U.S.C. 119 is silent on this subject.

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

35 U.S.C. 119(a)-(d), prior to amendment by the American Inventors Protection Act of 1999 (AIPA), Public Law 106-113, provides for the certification of the earlier filed application by the patent office of the foreign country in which it was filed. Because Article 4D(3) of the Paris Convention which 35 U.S.C. 119(a)-(d) implements refers to certification “. . . by the authority which received such application . . .”, the reference to “patent office” in the statute is con- strued to extend also to the authority which is in charge of the design register, i.e., the applicable Ger- man court. As a consequence, an additional certifica- tion by the German Patent Office will not be necessary especially since Article 4D(3) of the Paris Convention provides that authentication shall not be required. Effective November 29, 2000, the AIPA amended 35 U.S.C. 119(b)(3) to state that certification “…shall be made by the foreign intellectual property authority in which the foreign application was filed.” 35 U.S.C. 119(b)(3) as amended by the AIPA applies to applications filed under 35 U.S.C 111(a) and inter- national applications complying with 35 U.S.C. 371, with filing dates on or after November 29, 2000.

Although, as stated above, a “regular national filing” gives rise to the right of priority, the mere

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

201.14(c) Right of Priority, Practice [R-3]

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

I. UNTIMELY CLAIM FOR PRIORITY

If the foreign priority claim in an original applica- tion filed under 35 U.S.C.111(a) (other than a design application) on or after November 29, 2000 is submit- ted after the time period set in 37 CFR 1.55(a)(1)(i) and without a petition under 37 CFR 1.55(c), the examiner may use form paragraph 2.21.01 to notify applicant that the foreign priority claim will not be entered.

II. NO IRREGULARITIES AND PRIORITY CLAIM TIMELY

When the papers under 35 U.S.C. 119(a)-(d) are received within the time period set forth in 37 CFR 1.55(a)(1), if applicable, they are **>entered into the application file history.< Assuming that the papers are timely and regular in form and that there are no irreg- ularities in dates, the examiner in the next Office action will advise the applicant that the papers have been received on form PTOL-326 or by use of form paragraph 2.26. For Image File Wrapper (IFW) pro- cessing, see the IFW Manual.

¶ 2.26 Claimed Foreign Priority - Papers Filed Receipt is acknowledged of papers submitted under 35 U.S.C.

119(a)-(d), which papers have been placed of record in the file.

Where the priority papers have been filed in another application, use form paragraph 2.27.

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¶ 2.27 Acknowledge Foreign Priority Paper in Parent Acknowledgment is made of applicant’s claim for foreign pri-

ority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. [1], filed on [2].

Examiner Note: 1. For problems with foreign priority, see form paragraphs 2.18 to 2.24. 2. In bracket 1, insert series code and serial no. of parent.

The examiner will enter the information specified in MPEP § 202.03 on the face of the file wrapper or on the PALM bib-data sheet*>,< as appropriate.

III. PAPERS INCONSISTENT WITH A TIME- LY PRIORITY CLAIM

If the certified copy filed does not correspond to the foreign application identified in the application oath or declaration or an application data sheet, or if the application oath or declaration or an application data sheet does not refer to the particular foreign applica- tion, the applicant has not complied with the require- ments of the rule relating to the oath or declaration. In such instances, the Office action, after acknowledging receipt of the papers, should require the applicant to explain the inconsistency and to file a new oath or declaration or an application data sheet stating cor- rectly the facts concerning foreign applications required by 37 CFR 1.63 by using form paragraph 2.21.

¶ 2.21 Oath, Declaration, or Application Data Sheet Does Not Contain Reference to Foreign Filing

Receipt is acknowledged of papers filed under 35 U.S.C. 119(a)-(d) based on an application filed in [1] on [2]. Applicant has not complied with the requirements of 37 CFR 1.63(c), since the oath, declaration, or application data sheet does not acknowl- edge the filing of any foreign application. A new oath, declara- tion, or application data sheet is required in the body of which the present application should be identified by application number and filing date.

Other situations requiring some action by the exam- iner are exemplified by other form paragraphs.

IV. NO CLAIM FOR PRIORITY

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

¶ 2.22 Certified Copy Filed, But No Claim Made Receipt is acknowledged of a certified copy of the [1] applica-

tion referred to in the oath or declaration or in an application data sheet. If this copy is being filed to obtain the benefits of the for- eign filing date under 35 U.S.C. 119(a)-(d), applicant should also file a claim for such priority as required by 35 U.S.C. 119(b). If the application being examined is an original application filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, the claim for priority must be presented during the pendency of the application, and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior foreign application. See 37 CFR 1.55(a)(1)(i). If the application being examined has entered the national stage from an international application filed on or after November 29, 2000, after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and Regulations of the PCT. See 37 CFR 1.55(a)(1)(ii). Any claim for priority under 35 U.S.C. 119(a)-(d) or (f) or 365(a) or (b) not presented within the time period set forth in 37 CFR 1.55(a)(1) is considered to have been waived. If a claim for foreign priority is presented after the time period set forth in 37 CFR 1.55(a)(1), the claim may be accepted if the claim properly identifies the prior foreign application and is accompanied by a grantable petition to accept an unintentionally delayed claim for priority. See 37 CFR 1.55(c).

Examiner Note: In bracket 1, insert the application number of the foreign appli-

cation.

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

V. FOREIGN APPLICATIONS ALL FILED MORE THAN A YEAR BEFORE EARLI- EST EFFECTIVE U.S. FILING

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

¶ 2.23 Foreign Filing More Than 12 Months Earlier Acknowledgment is made of applicant's claim for priority

under 35 U.S.C. 119(a)-(d) based upon an application filed in [1] on [2]. A claim for priority under 35 U.S.C. 119(a)-(d) cannot be based on said application, since the United States application was filed more than twelve months thereafter.

Examiner Note: 1. In bracket 1, insert the country name. 2. In bracket 2, insert the filing date of the foreign application.

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VI. SOME FOREIGN APPLICATIONS FILED MORE THAN A YEAR BEFORE U.S. FIL- ING

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

VII. CERTIFIED COPY NOT THE FIRST FOR- EIGN APPLICATION

Form paragraph 2.24 may be used to notify appli- cant that the date for which foreign priority is claimed is not the date of the first filed foreign application acknowledged in the oath or declaration.

¶ 2.24 Claimed Foreign Priority Date Not the Earliest Date

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

VIII. NO CERTIFIED COPY

Where priority is claimed but no certified copy of the foreign application has been filed, use form para- graph 2.25.

¶ 2.25 Claimed Foreign Priority, No Papers Filed Acknowledgment is made of applicant's claim for foreign pri-

ority based on an application filed in [1] on [2]. It is noted, how- ever, that applicant has not filed a certified copy of the [3] application as required by 35 U.S.C. 119(b).

Examiner Note: 1. In bracket 1, insert the country name. 2. In bracket 2, insert the filing date of the foreign application.

3. In bracket 3, insert the application number of the foreign application.

Any unusual situation may be referred to the Tech- nology Center (TC) Director.

IX. APPLICATION IN ISSUE

When priority papers for applications which have been sent to the Publishing Division are received, the priority papers should be sent to the Publishing Divi- sion. For Image File Wrapper (IFW) processing, see the IFW Manual.

When the claim for foreign priority or the certified copy of the foreign application is filed after the date of payment of the issue fee but prior to the date of grant of the patent, the priority claim or certified copy must be accompanied by a processing fee set forth in 37 CFR 1.17(i). The priority claim or certified copy will be placed in the file record but there will be no review of the papers and the patent when published will not include the priority claim. A certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 can be filed to have the priority claim or certified copy considered after publication of the patent. In addition, for original applications filed under 35 U.S.C.111(a) (other than design applications) on or after November 29, 2000, a grantable petition to accept an uninten- tionally delayed claim for priority under 37 CFR 1.55(c) must be filed with the certificate of correction.

X. RETURN OF PAPERS

For Image File Wrapper (IFW) processing, see the IFW Manual. It is sometimes necessary for the exam- iner to return papers filed under 35 U.S.C. 119(a)-(d) either upon request of the applicant, for example, to obtain a translation of the certified copy of the foreign application, or because they fail to meet a basic requirement of the statute, such as where all foreign applications were filed more than a year prior to the U.S. filing date.

When the papers have not been **>entered into the application file history<, it is not necessary to secure approval of the Director of the United States Patent and Trademark Office for their return but they should be sent to the TC Director for cancellation of the Office stamps. Where the papers have been **>entered into the application file history,< a request for permission to return the papers should be addressed to the Director of the United States Patent

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and Trademark Office and forwarded to the TC Direc- tor for approval. Where the return is approved, the written approval should be **>entered into the appli- cation file history.< Any questions relating to the return of papers filed under 35 U.S.C. 119(a)-(d) should be directed to the Office of the Commissioner for Patents.

XI. **>NOTATION IN FILE HISTORY RE- GARDING FOREIGN PRIORITY AP- PLICATION<

For Image File Wrapper (IFW) processing, see the IFW Manual. Where foreign applications are listed on the 37 CFR 1.63 oath or declaration or application data sheet, the examiner should check that such for- eign applications are properly listed on the **>PALM bib-data sheet<, correcting errors of typography or format as necessary, and initialing the “verified” line when the information on the **>PALM bib-data sheet< matches the oath or declaration or application data sheet. See MPEP § 202.03. Should there be an error on the oath or declaration, or application data sheet itself, the examiner should require a new oath or declaration, or application data sheet, where appropri- ate. If a foreign application listed on the oath or decla- ration, or application data sheet is not listed on the **>PALM bib-data sheet, the examiner should pro- vide the information regarding the foreign application number, the country, and the filing date on the PALM bib-data sheet and forward the marked-up PALM bib- data sheet to the Legal Instrument Examiner for cor- rection in the Office computer systems.< Applications listed on the **>PALM bib-data sheet< but filed in countries not qualifying for benefits under 35 U.S.C. 119(a)-(d) should be lined through in * ink. A listing of countries qualifying for benefits under 35 U.S.C. 119(a)-(d) appears at MPEP § 201.13.

**

201.14(d) Proper Identification of Priori- ty Application

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

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

Proper identification of priority applications is essential to establishing accurate and complete rela- tionships among various patent documents which reflect the same invention. Knowledge of these rela- tionships is essential to search file management, tech- nology documentation and various other purposes.

The tables show the forms of presentation of appli- cation numbers as used in the records of the source or originating patent office. They also show, under the heading “Minimum Significant Part of the Number,” the simplified form of presentation which should be used in United States Patent and Trademark Office records.

Note particularly that in the simplified format that:

(A) Alpha symbols preceding numerals are elimi- nated in all cases except Hungary.

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

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

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200-93 Rev. 5, Aug. 2006

Table I—Countries Using Annual Application Number Series

MINIMUM SIGNIFICANT PART OF AN APPLICATION NUMBER PROVIDING UNIQUE IDENTIFI- CATION OF AN APPLICATION

Country #

Example of application number at

source

Minimum significant part of the

number

Remarks

Austria [AT] A 12116/69 12116/69 The letter A is common to all patent applications.

Czechoslova- kia [CS]

PV3628-72 3628-72 PV is an abbreviation meaning “application of invention.”

Denmark [DK]

68/2986 68/2986

Egypt [EG] 487-1968 487-1968

Country # Example of application number at source

Minimum - significant part of the number

Remarks

Finland [FI] 3032/69 (old numbering system) 752032 (new numbering system)

3032/69 752032

New numbering system introduced on January 1, 1975. First two digits indicate year of application.

France [FR] 69.38066 7319346

68.38066 7319346

Deletion of the intermediary full stop from this number onwards.

Note: All French applications are numbered in a single annual series, e.g., demande de brevet, demande de certificate d’addition (first addition, second addition, etc.)

Annual series of numbers is used for all applications of patent documents. The number allotted to an application at its filing (national registration number) is also the number of the granted patent.

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Germany, Fed. Rep. of [DE]

P 1940738// 6-24 G6947580.5

1940738 D6947580

P=Patent. The first two digits of the number represent the last two digits of the year of application less 50 (e.g., 1969 less 50=19; 1973 less 50=23). The first digit after the slash is an error control digit. The two digits following the dash indicate the examining division. G= Gebrauschsmuster. The first two digits of the number represent the last two digits of the year of application. The difference in numbering scheme of the first two digits affords unique identification of this type of application. However, see note below (D). The digit after the period is for error control.

Ireland 1152/69 1152/69

Italy [IT] 28039-A/70 28039/70 Application numbers are not presented on published patent documents or given in an official gazette. An exclusive block of application numbers is given annually to each of 93 provincial bureaus where patent applications may be filed. In 1973, 90,000 numbers were allotted, wherein an estimated total of 30,000 applications were expected to be filed. While, as a consequence, gaps will exist in the ultimately used numbers, each application has a unique number. For this purpose, neither the dash nor the letter identifying the receiving bureau, which follows the application number, is needed.

Japan [JP] 46-69807 46-81861

46-69807 D46-81861

The two digits before the dash indicate the year (1925 or 1988) of the Emperor’s reign in which the application was filed (46=1971). Patent and utility model applications are numbered in separate series.

Netherlands [NL]

7015038 7015038 First two digits indicate year of application.

Norway [NO]

1748/70 (old numbering system) 74001 (new numbering system)

1748/70 74001

New numbering system introduced on January 1, 1974. First two digits indicate year of application.

South Africa [ZA]

70/4865 70/4865

Country #

Example of application number at

source

Minimum significant part of the

number

Remarks

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Sweden [SE] 16414/70 7300001-0 (new system)

16414/70 7300001

The new numbering system was introduced January 1, 1973. First two digits indicate year of application. The digit after the dash is used for computer control.

Switzerland [CH]

15978/70 15978/70

United Kingdom [GB]

41352/70 41352/70

Yugoslavia [YU]

P1135/66 1135/66

Zambia [ZM] 142/70 142/70

Argentina [AR]

231790 231790

Australia [AU]

59195/69 59195/69 Long series spread over several years. New series started in 1970.

Belgium [BE]

96469 96469 Application numbers are not presented on published patent documents or given in an official gazette. A series of paral- lel numbers is provided to each of 10 offices which, respec- tively, may receive applications (control office + 9 provincial bureaus) and assign application numbers. Series was started in 1958. Since an application number does not uniquely identify a BE document, the patent number is often cited as the “priority application number.”

Brazil [BR] 222986 222986

Bulgaria [BG]

11572 11572

Canada [CA] 103828 103828

Colombia [CO]

126050 126050

Country #

Example of application number at

source

Minimum significant part of the

number

Remarks

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Rev. 5, Aug. 2006 200-96

Table II—Countries Using Other Than Application Number Series

Country #

Example of application number at

source

Minimum significant part of the

number

Remarks

Brazil [BR] 222986 222986

Bulgaria [BG]

11572 11572

Canada [CA] 103828 103828

Colombia [CO]

126050 126050

Cuba [CU] 33384 33384

German (Dem. Rep.) [DD]

AP84c/ 137355 WP135b/ 147203

137355 147203

AP=Ausschliessungspatent; WP=Wirtschaftspatent. The other symbols before the slash are classification symbols. A single numbering series covers both AP and WP applica- tions.

Greece [GR] 44114 44114

Hungary [HU]

OE 107 OE 107 The letters preceding the number are essential for identifying the application. They are the first letter and the first follow- ing vowel of the applicant's name. There is a separate num- bering sequence for each pair of letters.

Israel [IL] 35691 35691

Luxembourg [LU]

60093 60093

Mexico [MX]

123723 123723

Monaco [MC]

908 908

New Zealand [NZ]

161732 161732

OAPI [OA] 52118 52118

Philippines [PH]

11929 11929

Poland [PO] P144826 44987

144826 D44987

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Portugal [PT] P52-555- 5607

52555 D5607

Romania [RO]

65211 65211

Soviet Union 1397205-15 1397205 The numbers following the slash denote the examination division and a processing division.

United States [US]

889877 889877 The highest number assigned in the series of numbers started in January 1960. New series started in January 1970, January 1979, D January 1987, January 1993, and January 1998.

# ICIREPAT Country Code is indicated in brackets, e.g., [AR].

D In order to distinguish utility model applications from patent applications, it is necessary to identify them as to type of application in citations or references. This may be done by using the name of the application type in conjunction with the number or by using the symbol “U” in brackets or other enclosure following the number.

Country #

Example of application number at

source

Minimum significant part of the

number

Remarks

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Rev. 5, Aug. 2006 200-98

201.15 Right of Priority, Overcoming a Reference

The only times during ex parte prosecution that the examiner considers the merits of an applicant’s claim of priority is when a reference is found with an effec- tive date between the date of the foreign filing and the date of filing in the United States and when an inter- ference situation is under consideration. If at the time of making an action the examiner has found such an intervening reference, he or she simply rejects what- ever claims may be considered unpatentable there- over, without paying any attention to the priority date (assuming the papers have not yet been filed). The applicant in his or her reply may argue the rejection if it is of such a nature that it can be argued, or present the foreign papers for the purpose of overcoming the date of the reference. If the applicant argues the refer- ence, the examiner, in the next action in the applica- tion, may specifically require the foreign papers to be filed in addition to repeating the rejection if it is still considered applicable, or he or she may merely con- tinue the rejection.

Form paragraph 2.19 may be used in this instance.

¶ 2.19 Overcome Rejection by Translation Applicant cannot rely upon the foreign priority papers to over-

come this rejection because a translation of said papers has not been made of record in accordance with 37 CFR 1.55. See MPEP § 201.15.

Examiner Note: This paragraph should follow a rejection based on an interven-

ing reference.

In those cases where the applicant files the foreign papers for the purpose of overcoming the effective date of a reference, a translation is required if the for- eign papers are not in the English language. When the examiner requires the filing of the papers, the transla- tion should also be required at the same time. This translation must be filed together with a statement that the translation of the certified copy is accurate. When the necessary papers are filed to overcome the date of the reference, the examiner’s action, if he or she deter- mines that the applicant is not entitled to the priority date, is to repeat the rejection on the reference, stating the reasons why the applicant is not considered enti- tled to the date. If it is determined that the applicant is entitled to the date, the rejection is withdrawn in view of the priority date.

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

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

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

In applications filed from the United Kingdom there may be submitted a certified copy of the “provi- sional specification,” which may also in some cases be accompanied by a copy of the “complete specifica- tion.” The nature and function of the United Kingdom provisional specification is described in an article in the Journal of the Patent Office Society of November 1936, pages 770-774. According to United Kingdom law the provisional specification need not contain a

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complete disclosure of the invention in the sense of 35 U.S.C. 112, but need only describe the general nature of the invention, and neither claims nor draw- ings are required. Consequently, in considering such provisional specifications, the question of complete- ness of disclosure is important. If it is found that the United Kingdom provisional specification is insuffi- cient for lack of disclosure, reliance may then be had on the complete specification and its date, if one has been presented, the complete specification then being treated as a different application and disregarded as to the requirement to file within 1 year.

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

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

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

35 U.S.C. 119. Benefit of Earlier Filing Date; Right of Priority.

*****

(b)(1)No application for patent shall be entitled to this right of priority unless a claim is filed in the Patent and Trademark Office, identifying the foreign application by specifying the appli- cation number on that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Director.

(2) The Director may consider the failure of the applicant to file a timely claim for priority as a waiver of any such claim. The Director may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed claim under this section.

(3) The Director may require a certified copy of the origi- nal foreign application, specification, and drawings upon which it is based, a translation if not in the English language, and such other information as the Director considers necessary. Any such certification shall be made by the foreign intellectual property authority in which the foreign application was filed and show the date of the application and of the filing of the specification and other papers.

*****

The failure to perfect a claim to foreign priority benefit prior to issuance of the patent may be cured by filing a reissue application. Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968).

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

Although In re Van Esdonk involved the patent of a continuation application filed under former 37 CFR 1.60, it is proper to apply the holding of that case in similar factual circumstances to any patented applica- tion having benefits under 35 U.S.C. 120. This is pri- marily because a claim to foreign priority benefits in a continuing application, where the claim has been per- fected in the parent application, constitutes in essence a mere affirmation of the applicant’s previously expressed desire to receive benefits under 35 U.S.C. 119(a)-(d) or (f) for subject matter common to the for- eign, parent, and continuing applications.

In summary, a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 may be requested and issued in order to perfect a claim for foreign pri- ority benefit in a patented continuing application if the requirements of 35 U.S.C. 119(a)-(d) or (f) had been satisfied in the parent application prior to issuance of the patent and the requirements of 37 CFR

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Rev. 5, Aug. 2006 200-100

1.55(a) are met. Furthermore, if the continuing appli- cation (other than a design application), which issued as a patent, was filed on or after November 29, 2000 **, in addition to the filing of a certificate of correc- tion request, patentee must also file a petition for an unintentionally delayed foreign priority claim under 37 CFR 1.55(c).

However, a claim to foreign priority benefits cannot be perfected via a certificate of correction if the requirements of 35 U.S.C. 119(a)-(d) or (f) had not been satisfied in the patented application, or its par- ent, prior to issuance and the requirements of 37 CFR 1.55(a) are not met. In this latter circumstance, the claim to foreign priority benefits can be perfected only by way of a reissue application in accordance with the rationale set forth in Brenner v. State of Israel, 158 USPQ 584.

*>If the original application, which issued as the patent, was filed under 35 U.S.C. 111(a) (other than a design application) on or after November 29, 2000, a< claim for priority under 35 U.S.C. 119(a)-(d) or (f) for the benefit of a prior foreign application may be added (or corrected) in *>the< issued patent by reis- sue or certificate of correction (assuming the condi- tions for reissue or certificate of correction are otherwise met)**. In addition to the filing of a reissue application or a request for a certificate of correction, a petition to accept a delayed claim for priority under 35 U.S.C. 119(a)-(d) or (f) along with the surcharge as set forth in 37 CFR 1.17(t) and a statement that the entire delay between the date the claim was due under 37 CFR1.55(a)(1) and the date the claim was filed was unintentional must be submitted. See 37 CFR1.55(c).

> 201.17 Incorporation by Reference

Under 37 CFR 1.57(a) [R-3]

37 CFR 1.57. Incorporation by reference. (a) Subject to the conditions and requirements of this para-

graph, if all or a portion of the specification or drawing(s) is inad- vertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign applica- tion, or a claim under § 1.78 for the benefit of a prior-filed provi- sional, nonprovisional, or international application, that was present on the filing date of the application, and the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application, the claim under § 1.55 or § 1.78 shall also be considered an incorporation by reference of

the prior-filed application as to the inadvertently omitted portion of the specification or drawing(s).

(1) The application must be amended to include the inad- vertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by § 1.114(b), or abandonment of the application, whichever occurs earlier. The applicant is also required to:

(i) Supply a copy of the prior-filed application, except where the prior-filed application is an application filed under 35 U.S.C. 111;

(ii) Supply an English language translation of any prior-filed application that is in a language other than English; and

(iii) Identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed appli- cation.

(2) Any amendment to an international application pursu- ant to this paragraph shall be effective only as to the United States, and shall have no effect on the international filing date of the application. In addition, no request to add the inadvertently omit- ted portion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (§ 1.491) or the filing of an application under 35 U.S.C. 111 (a) which claims benefit of the international application.

(3) If an application is not otherwise entitled to a filing date under § 1.53(b), the amendment must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f).

*****

I. IN GENERAL

37 CFR 1.57(a) provides that, if all or a portion of the specification or drawing(s) is inadvertently omit- ted from an application, but the application contains a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provisional, nonprovi- sional, or international application, that was present on the filing date of the application, and the inadvert- ently omitted portion of the specification or draw- ing(s) is completely contained in the prior-filed application, the claim for priority or benefit shall be considered an incorporation by reference of the prior- filed application as to the inadvertently omitted por- tion of the specification or drawings.

The purpose of 37 CFR 1.57(a) is to provide a safe- guard for applicants when a page(s) of the specifica- tion, or a portion thereof, or a sheet(s) of the drawing(s), or a portion thereof, is (are) inadvertently omitted from an application, such as through a clerical error. It allows inadvertently omitted material to be

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added to the application by way of a later-filed amendment if the inadvertently omitted portion of the specification or drawing(s) is completely contained in the prior-filed application even though there is no explicit incorporation by reference of the prior-filed application.

For a discussion of explicit incorporation by refer- ence statements, see MPEP § 608.01(p).

II. CONDITIONS AND REQUIREMENTS OF 37 CFR 1.57(a)

The following conditions and requirements need to be met for an applicant to add omitted material to an application pursuant to 37 CFR 1.57(a):

(A) the application must have been filed on or after September 21, 2004;

(B) all or a portion of the specification or draw- ing(s) must have been inadvertently omitted from the application;

(C) a claim under 37 CFR 1.55 for priority of a prior-filed foreign application, or a claim under 37 CFR 1.78 for the benefit of a prior-filed provi- sional, nonprovisional, or international application, must have been present on the filing date of the appli- cation;

(D) the inadvertently omitted portion of the speci- fication or drawing(s) must be completely contained in the prior-filed application;

(E) applicant must file an amendment to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecu- tion as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier;

(F) if the application is not otherwise entitled to a filing date, applicant must also file a petition under 37 CFR 1.57(a) accompanied by the petition fee set forth in 37 CFR 1.17(f);

(G) applicant must supply a copy of the prior- filed application, except where the prior-filed applica- tion is an application filed under 35 U.S.C. 111;

(H) applicant must supply an English language translation of any prior-filed application that is in a language other than English; and

(I) applicant must identify where the inadvert- ently omitted portion of the specification or draw- ing(s) can be found in the prior-filed application.

A. Application Filed On or After September 21, 2004

37 CFR 1.57(a) became effective on September 21, 2004 and applies to applications filed on or after that date. Thus, an application that inadvertently omits material must have been filed on or after September 21, 2004 in order for 37 CFR 1.57(a) to apply. Appli- cants may, however, rely on prior-filed applications filed before September 21, 2004 to supply inadvert- ently omitted material to applications filed on or after September 21, 2004.

B. Material Must Be Inadvertently Omitted

There is no requirement for applicant to submit a declaration stating that the omission was inadvertent or to submit proof that a particular omission was inad- vertent at the time of filing of the application. If appli- cant submits an amendment to add the omitted material pursuant to 37 CFR 1.57(a), it would consti- tute a certification under 37 CFR 10.18(b) that the omission was inadvertent. The Office, however, may inquire as to inadvertence where the record raises such issue.

C. Claim Under 37 CFR 1.55 or 1.78 Present on Filing Date

The priority claim under 37 CFR 1.55 or the benefit claim under 37 CFR 1.78 of the prior-filed application must be present on the filing date of the later-filed application in order for it to be considered an incorpo- ration by reference of the prior-filed application under 37 CFR 1.57(a). The later-filed application claiming benefit of the prior-filed application can be a continu- ation, divisional, or continuation-in-part application of the prior-filed application.

D. Omitted Material Completely Contained in Prior-filed Application

The phrase “completely contained” in 37 CFR 1.57(a) requires that the material to be added to the later-filed application under 37 CFR 1.57(a) must be expressly, as opposed to implicitly, disclosed in the prior-filed application. Furthermore, the material to be added must be completely contained in the prior-filed application as filed since it is the prior application as filed which is being incorporated under 37 CFR 1.57(a).

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E. Amendment to Add Inadvertently Omitted Material

The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined in 37 CFR 1.114(b), or the abandonment of the application, whichever occurs earlier. If the Office of Initial Patent Examination (OIPE) mails a “Notice of Omitted Item(s)” indicating that a portion of the specification or drawings have been omitted, any amendment pursuant to 37 CFR 1.57(a) should be submitted within the two month time period set in the notice and should be identified as an amendment under 37 CFR 1.57(a). The amendment must be in compliance with 37 CFR 1.57(a) and 1.121. See MPEP § 601.01(d) and § 601.01(g). While an amend- ment to include inadvertently omitted material may be submitted in reply to a final Office action which first raises the issue of the omitted material, such an amendment does not have a right of entry as it would be considered as an amendment under 37 CFR 1.116. If the application is abandoned or the prosecution is closed, applicant may file a petition to revive an appli- cation under 37 CFR 1.137 and/or a request for con- tinued examination under 37 CFR 1.114, as appropriate, in order to restore the application to pending status and/or reopen prosecution in the appli- cation. If, however, an application has been patented, a certificate of correction or a reissue application could not be used to add inadvertently omitted mate- rial to that patent via 37 CFR 1.57(a).

In order for the omitted material to be included in the application, and hence considered to be part of the disclosure, the application must be amended to include the omitted portion. Therefore, applicants can still intentionally omit material contained in the prior- filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(a). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.

In addition to filing the amendment to add the inad- vertently omitted material, applicant is also required to: (A) supply a copy of the prior-filed application, except where the prior-filed application is an applica- tion filed under 35 U.S.C. 111; (B) supply an English-

language translation of any prior-filed application that is in a language other than English; and (C) identify where the inadvertently omitted portion of the specifi- cation or drawings can be found in the prior-filed application.

F. Petition Requirement

If an application is not otherwise entitled to a filing date under 37 CFR 1.53(b), the amendment must be by way of petition under 37 CFR 1.57(a)(3) accompa- nied by the fee set forth in 37 CFR 1.17(f). If OIPE mails a “Notice of Incomplete Application” indicating that the application lacks a specification or drawings, applicant should file a petition under 37 CFR 1.57(a) in response to the notice if applicant wants to rely on 37 CFR 1.57(a). See MPEP § 601.01(d) and § 601.01(f).

G. International Applications

Any amendment to an international application pur- suant to 37 CFR 1.57(a) will be effective only as to the United States and shall have no effect on the inter- national filing date of the application. The incorpora- tion by reference relief provided in 37 CFR 1.57(a) cannot be relied upon to accord an international filing date to an international application that is not other- wise entitled to a filing date under PCT Article 11, and it cannot be relied upon to alter the international filing date accorded under PCT Article 11. In addi- tion, no request to add the inadvertently omitted por- tion of the specification or drawings in an international application designating the United States will be acted upon by the Office prior to the entry and commencement of the national stage (37 CFR 1.491) or the filing of an application under 35 U.S.C. 111(a) which claims benefit of the international application.

III. EXAMPLES

Example 1: The Office of Initial Patent Examination (OIPE) noticed that Figure 3 was omitted from the appli- cation during the initial review of the application although the specification included a description of Figure 3. The application as originally filed contained a claim under 37 CFR 1.78 for the bene- fit of a prior-filed application that included the appropriate Figure 3. OIPE mailed a Notice of Omitted Item(s) notifying the applicant of the

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omission of Figure 3 and providing a two-month period for reply.

Applicant may rely on the incorporation by refer- ence provided by 37 CFR 1.57(a) to amend the application to add Figure 3. Applicant, however, must file the amendment to add the inadvertently omitted drawing figure in compliance with 37 CFR 1.57(a) within the time period set forth in the Notice of Omitted Item(s).

Example 2: Applicant discovered that the last page of the spec- ification is inadvertently omitted after the prosecu- tion of the application has been closed (e.g., a final Office action, an Ex Parte Quayle action, or a notice of allowance has been mailed to the appli- cant). The application, as originally filed, con- tained a claim under 37 CFR 1.78 for the benefit of a prior-filed application that included the last page of the specification.

If applicant wishes to amend the specification to include the inadvertently omitted material, appli- cant must reopen the prosecution by filing a Request for Continued Examination (RCE) under 37 CFR 1.114 accompanied by the appropriate fee and an amendment in compliance with 37 CFR 1.57(a) within the time period for reply set forth in the last Office action (e.g., prior to payment of the issue fee, unless applicant also files a petition to withdraw the application from issue).

Example 3: Applicant filed a (third) application that includes a claim under 37 CFR 1.78 for the benefit of a (sec- ond) prior-filed application and a (first) prior-filed application. The second application was a continu- ation application of the first application and the second application was abandoned after the filing of the third application. Subsequently, the appli- cant discovered the last page of the specification was inadvertently omitted from the third applica- tion and the second application.

If the benefit of the filing date of first application for the omitted subject matter is required (for example, the omitted material is required to pro- vide support for the claimed subject matter of the

third application and there is an intervening refer- ence that has a prior art date prior to the filing date of the third application, but after the filing date of the first application), applicant must amend the specification of the second application and the specification of the third application to include the inadvertently omitted material in compliance with 37 CFR 1.57(a) (note: the second and third appli- cations must be filed on or after the effective date of 37 CFR 1.57(a)). Since the second application is abandoned, applicant must file a petition to revive under 37 CFR 1.137 in the second application only for the purpose of correcting the specification under 37 CFR 1.57(a) along with the amendment in compliance with 37 CFR 1.57(a).

IV. FORM PARAGRAPHS

Examiners may use form paragraph 6.19.02 set forth below to notify applicant that an amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(a) is not in compliance with 37 CFR 1.57(a). If the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, form paragraph 7.28 must also be used to object to the new matter added to the disclosure, and if the amendment adds new matter to the claims or affects the claims, form paragraph 7.31.01 must also be used to reject the claims under 35 U.S.C. 112, first paragraph.

¶ 6.19.02 Amendment Not in Compliance with 37 CFR 1.57(a)

The amendment to add inadvertently omitted material pursuant to 37 CFR 1.57(a) filed [1] is not in compliance with 37 CFR 1.57(a) because [2].

Examiner Note: 1. In bracket 1, insert the date the amendment was filed. 2. In bracket 2, insert the reason why the amendment has not been entered. For example: (1) the present application was filed before September 21, 2004, the effective date of 37 CFR 1.57(a); (2) the claim for priority/benefit of the prior-filed application was not present on the filing date of the present application; (3) the inadvertently omitted portion is not completely contained in the prior-filed application; (4) a copy of the prior-filed application (except where the prior-filed application is an application filed under 35 U.S.C. 111) was not submitted; (5) an English language translation of the prior-filed non-English language application was not submitted; or (6) applicant did not identify where the inadvertently omitted portion of the specification or drawings can be found in the prior-filed application.

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3. This form paragraph must be followed by form paragraph 7.28, where the amendment is made to the specification and/or drawings and introduces new matter into the disclosure, and/or form paragraph 7.31.01, where the amendment adds new matter to the claims or affects the claims. 4. If the amendment is an after-final amendment, an advisory action should be issued indicating that the amendment raises new issues because it is not in compliance with 37 CFR 1.57(a). 5. This form paragraph should not be used if there is an express incorporation by reference since applicant would not need to com- ply with the requirements of 37 CFR 1.57(a).

< 202 Cross-Noting

** 202.02 Notation in File History Regard-

ing Prior U.S. Applications, In- cluding Provisional Applications [R-3]

For Image File Wrapper (IFW) processing, see the IFW Manual.**>The front page of a printed patent identifies all prior applications for which benefits are claimed under 35 U.S.C. 119(e), 120, 121, or 365(c) in continuation-in-part, continuation, divisional, sub- stitute, and reissue applications. Therefore, the identi- fying data of all prior applications for which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in either the first sentence(s) of the specification or in an appli- cation data sheet. See 37 CFR 1.78(a) and MPEP § 201.11. For example, the reference to a prior non- provisional application must include the appropriate relationship (e.g., continuation, divisional, or continu- ation-in-part) between the nonprovisional applica- tions.<

The *>front page< of a printed patent issuing on a continued prosecution application (CPA) filed under 37 CFR 1.53(d) will identify the application number and filing date of the most recent noncontinued prose- cution application (but not the filing date of the CPA) as well as all **>prior applications< from which *>benefit< was claimed in the most recent noncontin- ued prosecution application.

Where ** prior application data, including provi- sional application data, is preprinted ** on the PALM bib-data sheet **, the examiner should check that data for accuracy, including whether the application is, in fact, copending with the *>prior< nonprovisional

application or applications *>for< which *>benefit< is claimed. >Similarly, the application number of any provisional application for which benefit is claimed should be printed on the PALM bib-data sheet.< If applicant claims benefit under 35 U.S.C. 119(e) to a prior provisional application, and states that the provi- sional application claims priority to earlier domestic or foreign application(s), the earlier application(s) should not be reflected on the ** PALM bib-data sheet because a provisional application is not entitled to the right of priority of any other application. See 35 U.S.C. 111(b)(7).

Where the data is correct, the examiner should ini- tial ** the PALM bib-data sheet ** in the provided space. Should there be error in the preprinted *>prior< application data, the ** correction or entry of the data in the PALM data base can be made by technical support staff of the Technology Center. Upon entry of the data, a new PALM bib-data sheet should be printed and **>scanned into< the file.

** The inclusion of ** prior application information in

the *>patent< does not necessarily indicate that the claims are entitled to the benefit of the earlier filing date.

See MPEP § 306 for work done by the Assignment Division pertaining to these particular types of appli- cations.

In the situation in which there has been no refer- ence to a *>prior< application because the benefit of its filing date is not desired, no notation as to the *>prior< application is made on the ** PALM bib- data sheet **.

202.03 Notation on File Wrapper When Priority Is Claimed for Foreign Application [R-3]

For Image File Wrapper (IFW) processing, see the IFW Manual. A ** PALM bib-data sheet should include the application number, country (or intellec- tual property authority), day, month, and year of each foreign application that the U.S. application is claim- ing the *>priority< of. The examiner should check this information for accuracy. Should there be error, the examiner should make the appropriate corrections directly ** on the PALM bib-data sheet, and have the information corrected in the Office computer systems by forwarding the information ** to the examiner’s

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Legal Instrument Examiner, with an explanation of the correction to be made. The examiner should initial ** the PALM bib-data sheet in the “VERIFIED” space provided when the information is correct or has been amended to be correct. However, the examiner must still indicate on the Office action and ** on the PALM bib-data sheet whether the conditions of 35 U.S.C. 119(a)-(d) or (f) have been met.

If the filing dates of several foreign applications are claimed (see MPEP § 201.15, last paragraph) and **>the certified copy of each foreign application has< been received **, information respecting each of the foreign applications is to be entered ** on the PALM bib-data sheet.

The front page of the patent when it is issued, and the listing in the Official Gazette, will refer to the claim of priority, giving the country, the filing date, and the number of the foreign application in those applications in which ** the PALM bib-data sheet has been endorsed.

202.04 In Oath or Declaration [R-2]

As will be noted by reference to MPEP § 201.14, 37 CFR 1.63 requires that the oath or declaration **>must identify any foreign application for patent (or inventor’s certificate) for which a claim for prior- ity is made pursuant to 37 CFR 1.55, and any foreign application having a filing date before that of the application on which priority is claimed, by specify- ing the application number, country, day, month, and year of its filing, unless such information is supplied on an application data sheet in accordance with 37 CFR 1.76.< **

203 Status of Applications

203.01 New [R-2]

A “new” application is a nonprovisional *>applica- tion< that has not yet received an action by the exam- iner. An amendment filed prior to the first Office Action does not alter the status of a “new” applica- tion.

203.02 Rejected

A nonprovisional application which, during its prosecution in the examining group and before allow-

ance, contains an unanswered examiner’s action is designated as a “rejected” application. Its status as a “rejected” application continues as such until acted upon by the applicant in reply to the examiner’s action (within the allotted reply period), or until it becomes abandoned.

203.03 Amended [R-2]

An “amended” ** nonprovisional application is one that having been acted on by the examiner, has in turn been acted on by the applicant in reply to the exam- iner’s action. The applicant’s reply may be confined to an election, a traverse of the action taken by the examiner or may include an amendment of the appli- cation.

203.04 Allowed or in Issue [R-2]

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

The files of allowed applications are kept in the **>Office of Patent Publication. For Image File Wrapper (IFW) processing, see the IFW Manual<.

203.05 Abandoned [R-3]

An abandoned application is, inter alia, one which is removed from the Office docket of pending applica- tions:

(A) through formal abandonment by the applicant (acquiesced in by the assignee if there is one) or by the attorney or agent of record;

(B) through failure of applicant to take appropri- ate action at some stage in the prosecution of a non- provisional application;

(C) for failure to pay the issue fee (MPEP * § 711 to § 711.05); or

(D) in the case of a provisional application, no later than 12 months after the filing date of the provi- sional application (see MPEP § 711.03(c) and 35 U.S.C. 111 (b) (5)).

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203.06 Incomplete [R-3]

An application **>that is not entitled to a filing date (e.g., for lacking some of the essential parts)< is termed an incomplete application. (MPEP § 506 * and § 601.01(d)-(g)).

** 203.08 Status Inquiries [R-2]

>

I. < NEW APPLICATION

Current examining procedures now provide for the routine mailing from the Technology Centers (TCs) of Form PTOL-37 in every case of allowance of an appli- cation. Thus, the mailing of a form PTOL-37 in addi- tion to a formal Notice of Allowance (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant may believe his or her new appli- cation may have been passed to issue on the first examination. However, as an exception, a status inquiry would be appropriate where a Notice of Allowance is not received within three months from receipt of form PTOL-37.

Current examining procedures also aim to mini- mize the spread in dates among the various examiner dockets of each art unit and TC with respect to actions on new applications. Accordingly, the dates of the “oldest new applications” appearing in the Official Gazette are fairly reliable guides as to the expected time frames of when the examiners reach the applica- tions or action.

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

II. < AMENDED APPLICATIONS

Amended applications are expected to be taken up by the examiner and an action completed within two months of the date the examiner receives the applica- tion. Accordingly, a status inquiry is not in order after reply by the attorney until 5 or 6 months have elapsed with no response from the Office.> However, in the event that a six month period has elapsed, and no response from the Office is received, applicant should inquire as to the status of the application to avoid potential abandonment. Applicants are encouraged to

use PAIR to make status inquiries. See subsection III below.< A >stamped< postcard receipt for replies to Office actions, adequately and specifically identifying the papers filed, will be considered prima facie proof of receipt of such papers. >See MPEP § 503.< Where such proof indicates the timely filing of a reply, the submission of a copy of the postcard with a copy of the reply will ordinarily obviate the need for a petition to revive. Proof of receipt of a timely reply to a final action will obviate the need for a petition to revive only if the reply was in compliance with 37 CFR 1.113. >

III. < IN GENERAL

>Applicants are encouraged, where appropriate, to check Patent Application Information Retrieval (PAIR) (http://pair.uspto.gov) which provides appli- cants direct secure access to their own patent applica- tion status information, as well as to general patent information publicly available. See MPEP § 1730.< Inquiries as to the status of applications, by persons entitled to the information, should be answered promptly. Simple letters of inquiry regarding the sta- tus of applications will be transmitted from the Office of Initial Patent Examination* to the TCs for direct action. Such letters will be stamped “Status Letters.”

If the correspondent is not entitled to the informa- tion, in view of 37 CFR 1.14, he or she should be so informed. For Congressional and other official inquir- ies, see MPEP § 203.08(a).

Telephone inquiries regarding the status of applica- tions, by persons entitled to the information, should be directed to the TC technical support personnel and not to the examiners **>, since< the technical support personnel can readily provide status information with- out contacting the examiners.

See also MPEP § 102 regarding status information.

Processing Status Letters by the TCs

(A) All status letters sent to a TC will be deliv- ered to a designated location (e.g., Customer Service Office) within the TC for action. Status requests with respect to PCT applications are to be processed by the PCT Legal Division and should be forwarded to that office for reply. Status information regarding an appli- cation identified in a published patent document

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200-107 Rev. 5, Aug. 2006

should be forwarded to the File Information Unit for reply. See MPEP § 102.

(B) A designated representative of the TC will review the status letter to determine the nature of the request and whether the requester is entitled to receive the requested information. PALM Intranet should be used to determine whether the requester is entitled to the information. If after reviewing the information in PALM it is not clear whether the requester is entitled to receive the information requested, the TC represen- tative should review the application file to resolve the issue.

(C) The TC representative will determine the appropriate reply to the status letter by

(1) using PALM Intranet to determine the sta- tus of the application,

(2) reviewing the new application dates within the TC,

(3) reviewing any tracking system for the par- ticular item or action at issue,

(4) discussing the matter with the supervisory patent examiner or the examiner in charge of the application, or

(5) when necessary, reviewing the application file.

The TC representative should discuss the matter with an appropriate resource person in the TC if it is not clear what the reply should be.

(D) The TC representative may reply to a status letter, other than an inquiry directed to an abandoned application, by placing a telephone call to the attorney or agent of record. If the status letter requests a date of expected action, the reply should make clear that the date provided is only an “expected” date of when the examiner will take action on the application. If the requester requests that the Office provide a written reply to the status letter, the reply may be faxed (pref- erable) or mailed (only if requested) to the correspon- dence address.

(E) The TC representative will note the reply to the status inquiry on the status letter with the initials of the TC representative and the date that the reply was completed.

(F) All TCs will employ the Status Letter Data- base to track the progress of the status letters. The TC will retain a record of the reply to the status letter. The record includes the entry of the information concern- ing the status letter and the reply into the Status Letter Database.

(G) After the information has been entered into the Status Letter Database, the status letter along with the reply must be *>associated< with the application file (including abandoned applications)**.

203.08(a) Congressional and Other Offi- cial Inquiries [R-3]

Correspondence and inquiries from the White House, Members of Congress, embassies, and heads of Executive departments and agencies normally are cleared through the Office of International Relations and/or the Office of Congressional Relations.

When persons from the designated official sources request services from the Office, or information regarding the business of the Office, they should, under long-standing instructions, be referred, at least initially, to a staff member in the appropriate office.

This procedure is used so that there will be unifor- mity in the handling of contacts from the indicated sources, and also so that compliance with directives of the Department of Commerce is attained.

Inquiries referred to in this section such as corre- spondence from embassies, the Office of the U.S. Trade Representative, and the Department of State should immediately be transmitted to the Director of the Office of International Relations by messenger, and a staff member of that office should be notified by phone that such correspondence has been received. Inquiries referred to in this section, such as correspon- dence from Congress or the White House, should immediately be transmitted to the Director of the Office of Congressional Relations by messenger, and * a staff member of that office should be notified by phone that such correspondence has been received.

●●●●●●●●●●●●●●●●●●●●●●●●●●●●●

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Chapter 300 Ownership and Assignment

300-1 Rev. 5, Aug. 2006

and Assignment

301 Ownership/Assignability of Patents and Applications

301.01 Accessibility of Assignment Records 302 Recording of Assignment Documents 302.01 Assignment Document Must Be Copy for

Recording 302.02 Translation of Assignment Document 302.03 Identifying Patent or Application 302.04 Foreign Assignee May Designate Domestic

Representative 302.05 Address of Assignee 302.06 Fee for Recording 302.07 Assignment Document Must Be Accompanied

by a Cover Sheet 302.08 Mailing Address for Submitting Assignment

Documents 302.09 Facsimile Submission of Assignment

Documents 302.10 Electronic Submission of Assignment

Documents 303 Assignment Documents Not Endorsed on

Pending Applications 306 Assignment of Division, Continuation,

Substitute, and Continuation-in-Part in Relation to Parent Application

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

307 Issue to Assignee 309 Restrictions Upon Employees of U.S. Patent

and Trademark Office 310 Government License Rights to Contractor-

Owned Inventions Made Under Federally Sponsored Research and Development

311 Filing of Notice of Arbitration Awards 313 Recording of Licenses, Security Interests, and

Other Documents Other Than Assignments 314 Certificates of Change of Name or of Merger 315 Indexing Against a Recorded Certificate 317 Handling of Documents in the Assignment

Division 317.01 Recording Date 317.02 Correction of Unrecorded Returned

Documents and Cover Sheets 317.03 Effect of Recording 318 Documents Not To Be Placed in Files 320 Title Reports 323 Procedures for Correcting Errors in Recorded

Assignment Document 323.01 Correction of Error in Recorded Cover Sheet

323.01(a) Typographical Errors in Cover Sheet 323.01(b) Typographical Errors in Recorded Assignment

Document 323.01(c) Assignment or Change of Name Improperly

Filed and Recorded by Another Person Against Owner’s Application or Patent

323.01(d) Expungement of Assignment Records 324 Establishing Right of Assignee to Take Action

301 Ownership/Assignability of Patents and Applications [R-3]

35 U.S.C. 261. Ownership; assignment. Subject to the provisions of this title, patents shall have the

attributes of personal property. Applications for patent, patents, or any interest therein, shall be

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

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

An assignment, grant, or conveyance shall be void as against any subsequent purchaser or mortgagee for valuable consider- ation, without notice, unless it is recorded in the Patent and Trade- mark Office within three months from its date or prior to the date of such subsequent purchase or mortgage.

35 U.S.C. 262. Joint owners. In the absence of any agreement to the contrary, each of the

joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and with- out accounting to the other owners.

37 CFR 3.1. Definitions. **>For purposes of this part, the following definitions shall

apply: Application means a national application for patent, an interna-

tional patent application that designates the United States of America, or an application to register a trademark under section 1 or 44 of the Trademark Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise indicated.

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

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

Office means the United States Patent and Trademark Office. Recorded document means a document which has been

recorded in the Office pursuant to § 3.11. Registration means a trademark registration issued by the

Office.<

>

I. < OWNERSHIP

Ownership of a patent gives the patent owner the right to exclude others from making, using, offering for sale, selling, or importing into the United States the invention claimed in the patent. 35 U.S.C. 154(a)(1). Ownership of the patent does not furnish the owner with the right to make, use, offer for sale, sell, or import the claimed invention because there may be other legal considerations precluding same (e.g., existence of another patent owner with a domi- nant patent, failure to obtain FDA approval of the pat- ented invention, an injunction by a court against making the product of the invention, or a national security related issue).

The ownership of the patent (or the application for the patent) initially vests in the named inventors of the invention of the patent. See Beech Aircraft Corp. v. EDO Corp., 990 F.2d 1237, 1248, 26 USPQ2d 1572, 1582 (Fed. Cir. 1993). The patent (or patent applica- tion) is then assignable by an instrument in writing, and the assignment of the patent, or patent applica- tion, transfers to the assignee(s) an alienable (transfer- able) ownership interest in the patent or application. 35 U.S.C. 261. >

II. < ASSIGNMENT

“Assignment,” in general, is the act of transferring to another the ownership of one’s property, i.e., the interest and rights to the property. In 37 CFR 3.1, assignment of patent rights is defined as “a transfer by a party of all or part of its right, title and interest in a patent or patent application....” An assignment of a patent, or patent application, is the transfer to another of a party’s entire ownership interest or a percentage of that party’s ownership interest in the patent or application. In order for an assignment to take place, the transfer to another must include the entirety of the

bundle of rights that is associated with the ownership interest, i.e., all of the bundle of rights that are inher- ent in the right, title and interest in the patent or patent application. >

III. < LICENSING

As compared to assignment of patent rights, the licensing of a patent transfers a bundle of rights which is less than the entire ownership interest, e.g., rights that may be limited as to time, geographical area, or field of use. A patent license is, in effect, a contractual agreement that the patent owner will not sue the lic- ensee for patent infringement if the licensee makes, uses, offers for sale, sells, or imports the claimed invention, as long as the licensee fulfills its obliga- tions and operates within the bounds delineated by the license agreement.

An exclusive license may be granted by the patent owner to a licensee. The exclusive license prevents the patent owner (or any other party to whom the patent owner might wish to sell a license) from com- peting with the exclusive licensee, as to the geo- graphic region, the length of time, and/or the field of use, set forth in the license agreement.

A license is not an assignment of the patent. Even if the license is an exclusive license, it is not an assign- ment of patent rights in the patent or application. >

IV. < INDIVIDUAL AND JOINT OWNERSHIP

Individual ownership - An individual entity may own the entire right, title and interest of the patent property. This occurs where there is only one inven- tor, and the inventor has not assigned the patent prop- erty. Alternatively, it occurs where all parties having ownership interest (all inventors and assignees) assign the patent property to one party.

Joint ownership - Multiple parties may together own the entire right, title and interest of the patent property. This occurs when any of the following cases exist:

(A) Multiple partial assignees of the patent prop- erty;

(B) Multiple inventors who have not assigned their right, title and interest; or

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300-3 Rev. 5, Aug. 2006

(C) A combination of partial assignee(s), and inventor(s) who have not assigned their right, title and interest.

Each individual inventor may only assign the inter- est he or she holds; thus, assignment by one joint inventor renders the assignee a partial assignee. A partial assignee likewise may only assign the interest it holds; thus, assignment by a partial assignee renders a subsequent assignee a partial assignee. All parties having any portion of the ownership in the patent property must act together as a composite entity in patent matters before the Office.

>

V. < MAKING THE ASSIGNMENT OF RECORD

An assignment can be made of record in the United States Patent and Trademark Office (Office) in two different ways, for two different purposes. The differ- ences are important to note:

(A) An assignment can be made of record in the assignment records of the Office. Recordation of the assignment provides legal notice to the public of the assignment. It should be noted that recording of the assignment is merely a ministerial act; it is not an Office determination of the validity of the assignment document nor the effect of the assignment document on the ownership of the patent property. See 37 CFR 3.54 and MPEP § 317.03; and

(B) An assignment can be made of record in the file of a patent application, patent, or other patent pro- ceeding (e.g., reexamination proceeding). This step is necessary to permit the assignee to “take action” in the application, patent, or other patent proceeding under the conditions set forth in 37 CFR 3.73 and MPEP § 324. Recordation of an assignment in the assignment records of the Office does not, by itself, permit the assignee to take action in the application, patent, or other patent proceeding. >For a patent to issue to an assignee, the assignment must have been recorded or filed for recordation in accordance with 37 CFR 3.11. See 37 CFR 3.81(a).<

301.01 Accessibility of Assignment Records [R-3]

37 CFR 1.12. Assignment records open to public inspection.

**> (a)(1) Separate assignment records are maintained in the

United States Patent and Trademark Office for patents and trade- marks. The assignment records, relating to original or reissue pat- ents, including digests and indexes (for assignments recorded on or after May 1, 1957), and published patent applications are open to public inspection at the United States Patent and Trademark Office, and copies of patent assignment records may be obtained upon request and payment of the fee set forth in § 1.19 of this chapter. See § 2.200 of this chapter regarding trademark assign- ment records.

(2) All records of assignments of patents recorded before May 1, 1957, are maintained by the National Archives and Records Administration (NARA). The records are open to public inspection. Certified and uncertified copies of those assignment records are provided by NARA upon request and payment of the fees required by NARA.<

**> (b) Assignment records, digests, and indexes relating to any

pending or abandoned patent application, which is open to the public pursuant to § 1.11 or for which copies or access may be supplied pursuant to § 1.14, are available to the public. Copies of any assignment records, digests, and indexes that are not available to the public shall be obtainable only upon written authority of the applicant or applicant’s assignee or patent attorney or patent agent or upon a showing that the person seeking such information is a bona fide prospective or actual purchaser, mortgagee, or licensee of such application, unless it shall be necessary to the proper con- duct of business before the Office or as provided in this part.<

(c) Any request by a member of the public seeking copies of any assignment records of any pending or abandoned patent appli- cation preserved in confidence under § 1.14, or any information with respect thereto, must:**>

(1) Be in the form of a petition including the fee set forth in § 1.17(g); or<

(2) Include written authority granting access to the mem- ber of the public to the particular assignment records from the applicant or applicant’s assignee or attorney or agent of record.

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

Assignment documents relating to patents, pub- lished patent applications, registrations of trademarks, and applications for registration of trademarks are open to public inspection. >Records related to assign- ments of patents, and patent applications that have

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been published as patent application publications are available on the USPTO Internet web site. To view the recorded assignment document itself, members of the public must place an order pursuant to 37 CFR 1.12(d).<

The Office will not open only certain parts of an assignment document to public inspection. If such a document contains two or more items, any one of which, if alone, would be open to such inspection, then the entire document will be open. Thus, if a doc- ument covers either a trademark or a patent in addi- tion to one or more patent applications, it will be available to the public ab initio; and if it covers a number of patent applications, it will be so available as soon as any one of them is published or patented. Documents relating only to one or more pending applications for patent which have not been published under 35 U.S.C. 122(b) will not be open to public inspection.

Copies of assignment records relating to pending or abandoned patent applications **>which are open to the public pursuant to 37 CFR 1.11 or for which cop- ies or access may be supplied pursuant to 37 CFR 1.14 are available to the public. For pending or aban- doned applications which are not open to the public pursuant to 37 CFR 1.11 or for which copies or access may not be supplied pursuant to 37 CFR 1.14,< infor- mation related thereto *>is only< obtainable upon a showing of written authority from the applicant or applicant’s assignee or from the attorney or agent of either, or upon a showing that the person seeking such information is a bona fide prospective or actual pur- chaser, mortgagee, or licensee of such application.

If the application on which a patent was granted is a division *>,< continuation>, or continuation-in-part< of an earlier application, the assignment records of that earlier application will be open to public inspec- tion **>because copies or access may be supplied to the earlier application pursuant to 37 CFR 1.14<.

Assignment records relating to reissue applications are open to public inspection >since reissue applica- tions are open to public inspection pursuant to 37 CFR 1.11(b).<

Requests for abstracts of title for assignments of patents recorded after May 1, 1957, are provided by the Certification Division upon request and payment of fee required in 37 CFR 1.19. Requests for copies of pre-1957 records for patents should be directed to the

National Archives and Records Administration (NARA). Since these records are maintained by NARA, it is more expeditious to request copies directly from NARA, rather than from the Office, which would then have to route the requests to NARA. Payment of the fees required by NARA should accompany all requests for copies.

All assignment records from 1837 to April 30, 1957 for patents are now maintained and are open for pub- lic inspection in the National Archives Research Room located at the Washington National Records Center Building, 4205 Suitland Road, Suitland, Mary- land 20746. Assignment documents recorded before 1837 are maintained at the >Civilian Records Divi- sion of the< National Archives **>at College Park, 8601 Adelphi Road, College Park, MD 20740-6001<.

302 Recording of Assignment Docu- ments [R-5]

37 CFR 3.11. Documents which will be recorded. (a) Assignments of applications, patents, and registra-

tions, accompanied by completed cover sheets as specified in §§ 3.28 and 3.31, will be recorded in the Office. Other documents, accompanied by completed cover sheets as specified in §§ 3.28 and 3.31, affecting title to applications, patents, or registrations, will be recorded as provided in this part or at the discretion of the Director.

(b) Executive Order 9424 of February 18, 1944 (9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) requires the several depart- ments and other executive agencies of the Government, including Government-owned or Government-controlled corporations, to forward promptly to the Director for recording all licenses, assign- ments, or other interests of the Government in or under patents or patent applications. Assignments and other documents affecting title to patents or patent applications and documents not affecting title to patents or patent applications required by Executive Order 9424 to be filed will be recorded as provided in this part.

**> (c) A joint research agreement or an excerpt of a joint

research agreement will also be recorded as provided in this part.<

37 CFR 3.58. Governmental registers. (a) The Office will maintain a Departmental Register to

record governmental interests required to be recorded by Execu- tive Order 9424. This Departmental Register will not be open to public inspection but will be available for examination and inspection by duly authorized representatives of the Government. Governmental interests recorded on the Departmental Register will be available for public inspection as provided in § 1.12.

(b) The Office will maintain a Secret Register to record gov- ernmental interests required to be recorded by Executive Order 9424. Any instrument to be recorded will be placed on this Secret Register at the request of the department or agency submitting the

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same. No information will be given concerning any instrument in such record or register, and no examination or inspection thereof or of the index thereto will be permitted, except on the written authority of the head of the department or agency which submitted the instrument and requested secrecy, and the approval of such authority by the Director. No instrument or record other than the one specified may be examined, and the examination must take place in the presence of a designated official of the Patent and Trademark Office. When the department or agency which submit- ted an instrument no longer requires secrecy with respect to that instrument, it must be recorded anew in the Departmental Regis- ter.

Effective September 4, 1992, Part 3 has been added to 37 CFR to set forth Office rules on recording assignments and other documents and the rights of an assignee.

Effective December 10, 2004, as a result of the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act), 37 CFR 3.11(c) has been added to provide that the Office will record a joint research agreement or an excerpt of a joint research agreement. **

302.01 Assignment Document Must Be ** Copy for Recording [R-3]

**>

37 CFR 3.24. Requirements for documents and cover sheets relating to patents and patent applications.

(a) For electronic submissions: Either a copy of the original document or an extract of the original document may be submitted for recording. All documents must be submitted as digitized images in Tagged Image File Format (TIFF) or another form as prescribed by the Director. When printed to a paper size of either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), the document must be legible and a 2.5 cm (one- inch) margin must be present on all sides.

(b) For paper or facsimile submissions: Either a copy of the original document or an extract of the original document must be submitted for recording. Only one side of each page may be used. The paper size must be either 21.6 by 27.9 cm (8 1/2 inches by 11 inches) or 21.0 by 29.7 cm (DIN size A4), and in either case, a 2.5 cm (one-inch) margin must be present on all sides. For paper sub- missions, the paper used should be flexible, strong white, non- shiny, and durable. The Office will not return recorded docu- ments, so original documents must not be submitted for record- ing.<

The United States Patent and Trademark Office will accept and record only **>a< copy of an original assignment or other document. See MPEP § 317. >The document submitted for recordation will not be returned to the submitter. If the copy submitted for

recordation is illegible, the recorded document will be illegible. Accordingly, applicants and patent owners should ensure that only a legible copy is submitted for recordation.< **

302.02 Translation of Assignment Docu- ment

37 CFR 3.26. English language requirement. The Office will accept and record non-English language docu-

ments only if accompanied by an English translation signed by the individual making the translation.

The assignment document, if not in the English lan- guage, will not be recorded unless accompanied by an English translation signed by the translator.

302.03 Identifying Patent or Applica- tion [R-3]

**> 37 CFR 3.21. Identification of patents and patent applications.

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an interna- tional patent application which designates the United States of America must identify the international application by the interna- tional application number (e.g., PCT/US90/01234). If an assign- ment of a patent application filed under § 1.53(b) is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must iden- tify the patent application by the name of each inventor and the title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under § 1.53(c) is executed before the provisional application is filed, it must identify the provisional application by the name of each inventor and the title of the invention so that there can be no mistake as to the provisional application intended.<

The patent or patent application to which an assign- ment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by ** the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is exe- cuted before the provisional application is filed, it

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Rev. 5, Aug. 2006 300-6

must identify the provisional application by name(s) of the inventors and the title of the invention.

The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, how- ever, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:

“I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parenthe- ses (Application number , filed ) the filing date and application number of said application when known.”

302.04 Foreign Assignee May Designate Domestic Representative [R-3]

35 U.S.C. 293. Nonresident patentee; service and notice. Every patentee not residing in the United States may file in the

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

**> 37 CFR 3.61. Domestic representative.

If the assignee of a patent, patent application, trademark appli- cation or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or regis- tration or rights thereunder.<

An assignee >of a patent or patent application who is< not domiciled in the United States may, by written document signed by such assignee, designate a domestic representative. The designation of domestic representative should always be a paper separate from any assignment document, in order that the paper of designation can be retained in the appropriate applica- tion or patent file. Also, there should be a separate paper of designation of representative for each patent or application, so that a designation paper can be placed in each file. The designation of a domestic rep-

resentative should be directed to the Office of Public Records for processing.

302.05 Address of Assignee

The address of the assignee may be recited in the assignment document and must be given in the required cover sheet. See MPEP § 302.07.

302.06 Fee for Recording [R-3]

37 CFR 3.41. Recording fees. (a) All requests to record documents must be accompanied

by the appropriate fee. Except as provided in paragraph (b) of this section, a fee is required for each application, patent and registra- tion against which the document is recorded as identified in the cover sheet. The recording fee is set in § 1.21(h) of this chapter for patents and in § 2.6(b)(6) of this chapter for trademarks.

(b) No fee is required for each patent application and patent against which a document required by Executive Order 9424 is to be filed if:

(1) The document does not affect title and is so identified in the cover sheet (see § 3.31(c)(2)); and

**> (2) The document and cover sheet are either: Faxed or

electronically submitted as prescribed by the Director, or mailed to the Office in compliance with § 3.27.<

The recording fee set forth in 37 CFR 1.21(h) is charged for each patent application and patent identi- fied in the required cover sheet except as provided in 37 CFR 3.41(b).

302.07 Assignment Document Must Be Accompanied by a Cover Sheet [R-5]

37 CFR 3.28. Requests for recording. **>Each document submitted to the Office for recording must

include a single cover sheet (as specified in § 3.31) referring either to those patent applications and patents, or to those trade- mark applications and registrations, against which the document is to be recorded. If a document to be recorded includes interests in, or transactions involving, both patents and trademarks, then sepa- rate patent and trademark cover sheets, each accompanied by a copy of the document to be recorded, must be submitted. If a doc- ument to be recorded is not accompanied by a completed cover sheet, the document and the incomplete cover sheet will be returned pursuant to § 3.51 for proper completion, in which case the document and a completed cover sheet should be resubmit- ted.<

37 CFR 3.31. Cover sheet content. (a) Each patent or trademark cover sheet required by § 3.28

must contain: (1) The name of the party conveying the interest;

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300-7 Rev. 5, Aug. 2006

(2) The name and address of the party receiving the inter- est;

(3) A description of the interest conveyed or transaction to be recorded;

(4) Identification of the interests involved: (i) For trademark assignments and trademark name

changes: Each trademark registration number and each trademark application number, if known, against which the Office is to record the document. If the trademark application number is not known, a copy of the application or a reproduction of the trade- mark must be submitted, along with an estimate of the date that the Office received the application; or

(ii) For any other document affecting title to a trademark or patent application, registration or patent: Each trade- mark or patent application number or each trademark registration number or patent against which the document is to be recorded, or an indication that the document is filed together with a patent application;

(5) The name and address of the party to whom corre- spondence concerning the request to record the document should be mailed;

(6) The date the document was executed; (7) The signature of the party submitting the document.

For an assignment document or name change filed electronically, the person who signs the cover sheet must either:

**> (i) Place a symbol comprised of letters, numbers, and/

or punctuation marks between forward slash marks (e.g. /Thomas O’ Malley III/) in the signature block on the electronic submis- sion; or<

(ii) Sign the cover sheet using some other form of electronic signature specified by the Director.

(b) A cover sheet should not refer to both patents and trade- marks, since any information, including information about pend- ing patent applications, submitted with a request for recordation of a document against a trademark application or trademark regis- tration will become public record upon recordation.

(c) Each patent cover sheet required by § 3.28 seeking to record a governmental interest as provided by § 3.11(b) must:

(1) Indicate that the document relates to a Government interest; and

(2) Indicate, if applicable, that the document to be recorded is not a document affecting title (see § 3.41(b)).

(d) Each trademark cover sheet required by § 3.28 seeking to record a document against a trademark application or registration should include, in addition to the serial number or registration number of the trademark, identification of the trademark or a description of the trademark, against which the Office is to record the document.

(e) Each patent or trademark cover sheet required by § 3.28 should contain the number of applications, patents or registrations identified in the cover sheet and the total fee.

(f) Each trademark cover sheet should include the citizen- ship of the party conveying the interest and the citizenship of the party receiving the interest. In addition, if the party receiving the interest is a partnership or joint venture, the cover sheet should set forth the names, legal entities, and national citizenship (or the

state or country of organization) of all general partners or active members that compose the partnership or joint venture.

(g) The cover sheet required by § 3.28 seeking to record a joint research agreement or an excerpt of a joint research agree- ment as provided by § 3.11(c) must:

(1) Identify the document as a “joint research agreement” (in the space provided for the description of the interest conveyed or transaction to be recorded if using an Office-provided form);

(2) Indicate the name of the owner of the application or patent (in the space provided for the name and address of the party receiving the interest if using an Office-provided form);

(3) Indicate the name of each other party to the joint research agreement party (in the space provided for the name of the party conveying the interest if using an Office-provided form); and

(4) Indicate the date the joint research agreement was executed.

Each assignment document submitted to the Office for recording must be accompanied by a cover sheet as required by 37 CFR 3.28. The cover sheet for pat- ents or patent applications must contain:

(A) The name of the party conveying the interest; (B) The name and address of the party receiving

the interest; (C) A description of the interest conveyed or

transaction to be recorded; (D) Each patent application number or patent

number against which the document is to be recorded, or an indication that the document is filed together with a patent application;

(E) The name and address of the party to whom correspondence concerning the request to record the document should be mailed;

(F) The date the document was executed; and (G) The signature of the party submitting the doc-

ument.

If the document submitted for recordation is a joint research agreement or an excerpt of a joint research agreement, the cover sheet must clearly identify the document as a “joint research agreement” (in the space provided for the description of the interest con- veyed if using Form PTO-1595). The date the joint research agreement was executed must also be identi- fied. The cover sheet must also identify the name(s) of the owner(s) of the application or patent (in the space provided for the name and address of the party receiv- ing the interest if using Form PTO-1595). The name(s) of every other party(ies) to the joint research

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Rev. 5, Aug. 2006 300-8

agreement must also be identified (in the space pro- vided for the name of the party conveying the interest if using Form PTO-1595).

Each patent cover sheet should contain the number of patent applications or patents identified in the cover sheet and the total fee.

Examples of the type of descriptions of the interest conveyed or transaction to be recorded that can be identified are:

(A) assignment; (B) security agreement; (C) merger; (D) change of name; (E) license; (F) foreclosure;

(G) lien; (H) contract; and (I) joint research agreement.

Cover sheets required by 37 CFR 3.28 seeking to record a governmental interest must also (1) indicate that the document relates to a governmental interest and (2) indicate, if applicable, that the document to be recorded is not a document affecting title.

A patent cover sheet may not refer to trademark applications or registrations.

Form PTO-1595, Recordation Form Cover Sheet, may be used as the cover sheet for recording docu- ments relating to patent(s) and/or patent application(s) in the Office.

OWNERSHIP AND ASSIGNMENT 302.07

300-9 Rev. 5, Aug. 2006

**> Form PTO-1595. Recordation Form Cover Sheet for Patents

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Rev. 5, Aug. 2006 300-10

Form PTO-1595. Recordation Form Cover Sheet for Patents (Guidelines for Completing)

OWNERSHIP AND ASSIGNMENT 302.07

300-11 Rev. 5, Aug. 2006

Form PTO-1595. Recordation Form Cover Sheet for Patents (Guidelines for Completing)

<

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Rev. 5, Aug. 2006 300-12

302.08 Mailing Address for Submitting Assignment Documents [R-3]

**>

37 CFR 3.27. Mailing address for submitting documents to be recorded.

Documents and cover sheets submitted by mail for recordation should be addressed to Mail Stop Assignment Recordation Ser- vices, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450, unless they are filed together with new applications.<

37 CFR 3.27 sets out how documents submitted for recording should be addressed to the Office. In order to ensure prompt and proper processing, documents and their cover sheets should be addressed to the ** >Mail Stop Assignment Recordation Services, Direc- tor of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450<, unless they are filed together with new applications**. Requests for recording documents which accompany new applica- tions should be addressed to the ** >Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313- 1450.<

302.09 Facsimile Submission of Assign- ment Documents [R-5]

Assignments and other documents affecting title may be submitted to the Office via facsimile (fax). See the USPTO Internet web site or MPEP § 1730 for the facsimile number. This process allows customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their fax machine. The customer’s fax machine must be con- nected to a dedicated line because recordation notices will be returned automatically to the sending fax num- ber through the Patent and Trademark Assignment System. If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.S. Postal Service first class mail. Recorded documents will not be returned with the “Notice of Recordation.”

Any assignment-related document for patent mat- ters submitted by facsimile must include:

(A) an identified application or patent number;

(B) one cover sheet to record a single transaction; and

(C) payment of the recordation fee by a credit card >(use of the Credit Card form, PTO-2038 (see MPEP § 509), is required for the credit card informa- tion to be kept separate from the assignment records)< or a USPTO Deposit Account.

The following documents cannot be submitted via facsimile:

(A) Assignments submitted concurrently with newly filed patent applications;

(B) Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same prop- erty);

(C) Requests for corrections to documents recorded previously;

(D) Requests for “at cost” recordation services; and

(E) Resubmission of a non-recorded assignment.

The date of receipt accorded to an assignment doc- ument sent to the Office by facsimile transmission is the date the complete transmission is received in the Office. See MPEP § 502.01. The benefits of a certifi- cate of transmission under 37 CFR 1.8 are available.

If a document submitted by fax is determined not to be recordable, the entire document, with its associ- ated cover sheet, and the Office “Notice of Non- Recordation” will be transmitted via fax back to the sender. Once corrections are made, the initial submis- sion, amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely resubmission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.

The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.

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302.10 Electronic Submission of Assign- ment Documents [R-5]

37 CFR 3.31. Cover sheet content.

*****

(a)(7) The signature of the party submitting the document. For an assignment document or name change filed electronically, the person who signs the cover sheet must either:

**> (i) Place a symbol comprised of letters, numbers, and/or

punctuation marks between forward slash marks (e.g. /Thomas O’ Malley III/) in the signature block on the electronic submission; or<

(ii) Sign the cover sheet using some other form of elec- tronic signature specified by the Director.

*****

37 CFR 1.4. Nature of correspondence and signature requirements.

*****

(d)(2) **>S-signature. An S-signature is a signature inserted between forward slash marks, but not a handwritten sig- nature as defined by § 1.4(d)(1). An S-signature includes any sig- nature made by electronic or mechanical means, and any other mode of making or applying a signature not covered by either a handwritten signature of § 1.4(d)(1) or an Office Electronic Filing System (EFS) character coded signature of § 1.4(d)(3). Corre- spondence being filed in the Office in paper, by facsimile trans- mission as provided in § 1.6(d), or via the Office Electronic Filing System as an EFS Tag(ged) Image File Format (TIFF) attachment, for a patent application, patent, or a reexamination proceeding may be S-signature signed instead of being personally signed (i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) are as follows.<

(i) The S-signature must consist only of letters, or Ara- bic numerals, or both, with appropriate spaces and commas, peri- ods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./); and

(ii) **>A patent practitioner (§ 1.32(a)(1)), signing pursu- ant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitio- ner’s registration number; otherwise the number character may not be used in an S-signature.<

(iii) The signer’s name must be: (A) Presented in printed or typed form preferably

immediately below or adjacent the S-signature, and (B) Reasonably specific enough so that the identity of

the signer can be readily recognized.

(3) EFS character coded signature. Correspondence in character coded form being filed via the Office Electronic Filing System for a patent application or patent may be signed electroni- cally. The electronic signature must consist only of letters of the English alphabet, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctu- ation. The person signing the correspondence must personally insert the electronic signature with a first single forward slash mark before, and a second single forward slash mark after, the electronic signature (e.g., /Dr. James T. Jones, Jr./).

(4) Certifications. (i) Section 10.18 certifications: The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 10.18 (b) of this chapter. Violations of § 10.18 (b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the impo- sition of sanctions under § 10.18(c) of this chapter. Any practitio- ner violating § 10.18(b) of this chapter may also be subject to disciplinary action. See §§ 10.18 (d) and 10.23 (c)(15) of this chapter.

(ii) Certifications as to the signature: (A) Of another: A person submitting a document signed by another under para- graphs (d)(2) or (d)(3) of this section is obligated to have a reason- able basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature.

(B) Self certification: The person inserting a signa- ture under paragraphs (d)(2) or (d)(3) of this section in a docu- ment submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.

(C) Sanctions: Violations of the certifications as to the signature of another or a person’s own signature, set forth in paragraphs (d)(4)(ii)(A) and (B) of this section, may result in the imposition of sanctions under § 10.18 (c) and (d) of this chapter.

*****

Assignments and other documents affecting title may be submitted to the Office via the Office’s Elec- tronic Filing System (EFS) or the Electronic Patent Assignment System (EPAS). See the USPTO Internet web site for additional information regarding EFS and EPAS. These systems allow customers to submit their documents directly into the automated Patent and Trademark Assignment System and receive the result- ing recordation notice at their fax machine. The cus- tomer’s fax machine must be connected to a dedicated line because recordation notices will be returned auto- matically to the sending fax number through the Patent and Trademark Assignment System. If the Office system is unable to complete transmission of the recordation notice, the notice will be printed and mailed to the sender by U.S. Postal Service first class mail. Recorded documents will not be returned with the “Notice of Recordation.”

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Any assignment related document submitted by EFS or EPAS must include:

(A) an identified application or patent number; (B) one cover sheet to record a single transaction;

and (C) payment of the recordation fee by a credit

card >(use of the Credit Card form , PTO-2038 (see MPEP § 509), is required for the credit card informa- tion to be kept separate from the assignment records)< or a USPTO Deposit Account.

For an assignment document filed electronically, the person who signs the cover sheet can sign with a symbol comprised of letters, numbers, and/or punctu- ation marks between forward slash marks (e.g., /Tho- mas O’ Malley III/) in the signature block on the electronic submission. If EFS or EPAS is used, then the letters must be letters of the English alphabet, the numbers must be Arabic numerals, and the punctua- tion marks must be commas, periods, apostrophes, or hyphens, in the signature of the cover sheet.

The following documents cannot be submitted via EPAS:

(A) Assignments submitted concurrently with newly filed patent applications;

(B) Documents with two or more cover sheets (e.g., a single document with one cover sheet to record an assignment, and a separate cover sheet to record separately a license relating to the same prop- erty);

(C) Requests for corrections to documents recorded previously; and

(D) Resubmission of a non-recorded assignment.

The date of receipt accorded to an assignment doc- ument sent to the Office by EFS or EPAS is the date the complete transmission is received in the Office.

If a document submitted by EFS or EPAS is deter- mined not to be recordable, the entire document, with its associated cover sheet, and the Office “Notice of Non-Recordation” will be transmitted via fax back to the sender. Once corrections are made, the initial sub- mission, as amended, may then be resubmitted by mailing the corrected submission to the address set forth in 37 CFR 3.27. Timely submission will provide the sender with the benefit of the initial receipt date as the recordation date in accordance with 37 CFR 3.51.

The Patent and Trademark Assignment System assigns reel and frame numbers and superimposes recordation stampings on the processed and stored electronic images. Accordingly, copies of all recorded documents will have the reel and frame numbers and recordation stampings.

303 Assignment Documents Not En- dorsed on Pending Applications

Certified copies of patent applications as filed do not include an indication of assignment documents. Applicants desiring an indication of assignment docu- ments of record should request separately certified copies of assignment documents and submit the fees required by 37 CFR 1.19.

When the assignment condition of an application is significant, such as when applications of different inventors contain conflicting claims or there is a ques- tion as to who should direct prosecution, it is neces- sary for the examiner to obtain assignment information from PALM. See MPEP § 320.

306 Assignment of Division, Continua- tion, Substitute, and Continuation- in-Part in Relation to Parent Appli- cation [R-3]

In the case of a division or continuation application, a prior assignment recorded against the original appli- cation is applied >(effective)< to the division or con- tinuation application because the assignment recorded against the original application gives the assignee rights to the subject matter common to both applica- tions. >Although the assignment recorded against an original application is applied to the division or con- tinuation application, the Office’s assignment records will only reflect an assignment of a division or contin- uation application (or any other application) if a request for recordation in compliance with 37 CFR 3.28, accompanied by the required fee (37 CFR 3.41), is filed.<

In the case of a substitute or continuation-in-part application, a prior assignment of the original applica- tion is not applied >(effective)< to the substitute or continuation-in-part application because the assign- ment recorded against the original application gives the assignee rights to only the subject matter common to both applications. Substitute or continuation-in-part

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applications require >the recordation of< a new assignment if they are to be issued to an assignee. >See 37 CFR 3.81.< ** 306.01 Assignment of an Application -

Claiming the Benefits of a Provi- sional Application [R-3]

If an application which claims the earlier filing date of a provisional application under 35 U.S.C. 119(e) includes only subject matter which formed a part of the provisional application, an assignment recorded against the provisional application will be effective in the later application, similar to the practice with respect to continuations and divisions filed under 35 U.S.C. 120. See MPEP § 306. If an application claiming the earlier filing date of a provisional appli- cation includes subject matter that is not common with subject matter of the provisional application, new assignment papers must be **>recorded for< the * application >claiming the benefit of the provisional application<, similar to the practice with respect to continuations-in-part filed under 35 U.S.C. 120. See MPEP § 306.

307 Issue to Assignee [R-3]

35 U.S.C. 152. Issue of patent to assignee. Patents may be granted to the assignee of the inventor of record

in the Patent and Trademark Office, upon the application made and the specification sworn to by the inventor, except as otherwise provided in this title.

**> 37 CFR 3.81. Issue of patent to assignee.

(a) With payment of the issue fee: An application may issue in the name of the assignee consistent with the application’s assignment where a request for such issuance is submitted with payment of the issue fee, provided the assignment has been previ- ously recorded in the Office. If the assignment has not been previ- ously recorded, the request must state that the document has been filed for recordation as set forth in § 3.11.

(b) After payment of the issue fee: Any request for issuance of an application in the name of the assignee submitted after the date of payment of the issue fee, and any request for a patent to be corrected to state the name of the assignee, must state that the assignment was submitted for recordation as set forth in § 3.11 before issuance of the patent, and must include a request for a cer- tificate of correction under § 1.323 of this chapter (accompanied by the fee set forth in § 1.20(a)) and the processing fee set forth in § 1.17 (i) of this chapter.

(c) Partial assignees. (1) If one or more assignee, together with one or more inventor, holds the entire right, title, and interest

in the application, the patent may issue in the names of the assignee and the inventor.

(2) If multiple assignees hold the entire right, title, and interest to the exclusion of all the inventors, the patent may issue in the names of the multiple assignees.<

Normally, for a patent to issue to an assignee, a request for issuance of the application in the name* of the assignee* must be filed in the United States Patent and Trademark Office (Office) at a date not later than the day on which the issue fee is paid. **>Such a request must indicate that the assignment has been previously recorded in the Office. If the assignment has not been previously recorded in the Office, the request must state that the document has been filed for recordation as set forth in 37 CFR 3.11. See 37 CFR 3.81(a).

If a request for issuance to an assignee pursuant to 37 CFR 3.81(b) is submitted after the day on which the issue fee is paid, the request under 37 CFR 3.81(b) must include a request for a certificate of correction under 37 CFR 1.323 (accompanied by the fee set forth in 37 CFR 1.20(a)) and the processing fee set forth in 37 CFR 1.17(i). The request under 37 CFR 3.81(b) must state that the assignment was submitted for recordation as set forth in 37 CFR 3.11 before issu- ance of the patent. The Office will issue a certificate of correction to reflect that the patent issued to the assignee provided the requirements of 37 CFR 3.81(b) and 37 CFR 1.323 are complied with.<

Only the first appearing name of an assignee will be printed on the patent where multiple names for the same party are identified on the **>Fee(s)< Transmit- tal form, PTOL-85B. Such multiple names may occur when both a legal name and an “also known as” or “doing business as” name is also included. This print- ing practice will not, however, affect the existing practice of recording assignments with the Office in the Assignment Division. The assignee entry on form PTOL-85B should still be completed to indicate the assignment data as recorded in the Office. For exam- ple, the assignment filed in the Office and, therefore, the PTOL-85B assignee entry might read “Smith Company doing business as (d.b.a.) Jones Company.” The assignee entry on the printed patent will read “Smith Company.”

Irrespective of whether the assignee participates in the prosecution of the application, the patent issues to the assignee if so indicated on the **>Fee(s)< Trans- mittal form PTOL-85B. Unless an assignee’s name

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and address are identified in item 3 of the **>Fee(s)< Transmittal form PTOL-85B, the patent will issue to the applicant. Assignment data printed on the patent will be based solely on the information so supplied. >Assignment information printed on a patent is not updated after a patent is issued, and may not be reflec- tive of the assignment recorded in the Office subse- quent to the issuance of the patent. Detailed assignment information can be found by performing an assignment search on the USPTO Internet website, and by inspecting the recorded assignment docu- ments.<

A request for a certificate of correction under 37 CFR 1.323 (see MPEP § 1481 and § 1485) arising from incomplete or erroneous assignee’s name fur- nished >, or a missing assignee’s name,< in item 3 of PTOL-85B will not be granted unless a **>request under 37 CFR 3.81(b) has been granted and the assignment was submitted for recordation as set forth in 37 CFR 3.11 before the patent issued. Any such request under 37 CFR 3.81(b)< should be directed to the Office of Petitions and should include:

(A) the *>processing< fee required by 37 CFR 1.17(*>i<);

(B) a request **>for issuance of the application in the name of the assignee, or a request that a patent be corrected to state the name of the assignee;<

(C) a statement that the **>assignment was sub- mitted for recordation as set forth in 37 CFR 3.11 before the issuance of the patent;< and

(D) a **>request for a certificate of correction under 37 CFR 1.323 accompanied by the fee set forth in 37 CFR 1.20(a).<

309 Restrictions Upon Employees of >U.S.< Patent and Trademark Of- fice [R-3]

35 U.S.C. 4. Restrictions on officers and employees as to interests in patents.

Officers and employees of the Patent and Trademark Office shall be incapable, during the period of their appointments and for one year thereafter, of applying for a patent and of acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent, issued or to be issued by the Office. In patents applied for thereafter they shall not be entitled to any priority date earlier than one year after the termination of their appointment.

310 Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development [R-3]

Where a Government contractor retains U.S. domestic patent rights, the contractor is under an obli- gation by virtue of 35 U.S.C. 202(c)(6) to include the following statement at the beginning of the applica- tion and any patents issued thereon:

“The U.S. Government has a paid-up license in this invention and the right in limited circumstances to require the patent owner to license others on reason- able terms as provided for by the terms of (contract No. or Grant No.) awarded by (Agency).”

If reference is made in the first sentence>(s)< of the *>specification following the title< to prior copend- ing applications of the applicant ** (37 CFR 1.78(a) and MPEP § 201.11), ** the above “Government License Rights” statement should follow immediately as the second paragraph of the specification.

If there is no reference to an earlier application, the “Government License Rights” statement should appear as the first paragraph of the specification. See 37 CFR 1.77.

311 Filing of Notice of Arbitration Awards [R-3]

35 U.S.C. 294. Voluntary arbitration. (a) A contract involving a patent or any right under a patent

may contain a provision requiring arbitration of any dispute relat- ing to patent validity or infringement arising under the contract. In the absence of such a provision, the parties to an existing patent validity or infringement dispute may agree in writing to settle such dispute by arbitration. Any such provision or agreement shall be valid, irrevocable, and enforceable, except for any grounds that exist at law or in equity for revocation of a contract.

**> (b) Arbitration of such disputes, awards by arbitrators, and

confirmation of awards shall be governed by title 9, to the extent such title is not inconsistent with this section. In any such arbitra- tion proceeding, the defenses provided for under section 282 of this title shall be considered by the arbitrator if raised by any party to the proceeding.

(c) An award by an arbitrator shall be final and binding between the parties to the arbitration but shall have no force or effect on any other person. The parties to an arbitration may agree that in the event a patent which is the subject matter of an award is subsequently determined to be invalid or unenforceable in a judg- ment rendered by a court of competent jurisdiction from which no appeal can or has been taken, such award may be modified by any

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court of competent jurisdiction upon application by any party to the arbitration. Any such modification shall govern the rights and obligations between such parties from the date of such modifica- tion.<

(d) When an award is made by an arbitrator, the patentee, his assignee or licensee shall give notice thereof in writing to the Director. There shall be a separate notice prepared for each patent involved in such proceeding. Such notice shall set forth the names and addresses of the parties, the name of the inventor, and the name of the patent owner, shall designate the number of the patent, and shall contain a copy of the award. If an award is modi- fied by a court, the party requesting such modification shall give notice of such modification to the Director. The Director shall, upon receipt of either notice, enter the same in the record of the prosecution of such patent. If the required notice is not filed with the Director, any party to the proceeding may provide such notice to the Director.

(e) The award shall be unenforceable until the notice required by subsection (d) is received by the Director.

37 CFR 1.335. Filing of notice of arbitration awards. (a) Written notice of any award by an arbitrator pursuant to

35 U.S.C. 294 must be filed in the Patent and Trademark Office by the patentee, or the patentee’s assignee or licensee. If the award involves more than one patent a separate notice must be filed for placement in the file of each patent. The notice must set forth the patent number, the names of the inventor and patent owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the award.

(b) If an award by an arbitrator pursuant to 35 U.S.C. 294 is modified by a court, the party requesting the modification must file in the Patent and Trademark Office, a notice of the modifica- tion for placement in the file of each patent to which the modifica- tion applies. The notice must set forth the patent number, the names of the inventor and patent owner, and the names and addresses of the parties to the arbitration. The notice must also include a copy of the court’s order modifying the award.

(c) Any award by an arbitrator pursuant to 35 U.S.C. 294 shall be unenforceable until any notices required by paragraph (a) or (b) of this section are filed in the Patent and Trademark Office. If any required notice is not filed by the party designated in para- graph (a) or (b) of this section, any party to the arbitration pro- ceeding may file such a notice.

The written notices required by this section should be directed to the attention of the Office of the Solici- tor. The Office of the Solicitor will be responsible for processing such notices.

313 Recording of Licenses, Security Interests, and Other Documents Other Than Assignments [R-3]

In addition to assignments and documents required to be recorded by Executive Order 9424, documents affecting title to a patent or application will be

recorded in the Assignment Division of the United States Patent and Trademark Office (Office). Other documents not affecting title may be recorded at the discretion of the *>Director<. 37 CFR 3.11(a).

Thus, some documents which relate to patents or applications will be recorded, although they do not constitute a transfer or change of title. Typical of these documents which are accepted for recording are license agreements and agreements which convey a security interest. Such documents are recorded in the public interest in order to give third parties notifica- tion of equitable interests or other matters relevant to the ownership of a patent or application.

Any document returned unrecorded, which the sender nevertheless believes represents an unusual case which justifies recordation, may be submitted to the Office of Petitions with a petition under 37 CFR 1.181 requesting recordation of the document.

The recordation of a document is not a determina- tion of the effect of the document on the chain of title. The determination of what, if any, effect a document has on title will be made by the Office at such times as ownership must be established to permit action to be taken by the Office in connection with a patent or an application. See MPEP § 324.

314 Certificates of Change of Name or of Merger

Certificates issued by appropriate authorities show- ing a change of name of a business or a merger of businesses are recordable. Although a mere change of name does not constitute a change in legal entity, it is properly a link in the chain of title. Documents of merger are also proper links in the chain of title. They may represent a change of entity as well as a change of name.

315 Indexing Against a Recorded Cer- tificate [R-3]

Prior to amendment of the Rules of Practice to add Part 3 to 37 CFR, it had been the practice of the United States Patent and Trademark Office (Office) to process requests for “indexing” or “cross-referencing” additional patent numbers or application numbers against a document, other than an assignment, previ- ously recorded in the Assignment Division, upon sub- mission of a transmittal letter and recording fee. The

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Office no longer processes such indexing requests. Such requests do not comply with 37 CFR 3.11, 3.28, and 3.31, which require that each request for recorda- tion include the document to be recorded and a cover sheet.

Therefore, even where a document has already been recorded in the Assignment Division in connec- tion with a patent or patent application, a party that wishes recordation of that document with respect to additional patents and/or patent applications must submit the following to the Assignment Division:

(A) ** a * copy of the original document (which may consist of the previously recorded papers on which the Assignment Division has stamped the reel and frame numbers at which they are recorded, or a copy of such papers);

(B) a completed cover sheet (see 37 CFR 3.31 and MPEP § 302.07); and

(C) the appropriate recording fee (see 37 CFR 1.21(h) and 3.41).

The Office will assign a new recording date to that submission, update the assignment database, and microfilm the cover sheet and document, which shall become part of the official record.

317 Handling of Documents in the Assignment Division [R-3]

All documents and cover sheets submitted for recording are examined for formal requirements in the Assignment Division in order to separate documents which are recordable from those which are not record- able.

Documents and cover sheets that are considered not to be recordable are returned to the sender by the Assignment Division with an explanation. If the sender disagrees or believes that the document repre- sents an unusual case which justifies recordation, the sender may present the question to the *>Director< by way of petition under 37 CFR 1.181, filed with the Office of Petitions.

After an assignment and cover sheet have been recorded, they will be returned to the name and address indicated on the cover sheet to receive corre- spondence, showing the reel and frame number.

317.01 Recording Date

37 CFR 3.51. Recording date. The date of recording of a document is the date the document

meeting the requirements for recording set forth in this part is filed in the Office. A document which does not comply with the identification requirements of § 3.21 will not be recorded. Docu- ments not meeting the other requirements for recording, for exam- ple, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender where a correspondence address is available. The returned papers, stamped with the original date of receipt by the Office, will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of filing of the papers as the date of recording of the docu- ment. The procedure set forth in § 1.8 or § 1.10 of this chapter may be used for resubmissions of returned papers to have the ben- efit of the date of deposit in the United States Postal Service. If the returned papers are not corrected and resubmitted within the spec- ified period, the date of filing of the corrected papers will be con- sidered to be the date of recording of the document. The specified period to resubmit the returned papers will not be extended.

The date of recording of a document is the date the document meeting the requirements for recording set forth in the regulations is filed in the Office. A docu- ment which does not comply with the identification requirements of 37 CFR 3.21 will not be recorded. Documents not meeting the other requirements for recording, for example, a document submitted without a completed cover sheet or without the required fee, will be returned for correction to the sender when a correspondence address is available.

317.02 Correction of >Unrecorded< Returned Documents and Cover Sheets [R-3]

Assignment documents and cover sheets>, or cop- ies of the same,< which are returned by Assignment Division will be stamped with the original date of receipt by the Office and will be accompanied by a letter which will indicate that if the returned papers are corrected and resubmitted to the Office within the time specified in the letter, the Office will consider the original date of receipt of the papers as the date of recording of the document. See 37 CFR 3.51. The certification procedure under 37 CFR 1.8 or the “Express Mail” procedure under 37 CFR 1.10 may be used for resubmissions of returned papers to obtain the benefit of the date of deposit in the United States

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Postal Service >to establish that the papers were returned within the time period specified. Instead of mailing or faxing the returned documents and cover sheets, the returned documents may be resubmitted using the Electronic Patent Assignment System<. If the returned papers are not corrected and resubmitted within the specified period, the date of receipt of the corrected papers will be considered to be the date of recording of the document. The specified period to resubmit the returned papers will not be extended.

317.03 Effect of Recording

37 CFR 3.54. Effect of recording. The recording of a document pursuant to § 3.11 is not a deter-

mination by the Office of the validity of the document or the effect that document has on the title to an application, a patent, or a registration. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office.

37 CFR 3.56. Conditional assignments. Assignments which are made conditional on the performance

of certain acts or events, such as the payment of money or other condition subsequent, if recorded in the Office, are regarded as absolute assignments for Office purposes until canceled with the written consent of all parties or by the decree of a court of compe- tent jurisdiction. The Office does not determine whether such con- ditions have been fulfilled.

The recording of a document is not a determination by the Office of the validity of the document or the effect that document has on the title to an application or patent. When necessary, the Office will determine what effect a document has, including whether a party has the authority to take an action in a matter pending before the Office. See MPEP § 324.

37 CFR 3.56 provides that an assignment, which at the time of its execution is conditional on a given act or event, will be treated by the Office as an absolute assignment. This rule serves as notification as to how a conditional assignment will be treated by the Office in any proceeding requiring a determination of the owner of an application, patent, or registration. Since the Office will not determine whether a condition has been fulfilled, the Office will treat the submission of such an assignment for recordation as signifying that the act or event has occurred. A security agreement that does not convey the right, title, and interest of a patent property is not a conditional assignment.

318 Documents Not to be Placed in Files

Assignment documents submitted for recording should not be placed directly in application or patent files, but should be forwarded to Assignment Division for recording.

320 Title Reports [R-5]

The “title report” is a form which can be used under certain circumstances by the Assignment Division to report to someone within the Office the name of the owner of an application or patent as shown by the Assignment Division records on the date the title report is made. For example, a title report is requested by the Reexamination Preprocessing Staff when a request for reexamination is filed. Title reports may not be ordered by applicants or attorneys.

Information as to the title is not normally required by the examiner to examine an application. It is only in limited circumstances when the ownership becomes an issue and an examiner needs a title report. See MPEP § 303. Examiners may obtain a title report using the PALM Intranet >(select “General Informa- tion,” insert the appropriate application number, select “Search,” select “Assignments”)<. The screen result- ing from the search may be printed to yield the copy of the title report.

NOTE: The public can request a certified abstract of title. The fee for this service is set forth at 37 CFR 1.19(b)(4). See MPEP § 301.01 for a discussion of which assignment records are publicly available.

323 Procedures for Correcting Errors in Recorded Assignment Document [R-3]

An error in a recorded assignment document will be corrected by Assignment Division provided a “correc- tive document” is submitted. The “corrective docu- ment” must include the following:

(A) *>A copy of the< original assignment docu- ment with the corrections made therein. The correc- tions must be initialed and dated by the party conveying the interest; and

(B) A new Recordation Form Cover Sheet (form PTO-*>1595<) (See MPEP § 302.07).

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The new recordation form cover sheet must identify the submission as a “corrective document” submis- sion and indicate the reel and frame number where the incorrectly recorded assignment document appears. The person signing the new recordation form cover sheet must state that the information provided on the new cover sheet is true and correct and that any copy submitted is a true copy of the original document. The original cover sheet should be submitted with the cor- rective document. The corrective document will be recorded and given a new reel and frame number and recording date. The recording fee set forth in 37 CFR 1.21(h) is required for each patent application and patent against which the corrective document is being recorded. See MPEP § 302.06.

Corrections may be made on the original assign- ment document, for example, by lining out an incor- rect patent or application number in a merger or change of name (see MPEP § 314).

Office policy regarding recordation of assignment documents is directed toward maintaining a complete history of claimed interests in property and, therefore, recorded assignment documents will not be expunged even if subsequently found to be invalid. See In re Ratny, 24 USPQ2d 1713 (Comm’r Pat. 1992). >Once a document is recorded with the Assignment Services Division, the Assignment Services Division will not remove the papers from the record relating to that application or patent. See MPEP § 323.01(d).<

323.01 Correction of Error in Recorded Cover Sheet [R-3]

**> 37 CFR 3.34. Correction of cover sheet errors.

(a) An error in a cover sheet recorded pursuant to § 3.11 will be corrected only if:

(1) The error is apparent when the cover sheet is com- pared with the recorded document to which it pertains and

(2) A corrected cover sheet is filed for recordation. (b) The corrected cover sheet must be accompanied by a

copy of the document originally submitted for recording and by the recording fee as set forth in § 3.41.<

Any alleged error in a recorded cover sheet will only be corrected if the error is apparent from a com- parison with the recorded assignment document. The corrected cover sheet should be directed to Assign- ment Division.

>During the recording process, the Assignment Services Division will check to see that a cover sheet is complete and record the data exactly as it appears on the cover sheet. The Assignment Services Division does not compare the cover sheet with the assignment document (or other document affecting title). Once the document is recorded, the Office will issue a notice of recordation.

The party recording the document should carefully review the notice of recordation.

Typographical errors made by the Office will be corrected promptly and without charge upon written request directed to the Assignment Services Division. For any other error, the party recording the document is responsible for filing the papers and paying the recordation fees necessary to correct the error, using the procedures set forth in MPEP § 323.01(a) through § 323.01(c).< > 323.01(a) Typographical Errors in Cover

Sheet [R-3]

A party who wishes to correct a typographical error on a recorded cover sheet must submit the following to the Assignment Services Division:

(A) a copy of the originally recorded assignment document (or other document affecting title);

(B) a corrected cover sheet; and (C) the required fee for each application or patent

to be corrected (37 CFR 3.41).

See 37 CFR 3.34. The party requesting correction should also submit a copy of the original cover sheet, to facilitate comparison of the corrected cover sheet with the originally recorded document.

The party filing the corrected cover sheet should check the box titled “Other” in the area of the sheet requesting “Nature of Conveyance,” and indicate that the submission is to correct an error in a cover sheet previously recorded. The party should also identify the reel and frame numbers (if known), and the nature of the correction (e.g., “correction to the spelling of assignor’s name” or “correction of application num- ber or patent number”). The Office will then compare the corrected cover sheet with the original cover sheet and the originally recorded assignment document (or other document affecting title) to determine whether the correction is typographical in nature. If the error is

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typographical in nature, the Assignment Services Division will record the corrected cover sheet and correct the Assignment Historical Database.

I. TYPOGRAPHICAL ERRORS IN COVER SHEET THAT DO NOT AFFECT TITLE TO APPLICATION OR PATENT

If the original cover sheet contains a typographical error that does not affect title to the application or patent against which the original assignment or name change is recorded, the Assignment Services Division will correct the Assignment Historical Database and permit the recording party to keep the original date of recordation.

II. TYPOGRAPHICAL ERRORS IN COVER SHEET THAT DO AFFECT TITLE TO APPLICATION OR PATENT

If the original cover sheet contains a typographical error that affects title to the application or patent against which the assignment or name change is recorded, the recording party will not be entitled to keep the original date of recordation. Rather, the Assignment Services Division will correct its auto- mated records and change the date of recordation to the date the corrected cover sheet was received in the Office.

323.01(b) Typographical Errors in Re- corded Assignment Document [R-3]

If there is an error in the recorded assignment docu- ment (or other document affecting title) rather than in the cover sheet, the party responsible for an erroneous document (e.g., the assignor) must either create and record a new document or make corrections to the original document and re-record it. If an assignor is not available to correct an original document or exe- cute a new one, the assignee may submit an affidavit or declaration in which the assignee identifies the error and requests correction. The affidavit or declara- tion must be accompanied by a copy of the originally recorded papers, a cover sheet, and the required fee for each application or patent to be corrected (37 CFR 3.41). See In re Abacab International Computers Ltd., 21 USPQ2d 1078 (Comm’r Pat. 1987).

323.01(c) Assignment or Change of Name Improperly Filed and Recorded by Another Person Against Owner’s Application or Patent [R-3]

When the owner of an application or registration discovers that due to a typographical error, another party has improperly recorded an assignment or name change against the owner’ s application or patent, the owner must correct the error by having a corrected cover sheet filed with the Assignment Services Divi- sion.

The owner should contact the party who recorded the papers with the erroneous information and request that such party record corrective papers. However, if the party cannot be located or is unwilling to file cor- rective papers, then the true owner must record the necessary papers with the Assignment Services Divi- sion to correct the error.

Specifically, the owner should submit the following to the Assignment Services Division:

(A) a completed cover sheet identifying the appli- cation or patent against which the assignment was improperly recorded;

(B) an affidavit or declaration (1) identifying itself as the correct owner, (2) stating that the previ- ously recorded document was submitted with errone- ous information, and (3) providing the reel and frame number of the previously recorded document; and

(C) the required fee (37 CFR 3.41) for each appli- cation or patent to be corrected.

The affidavit or declaration should include a sum- mary of the true chain of title to make it clear that the chain of title for the application or patent identified should not be considered altered by the incorrect assignment or name change, and a statement that the original applicant or patentee or last correct assignee has been, and continues to be, the owner of the appli- cation, or patent at issue.

On the corrected cover sheet, the owner should check the box titled “Other” in the area of the cover sheet requesting the “Nature of Conveyance,” and indicate that the submission is to correct an error made in a previously recorded document that errone- ously affects the identified application(s), or patent(s). The party should also write the name of the correct

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owner in both the box requesting the name of the con- veying party and the box requesting the name and address of the receiving party; this is to make it clear that ownership never changed and that any assign- ment or name change recorded against the applica- tion(s) or patent(s) was erroneous.

323.01(d) Expungement of Assignment Records [R-3]

Petitions to correct, modify or “expunge” assign- ment records are rarely granted. Such petitions are granted only if the petitioner can prove that:

(A) the normal corrective procedures outlined in MPEP § 323.01(a) through § 323.01(c) will not pro- vide the petitioner with adequate relief; and

(B) the integrity of the assignment records will not be affected by granting the petition.

Even if a petition to “expunge” a document is granted with respect to a particular application or patent, the image of the recorded document will remain in the records of the Assignment Services Division at the same reel and frame number, and the image will appear when someone views that reel and frame number. The Office will, however, delete the links to the application or patent that was the subject of the petition, so that no information about the recorded document will appear when someone searches for that application or patent number in the Assignment Historical Database.<

324 Establishing Right of Assignee To Take Action [R-5]

37 CFR 3.71. Prosecution by assignee. (a) Patents — conducting of prosecution. One or more

assignees as defined in paragraph (b) of this section may, after becoming of record pursuant to paragraph (c) of this section, con- duct prosecution of a national patent application or a reexamina- tion proceeding to the exclusion of either the inventive entity, or the assignee(s) previously entitled to conduct prosecution.

(b) Patents — assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are:

(1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or

(2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or

patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined. A par- tial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexam- ined.

(c) Patents — Becoming of record. An assignee becomes of record either in a national patent application or a reexamination proceeding by filing a statement in compliance with § 3.73(b) that is signed by a party who is authorized to act on behalf of the assignee.

(d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit docu- ments to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).

37 CFR 3.73. Establishing right of assignee to take action. (a) The inventor is presumed to be the owner of a patent

application, and any patent that may issue therefrom, unless there is an assignment. The original applicant is presumed to be the owner of a trademark application or registration, unless there is an assignment.

(b)(1) In order to request or take action in a patent or trade- mark matter, the assignee must establish its ownership of the patent or trademark property of paragraph (a) of this section to the satisfaction of the Director. The establishment of ownership by the assignee may be combined with the paper that requests or takes the action. Ownership is established by submitting to the Office a signed statement identifying the assignee, accompanied by either:

**> (i) Documentary evidence of a chain of title from the

original owner to the assignee (e.g., copy of an executed assign- ment). For trademark matters only, the documents submitted to establish ownership may be required to be recorded pursuant to § 3.11 in the assignment records of the Office as a condition to per- mitting the assignee to take action in a matter pending before the Office. For patent matters only, the submission of the documen- tary evidence must be accompanied by a statement affirming that the documentary evidence of the chain of title from the original owner to the assignee was or concurrently is being submitted for recordation pursuant to § 3.11; or<

(ii) A statement specifying where documentary evidence of a chain of title from the original owner to the assignee is recorded in the assignment records of the Office (e.g., reel and frame number).

(2) The submission establishing ownership must show that the person signing the submission is a person authorized to act on behalf of the assignee by:

(i) Including a statement that the person signing the submission is authorized to act on behalf of the assignee; or

(ii) Being signed by a person having apparent author- ity to sign on behalf of the assignee, e.g., an officer of the assignee.

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(c) For patent matters only: (1) Establishment of ownership by the assignee must be

submitted prior to, or at the same time as, the paper requesting or taking action is submitted.

(2) If the submission under this section is by an assignee of less than the entire right, title and interest, such assignee must indicate the extent (by percentage) of its ownership interest, or the Office may refuse to accept the submission as an establishment of ownership.

The owner or assignee of a patent property can take action in a patent application or patent proceed- ing in numerous instances. The owner or assignee can sign a reply to an Office action (37 CFR 1.33(b)(3) and (4)), a request for a continued prosecution appli- cation under 37 CFR 1.53(d) (MPEP § 201.06(d)), a terminal disclaimer (MPEP § 1490), Fee(s) Transmit- tal (PTOL-85B) (MPEP § 1306), or a request for sta- tus of an application (MPEP § 102). The owner or assignee can file an application under 37 CFR 1.47(b) (MPEP § 409.03(b)), appoint its own registered patent **>practitioner< to prosecute an application (37 CFR 1.32 and MPEP § 402.07), grant a power to inspect an application (MPEP § 104), and acquiesce to express abandonment of an application (MPEP § 711.01). The owner or assignee consents to the filing of a reissue application (MPEP § 1410.01), and to the correction of inventorship (MPEP § 201.03 or § 1481).

I. THE ASSIGNEE/OWNER THAT CAN TAKE ACTION IN PATENT MATTERS

The provisions of 37 CFR 3.71(b)(1) and (2) iden- tify the owner or assignee that can take action in patent matters, e.g., the assignee which may conduct the prosecution of a U.S. national application for a patent (35 U.S.C. 111(a)), or any other patent pro- ceeding (e.g., a reexamination proceeding, an interfer- ence proceeding). A national patent application is owned by one of the following individual or compos- ite entities:

(A) the inventor(s); (B) an assignee or multiple assignees of the

inventor(s); or (C) some combination of the assignee(s), and

inventor(s) who have not assigned away their right, title and interest in the application.

Pursuant to 37 CFR 3.73(b), a party must be estab- lished as the assignee by satisfying the requirements of that subsection, in order to be recognized as an

owner or part owner, for purposes of taking action in patent matters before the Office.

As discussed in subsection II below, all parties hav- ing any portion of the ownership must join in “taking action” (i.e., act together as a composite entity) in order to be entitled to conduct the prosecution in patent matters.

A. Individual and Partial Assignees

If there is a single assignee of the entire right, title and interest in the patent application, 37 CFR 3.71(b)(1) provides that the single assignee (i.e., indi- vidual assignee) may act alone to conduct the prose- cution of an application or other patent proceeding (upon complying with 37 CFR 3.73(b)).

If there is no assignee of the entire right, title and interest of the patent application, then two possibili- ties exist:

(A) The application has not been assigned, and ownership resides solely in the inventor(s) (i.e., the applicant(s)). In this situation, 37 CFR 3.71 does not apply, since there is no assignee, and the combination of all inventors is needed to conduct the prosecution of an application.

(B) The application has been assigned by at least one of the inventors, and there is thus at least one “partial assignee.” As defined in 37 CFR 3.71(b)(2), a partial assignee is any assignee of record who has less than the entire right, title and interest in the applica- tion. The application is owned by the combination of all partial assignees and all inventors who have not assigned away their right, title and interest in the application.

Where at least one inventor retains an ownership interest together with the partial assignee(s), the com- bination of all partial assignees and inventors retain- ing ownership interest is needed to conduct the prosecution of an application, unless one or more inventors have refused to join in the filing of the application and a petition under 37 CFR 1.47 has been granted. If a petition under 37 CFR 1.47 has been granted, then the assignee need only be the assignee of the entire interest of the 37 CFR 1.47 applicant to sign a power of attorney. See 37 CFR 1.32(b)(4). Where an applicant retains an ownership interest, the combination of all partial assignees and the applicant

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with the ownership interest is needed to conduct the prosecution of an application.

Where a reissue application is filed to correct inventorship in the patent by the deletion of the name of inventor X and inventor X has not assigned his/her rights to the patent, inventor X has an ownership interest in the patent. Inventor X must consent to the filing of the reissue application, even though inventor X is being deleted and need not sign the reissue oath or declaration. If inventor X has assigned his/her rights to the patent, then inventor X’s assignee must consent to the filing of the reissue application.

B. Example

Inventors A and B invent a process and file their application, signing the declaration for the patent application. Inventors A and B together may conduct prosecution. Inventor A then assigns all his/her rights in the application to Corporation X. As soon as Cor- poration X (now a partial assignee) is made of record in the application as a partial assignee (by filing a statement pursuant to 37 CFR 3.73(b) stating fifty percent ownership), Corporation X and Inventor B together may conduct prosecution. Corporation X and Inventor B then both assign their rights in the applica- tion to Corporation Y. As soon as Corporation Y (now an assignee of the entire right, title and interest) is made of record in the application as the assignee (by filing a statement pursuant to 37 CFR 3.73(b) stating one-hundred percent ownership), Corporation Y may, by itself, conduct prosecution.

II. ESTABLISHING OWNERSHIP

When an assignee first seeks to take action in a matter before the Office with respect to a patent appli- cation, patent, or reexamination proceeding, the assignee must establish its ownership of the property to the satisfaction of the Director. 37 CFR 3.73(b). The assignee’s ownership may be established under 37 CFR 3.73(b) by submitting to the Office, in the Office file related to the matter in which action is sought to be taken:

(A) documentary evidence of a chain of title from the original owner to the assignee (e.g., copy of an executed assignment submitted for recording) >and a statement affirming that the documentary evidence of the chain of title from the original owner to the

assignee was, or concurrently is, submitted for recor- dation pursuant to 37 CFR 3.11<; or

(B) a statement specifying, by reel and frame number, where such evidence is recorded in the Office.

Documents submitted to establish ownership **>are< required to be recorded>, or submitted for recordation pursuant to 37 CFR 3.11,< as a condition to permitting the assignee to take action in a matter pending before the Office.

The action taken by the assignee, and the 37 CFR 3.73(b) submission establishing that the assignee is the appropriate assignee to take such action, can be combined in one paper.

The establishment of ownership by the assignee must be submitted prior to, or at the same time as, the paper requesting or taking action is submitted. 37 CFR 3.73(c). If the submission establishing owner- ship is not present, the action sought to be taken will not be given effect. If the submission establishing ownership is submitted at a later date, that date will be the date of the request for action or the date of the assignee’s action taken.

The submission establishing ownership by the assignee must be signed by a party who is authorized to act on behalf of the assignee. See discussion below. Once 37 CFR 3.73(b) is complied with by an assignee, that assignee may continue to take action in that application, patent, or reexamination proceeding without filing a 37 CFR 3.73(b) submission each time, provided that ownership has not changed.

The submission establishing ownership by the assignee pursuant to 37 CFR 3.73(b) is generally referred to as the “statement under 37 CFR 3.73(b)” or the “37 CFR 3.73(b) statement.” A duplicate copy of the 37 CFR 3.73(b) statement is not required and should not be submitted. See 37 CFR 1.4(b) and MPEP § 502.04.

III. CONTINUING APPLICATIONS

When an assignee files a continuation or divisional application under 37 CFR 1.53, other than a continued prosecution application (CPA) under 37 CFR 1.53(d), the application papers must:

(A) refer to a statement filed under 37 CFR 3.73(b) in the parent application;

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(B) contain a copy of a statement filed under 37 CFR 3.73(b) in the parent application; or

(C) contain a newly executed statement under 37 CFR 3.73(b).

When a continuation-in-part application is filed by an assignee, a newly executed statement under 37 CFR 3.73(b) must be filed. When a CPA under 37 CFR 1.53(d) is filed, the statement filed under 37 CFR 3.73(b) in the parent application will serve as the statement for the CPA.

IV. REQUESTS FOR CONTINUED EXAMI- NATION

Where a Request for Continued Examination of an application is filed under 37 CFR 1.114 (which can be filed on or after May 29, 2000 for an application filed on or after June 8, 1995), the application is not con- sidered to be abandoned; rather the finality of the Office action is withdrawn and the prosecution con- tinues. Thus, the statement under 37 CFR 3.73(b) in the application will continue to serve as the statement establishing ownership.

V. PARTY WHO MUST SIGN

The submission establishing ownership must be signed by a party authorized to act on behalf of the assignee. The submission under 37 CFR 3.73(b) may be signed on behalf of the assignee in the following manner if the assignee is an organization (e.g., corpo- ration, partnership, university, government agency, etc.):

(A) The submission may be signed by a person in the organization having apparent authority to sign on behalf of the organization. 37 CFR 3.73(b)(2)(ii). An officer (chief executive officer, president, vice-presi- dent, secretary, or treasurer) is presumed to have authority to sign on behalf of the organization. The signature of the chairman of the board of directors is acceptable, but not the signature of an individual director. Modifications of these basic titles are accept- able, such as vice-president for sales, executive vice- president, assistant treasurer, vice-chairman of the board of directors. In foreign countries, a person who holds the title “Manager” or “Director” is normally an officer and is presumed to have the authority to sign on behalf of the organization. A person having a title (administrator, general counsel) that does not clearly

set forth that person as an officer of the assignee is not presumed to have authority to sign the submission on behalf of the assignee. A power of attorney (37 CFR 1.32(b)(4)) to a patent practitioner to prosecute a patent application executed by the applicant or the assignee of the entire interest does not make that prac- titioner an official of an assignee or empower the practitioner to sign the submission on behalf of the assignee.

(B) The submission may be signed by any person, if the submission sets forth that the person signing is authorized (or empowered) to act on behalf of the assignee, i.e., to sign the submission on behalf of the assignee. 37 CFR 3.73(b)(2)(i).

(C) The submission may be signed by a person empowered by an organizational resolution (e.g., cor- porate resolution, partnership resolution) to sign the submission on behalf of the assignee, if a copy of the resolution is, or was previously, submitted in the record.

Where a submission does not comply with (A), (B), or (C) above, evidence of the person’s authority to sign will be required.

VI. WHEN OWNERSHIP MUST BE ESTAB- LISHED

Examples of situations where ownership must be established under 37 CFR 3.73(b) are when the assignee: signs a request for a continued prosecution application under 37 CFR 1.53(d), unless papers establishing ownership under 37 CFR 3.73(b) were filed in the prior application and ownership has not changed (MPEP § 201.06(d)); signs a request for sta- tus of an application or gives a power to inspect an application (MPEP § 102 and § 104); acquiesces to express abandonment of an application (MPEP § 711.01); appoints its own registered attorney or agent to prosecute an application (37 CFR 3.71 and MPEP § 402.07); signs a terminal disclaimer (MPEP § 1490); consents to the filing of a reissue application (MPEP § 1410.01); consents to the correction of inventorship (MPEP § 201.03 or § 1481); files an application under 37 CFR 1.47(b) (MPEP § 409.03(b)) or 37 CFR 1.425; signs a Fee(s) Trans- mittal (PTOL-85B) (MPEP § 1306); or signs a reply to an Office action.

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VII. WHEN OWNERSHIP NEED NOT BE ESTABLISHED

Examples of situations where ownership need not be established under 37 CFR 3.73(b) are when the assignee: signs a request for a continued prosecution application under 37 CFR 1.53(d), where papers establishing ownership under 37 CFR 3.73(b) were filed in the prior application and ownership has not changed (MPEP § 201.06(d)); signs a small entity statement (MPEP § 509.03); signs a statement of common ownership of two inventions (MPEP § 706.02(l)(2)); signs a NASA or DOE property rights statement (MPEP § 151); signs an affidavit under 37 CFR 1.131 where the inventor is unavailable (MPEP § 715.04); signs a certificate under 37 CFR 1.8 (MPEP § 512); or files a request for reexamination of a patent under 37 CFR 1.510 (MPEP § 2210).

VIII. MULTIPLE ASSIGNEES

When an assignee seeks to take action in a matter before the Office with respect to a patent application, patent, or reexamination proceeding and the right, title, and interest therein is held by more than one assignee, each partial assignee must provide a submis- sion under 37 CFR 3.73(b). In each submission, the extent of each assignee’s interest must be set forth so that the Office can determine whether it has obtained action by the entirety of the right, title and interest holders (owners). 37 CFR 3.73(c)(2). If the extent of the partial assignee’s ownership interest is not set

forth in the submission under 37 CFR 3.73(b), the Office may refuse to accept the submission as an establishment of ownership interest.

IX. CONFLICTING 37 CFR 3.73(b) STATE- MENTS

Where there are two or more conflicting 37 CFR 3.73(b) statements in an application or other Office proceeding, the statement with the latest date of sub- mission to the Office will normally control as to establishment of the assignee. If, however, the owner- ship established as controlling is contested on the record by another party who has submitted a conflict- ing 37 CFR 3.73(b) statement, then the application or other proceeding shall be forwarded by the Office official in charge of the application or other proceed- ing to the Office of Patent Legal Administration for resolution of the ownership question. Generally, where there are two or more conflicting 37 CFR 3.73(b) statements in an application, the ownership entity that filed that application will be permitted to conduct the prosecution, and the other party that sub- mitted a 37 CFR 3.73(b) statement to establish its ownership may wish to consider filing an application under 37 CFR 1.47.

X. FORMS

Form PTO/SB/96 may be used to establish owner- ship under 37 CFR 3.73(b).

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**> Form PTO/SB/96. Statement Under 37 CFR 3.73(b)

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<

Chapter 400 Representative of Inventor or Owner

400-1 Rev. 5, Aug. 2005

401 U.S. Patent and Trademark Office Cannot Aid in Selection of Attorney

402 Power of Attorney; Acting in a Representative Capacity

402.01 Exceptions as to Registration 402.02 Appointment of Associate Attorney

or Agent 402.05 Revocation 402.06 Attorney or Agent Withdraws 402.07 Assignee Can Revoke Power of Attorney

of Applicant and Appoint New Power of Attorney

402.08 Application in Interference 402.09 International Application 402.10 Appointment/Revocation by Less Than

All Applicants or Owners 403 Correspondence — With Whom Held 403.01 Correspondence Held With Associate Attorney 403.02 Two *>Patent Practitioners< for Same Appli-

cation 404 Conflicting Parties Having Same *>Patent

Practitioner< 405 *>Patent Practitioner< Not of Record 406 Death of *>Patent Practitioner< 407 Suspended or Excluded *>Patent< Practitioner 408 Telephoning *>Patent Practitioner< 409 Death, Legal Incapacity, or

Unavailability of Inventor 409.01 Death of Inventor 409.01(a) Prosecution by Administrator or Executor 409.01(b) Proof of Authority of Administrator

or Executor 409.01(c) After Administrator or Executor Has

Been Discharged 409.01(d) Exception in Some Foreign Countries 409.01(e) If Applicant of Assigned Application Dies 409.01(f) Intervention of Executor Not Compulsory 409.02 Insanity or Other Legal Incapacity 409.03 Unavailability of Inventor 409.03(a) At Least One Joint Inventor Available 409.03(b) No Inventor Available 409.03(c) Legal Representatives of Deceased

Inventor Not Available 409.03(d) Proof of Unavailability or Refusal 409.03(e) Statement of Last Known Address 409.03(f) Proof of Proprietary Interest 409.03(g) Proof of Irreparable Damage 409.03(h) Processing and Acceptance of a 37 CFR 1.47

Application 409.03(i) Rights of the Nonsigning Inventor

409.03(j) Action Following Acceptance of a 37 CFR 1.47 Application

410 Representations to the U.S. Patent and Trademark Office

401 U.S. Patent and Trademark Office Cannot Aid in Selection of Attorney [R-5]

**>

37 CFR 1.31. Applicant may be represented by one or more patent practitioners or joint inventors.

An applicant for patent may file and prosecute his or her own case, or he or she may give a power of attorney so as to be repre- sented by one or more patent practitioners or joint inventors. The United States Patent and Trademark Office cannot aid in the selec- tion of a patent practitioner.<

An applicant for patent may file and prosecute his or her own application, and thus act as his or her own representative (pro se) before the Office. See 37 CFR 1.31. In presenting (whether by signing, filing, sub- mitting, or later advocating) papers to the Office, a pro se applicant is making the certifications under 37 CFR 10.18(b), and may be subject to sanctions under 37 CFR 10.18(c) for violations of 37 CFR 10.18(b)(2). See 37 CFR 1.4(d)(4). See also MPEP § 410.

If patentable subject matter appears to be disclosed in a pro se application and it is apparent that the appli- cant is unfamiliar with the proper preparation and prosecution of patent applications, the examiner may suggest to the applicant that it may be desirable to employ a registered patent attorney or agent. It is sug- gested that form paragraph 4.10 be incorporated in an Office action if the use of an attorney or agent is con- sidered desirable and if patentable subject matter exists in the application.

¶ 4.10 Employ Services of Attorney or Agent An examination of this application reveals that applicant is

unfamiliar with patent prosecution procedure. While an inventor may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skilled prep- aration and prosecution. The Office cannot aid in selecting an attorney or agent.

A listing of registered patent attorneys and agents is available on the USPTO Internet web site http://www.uspto.gov in the Site

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Index under “Attorney and Agent Roster”. Applicants may also obtain a list of registered patent attorneys and agents located in their area by writing to the Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

Examiner Note: The examiner should not suggest that applicant employ an

attorney or agent if the application appears to contain no patent- able subject matter.

402 Power of Attorney; Acting in a Representative Capacity [R-5]

37 CFR 1.32. Power of attorney. **> (a) Definitions.

(1) Patent practitioner means a registered patent attorney or registered patent agent under § 11.6.

(2) Power of attorney means a written document by which a principal authorizes one or more patent practitioners or joint inventors to act on his or her behalf.

(3) Principal means either an applicant for patent (§ 1.41(b)) or an assignee of entire interest of the applicant for patent or in a reexamination proceeding, the assignee of the entirety of ownership of a patent. The principal executes a power of attorney designating one or more patent practitioners or joint inventors to act on his or her behalf.

(4) Revocation means the cancellation by the principal of the authority previously given to a patent practitioner or joint inventor to act on his or her behalf.

(5) Customer Number means a number that may be used to:

(i) Designate the correspondence address of a patent application or patent such that the correspondence address for the patent application, patent or other patent proceeding would be the address associated with the Customer Number;

(ii) Designate the fee address (§ 1.363) of a patent such that the fee address for the patent would be the address asso- ciated with the Customer Number; and

(iii) Submit a list of patent practitioners such that those patent practitioners associated with the Customer Number would have power of attorney.<

(b) A power of attorney must: (1) Be in writing; (2) Name one or more representatives in compliance with

(c) of this section; (3) Give the representative power to act on behalf of the

principal; and (4) Be signed by the applicant for patent (§ 1.41(b)) or the

assignee of the entire interest of the applicant. (c) A power of attorney may only name as representative:

(1) One or more joint inventors (§ 1.45); (2) Those registered patent practitioners associated with a

Customer Number;

**> (3) Ten or fewer patent practitioners, stating the name and

registration number of each patent practitioner. Except as pro- vided in paragraph (c)(1) or (c)(2) of this section, the Office will not recognize more than ten patent practitioners as being of record in an application or patent. If a power of attorney names more than ten patent practitioners, such power of attorney must be accompanied by a separate paper indicating which ten patent prac- titioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed.<

>An applicant may give a power of attorney to one or more patent practitioners or joint inventors (37 CFR 1.31).< Powers of attorney naming firms of attorneys or agents filed in patent applications will not be recognized. Furthermore, a power of attorney that names more than ten patent practitioners will only be entered if Customer Number practice is used or if such power of attorney is accompanied by a separate paper indicating which ten patent practitioners named in the power of attorney are to be recognized by the Office as being of record in the application or patent to which the power of attorney is directed. If a power of attorney is not entered because more than ten patent practitioners were named, a copy of the power of attorney should be refiled with the separate paper as set forth in 37 CFR 1.32(c)(3).

Powers of attorney under 37 CFR 1.32(b) naming >joint inventors,< one or more registered individuals, or all registered practitioners associated with a Cus- tomer Number, may be made. See MPEP § 403 for Customer Number practice. >Where a power of attor- ney is given to ten or fewer patent practitioners, 37 CFR 1.32(c)(3) requires the name and registration number of each patent practitioner to be stated in the power of attorney. If the name submitted on the power of attorney does not match the name associated with the registration number provided in the Office of Enrollment and Discipline records for patent practitio- ners, the person that the Office will recognize as being of record will be the person associated with the regis- tration number provided, because the Office enters the registration number, not the name, when making the practitioner of record. Accordingly, if the wrong reg- istration number is provided, a new power of attorney will be required to correct the error.<

For a power of attorney to be valid, the attorney or agent appointed must be registered to practice before the U.S. Patent and Trademark Office in accordance with 37 CFR 11.6. >Any power of attorney given to a

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practitioner who has been suspended or disbarred by the Office is ineffective, and does not authorize the person to practice before the Office or to represent

applicants or patentees in patent matters.< Form PTO/ SB/81 may be used to appoint a registered >patent< practitioner.

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**> Form PTO/SB/81 Power of Attorney and Correspondence Address Indication Form

REPRESENTATIVE OF INVENTOR OR OWNER 402

400-5 Rev. 5, Aug. 2005

Privacy Act Statement

<

402 MANUAL OF PATENT EXAMINING PROCEDURE

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37 CFR 1.34. Acting in a representative capacity. **>When a patent practitioner acting in a representative

capacity appears in person or signs a paper in practice before the United States Patent and Trademark Office in a patent case, his or her personal appearance or signature shall constitute a representa- tion to the United States Patent and Trademark Office that under the provisions of this subchapter and the law, he or she is autho- rized to represent the particular party on whose behalf he or she acts. In filing such a paper, the patent practitioner must set forth his or her registration number, his or her name and signature. Fur- ther proof of authority to act in a representative capacity may be required.<

In accordance with 37 CFR 1.34, a paper filed by a registered patent attorney or agent in an application in which he or she is not of record must include his or her name and registration number with his or her sig- nature. Acceptance of papers filed in patent applica- tions and reexamination proceedings by registered attorneys and agents upon a representation that the attorney or agent is authorized to act in a representa- tive capacity is for the purpose of facilitating replies on behalf of applicants in patent applications and, fur- ther, to obviate the need for filing powers of attorney in individual applications or patents when there has been a change in composition of law firms or corpo- rate patent staffs. Interviews with a registered attorney or agent not of record will, in view of 35 U.S.C. 122, be conducted only on the basis of information and files supplied by the attorney or agent. A person act- ing in a representative capacity may not sign (A) a power of attorney (37 CFR 1.32(b)(4)), (B) a docu- ment granting access to an application (except where an executed oath or declaration has not been filed, and the patent practitioner was named in the papers accompanying the application papers - 37 CFR 1.14(c)), (C) a change of correspondence address (except where an executed oath or declaration has not been filed, and the patent practitioner filed the appli- cation - 37 CFR 1.33(a)), (D) a terminal disclaimer (37 CFR 1.321(b)(1)(iv)), or (E) a request for an express abandonment without filing a continuing application (37 CFR 1.138(b)).

A power of attorney or authorization given to a reg- istered Canadian patent agent, to be valid, must be given by the applicants, all of whom are located in Canada. See 37 CFR 11.6(c).

When an application for patent is filed accompa- nied by a power of attorney to a person *>who is nei- ther< registered to practice before the United States

Patent and Trademark Office >nor named as an inven- tor in the application<, the Office of Initial Patent Examination will send the official filing receipt directly to the *>first named inventor<, together with an explanatory letter. A copy of the letter will be sent to the person named in the power and a copy placed in the file without being given a paper number. The name of the unregistered person will not be added to the list of patent practitioners of record for the appli- cation in the Office’s electronic records and the exam- iner will communicate only with the applicant directly ** unless and until the applicant appoints a recog- nized practitioner.

Form paragraph 4.09 may be used to notify appli- cant that the attorney or agent is not registered. **>

¶ 4.09 Unregistered Attorney or Agent An examination of this application reveals that applicant has

attempted to appoint an attorney or agent who is neither registered to practice before the U.S. Patent and Trademark Office in patent matters nor one of the named inventors in the application, con- trary to the Code of Federal Regulations, 37 CFR 1.31 and 1.32. Therefore, the appointment is void, ab initio. We will not recog- nize the appointment and all correspondence concerning this application must be signed by: 1) all named applicants (inven- tors), 2) all the owners of the rights to the invention, or 3) a regis- tered attorney or agent duly appointed by the inventor(s) or the owner(s). Furthermore, all communications from the Office will be addressed to the first named inventor, unless specific instruc- tions to the contrary are supplied by the applicant(s) for patent or owner(s).

While an applicant may prosecute the application, lack of skill in this field usually acts as a liability in affording the maximum protection for the invention disclosed. Applicant is, therefore, encouraged to secure the services of a registered patent attorney or agent (i.e., registered to practice before the U.S. Patent and Trade- mark Office) to prosecute the application, since the value of a patent is largely dependent upon skillful preparation and prosecu- tion.

The Office cannot aid you in selecting a registered attorney or agent, however, a list of attorneys and agents registered to practice before the U.S. Patent and Trademark Office is available from the USPTO web site, http://www.uspto.gov. For assistance locating this information, contact the Office of Enrollment and Discipline at (571) 272-4097 or call the Inventors Assistance Center toll-free number, 1(800)786-9199.

Examiner Note: This form paragraph is to be used ONLY after ensuring that the

named representative is not registered with the Office. A PALM inquiry should be first made and if no listing is given, the Office of Enrollment and Discipline should be contacted to determine the current “recognition” status of the individual named by the appli- cant in a “power of attorney.” If the named individual is NOT

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registered or otherwise recognized by the Office, the correspon- dence address on the face of the file should be promptly changed to that of the first named inventor unless applicant specifically provides a different “correspondence address.” A copy of the Office communication incorporating this form paragraph should also be mailed to the unregistered individual named by the appli- cant in the “power of attorney.” If desired, you may include with your communication, a list of the registered practitioners from applicant’s Zip Code copied from the Registered Attorney/Agent Roster posted on the USPTO Internet web site http:// www.uspto.gov.

< See MPEP § 601.03 for change of correspondence

address. See MPEP § 201.06(c) for change in the power of attorney in continuation or divisional appli- cations filed under 37 CFR 1.53(b). See MPEP § 403 for the addition and/or deletion of a practitioner from the list of practitioners associated with a Customer Number. For a representative of a requester of reex- amination, see MPEP § 2213.

37 CFR 10.18. Signature and certificate for correspon- dence filed in the Patent and Trademark Office.

(a) For all documents filed in the Office in patent, trade- mark, and other non-patent matters, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Patent and Trade- mark Office must bear a signature by such practitioner complying with the provisions of § 1.4(d), § 1.4(e), or § 2.193(c)(1) of this chapter.

(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party’s own knowl- edge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this paragraph may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom; and

(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circum- stances, that —

(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of prosecution before the Office;

(ii) The claims and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the estab- lishment of new law;

(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

(c) Violations of paragraph (b)(1) of this section by a practi- tioner or non-practitioner may jeopardize the validity of the appli- cation or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom. Viola- tions of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions as deemed appropriate by the Commissioner, or the Commissioner's designee, which may include, but are not limited to, any combination of —

(1) Holding certain facts to have been established; (2) Returning papers; (3) Precluding a party from filing a paper, or presenting

or contesting an issue; (4) Imposing a monetary sanction; (5) Requiring a terminal disclaimer for the period of the

delay; or (6) Terminating the proceedings in the Patent and Trade-

mark Office. (d) Any practitioner violating the provisions of this section

may also be subject to disciplinary action. See § 10.23(c)(15).

37 CFR 10.18(a) emphasizes that every paper filed by a practitioner must be personally signed by the practitioner, except those required to be signed by the applicant or party. 37 CFR 10.18(b) provides that, by presenting any paper to the Office, the party present- ing such paper (whether a practitioner or nonpractitio- ner) is: (1) certifying that the statements made therein are subject to the declaration clause of 37 CFR 1.68; and (2) making the certifications required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure. See MPEP § 410. 37 CFR 10.18(d) provides that any practitioner violating the provisions of 37 CFR 10.18 may also be subject to disciplinary action (see 37 CFR 10.23(c)(15)), thus clarifying that a practitioner may be subject to disci- plinary action in lieu of, or in addition to, the sanc- tions set forth in 37 CFR 10.18(c) for violations of 37 CFR 10.18. See also 37 CFR 1.4(d)(4).

The certifications in 37 CFR 10.18(b) apply to all papers filed in the Office, including allegations of improper conduct made by a registered practitioner in any Office proceeding.

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37 CFR 10.11. Removing names from the register. A letter may be addressed to any individual on the register, at

the address of which separate notice was last received by the Director, for the purpose of ascertaining whether such individual desires to remain on the register. The name of any individual fail- ing to reply and give any information requested by the Director within a time limit specified will be removed from the register and the names of individuals so removed will be published in the Offi- cial Gazette. The name of any individual so removed may be rein- stated on the register as may be appropriate and upon payment of the fee set forth in § 1.21(a)(3) of this subchapter.

See also MPEP § 1702.

402.01 Exceptions as to Registration [R-5]

37 CFR 11.9. Limited recognition in patent matters. (a) Any individual not registered under § 11.6 may, upon a

showing of circumstances which render it necessary or justifiable, and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall not extend further than the application or applications specified. Lim- ited recognition shall not be granted while individuals who have passed the examination or for whom the examination has been waived are awaiting registration to practice before the Office in patent matters.

(b) A nonimmigrant alien residing in the United States and fulfilling the provisions of § 11.7(a) and (b) may be granted lim- ited recognition if the nonimmigrant alien is authorized by the Bureau of Citizenship and Immigration Services to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recogni- tion shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.

(c) An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent appli- cation only before the United States International Searching Authority and the United States International Preliminary Exam- ining Authority, provided that the individual has the right to prac- tice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.

Sometimes in **>an< application >naming joint inventors,< one >or more< of the *>joint inventors< gives to the other >joint inventor(s)< the power of attorney in the application. Such power will be recog-

nized even though the one to whom it is given is not registered. See 37 CFR >1.31 and< 1.32(c)(1).

If a request for special recognition accompanies the application, the Office of Initial Patent Examination will forward the file to the Director of the Office of Enrollment and Discipline.

402.02 Appointment of Associate Attor- ney or Agent [R-3]

**>Effective June 25, 2004, the associate power of attorney practice has been eliminated. The Office no longer accepts a power of attorney signed by a princi- pal to name an associate power of attorney. An appointment of an associate power of attorney filed on or after June 25, 2004 will not be accepted.< See also MPEP § 406.

402.05 Revocation [R-5]

37 CFR 1.36. Revocation of power of attorney; withdrawal of patent attorney or agent.

(a) **>A power of attorney, pursuant to § 1.32(b), may be revoked at any stage in the proceedings of a case by an applicant for patent (§ 1.41(b)) or an assignee of the entire interest of the applicant, or the owner of the entire interest of a patent. A power of attorney to the patent practitioners associated with a Customer Number will be treated as a request to revoke any powers of attor- ney previously given. Fewer than all of the applicants (or fewer than all of the assignees of the entire interest of the applicant or, in a reexamination proceeding, fewer than all the owners of the entire interest of a patent) may revoke the power of attorney only upon a showing of sufficient cause, and payment of the petition fee set forth in § 1.17(f). A patent practitioner will be notified of the revocation of the power of attorney. Where power of attorney is given to the patent practitioners associated with a Customer Number (§ 1.32(c)(2)), the practitioners so appointed will also be notified of the revocation of the power of attorney when the power of attorney to all of the practitioners associated with the Customer Number is revoked. The notice of revocation will be mailed to the correspondence address for the application (§ 1.33) in effect before the revocation. An assignment will not of itself operate as a revocation of a power previously given, but the assignee of the entire interest of the applicant may revoke previous powers of attorney and give another power of attorney of the assignee’s own selection as provided in § 1.32(b).<

(b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners asso- ciated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the

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patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Board of Patent Appeals and Interferences.

Upon revocation of the power of attorney, appropri- ate notification is sent by the technical support staff of the Technology Center.

Revocation of the power of the principal attorney revokes any associate powers granted by him or her to other attorneys.

Revocation of the power of attorney becomes effec- tive on the date that the revocation is RECEIVED in the Office (not on the date of ACCEPTANCE).

Form PTO/SB/82 may be used to revoke a power of attorney.

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Rev. 5, Aug. 2005 400-10

**> Form PTO/SB/82 Revocation of Power of Attorney With New Power of Attorney and Change of Correspondence Address

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Privacy Act Statement

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402.06 Attorney or Agent Withdraws [R-5]

37 CFR 1.36. Revocation of power of attorney; withdrawal of patent attorney or agent.

*****

(b) A registered patent attorney or patent agent who has been given a power of attorney pursuant to § 1.32(b) may withdraw as attorney or agent of record upon application to and approval by the Director. The applicant or patent owner will be notified of the withdrawal of the registered patent attorney or patent agent. Where power of attorney is given to the patent practitioners asso- ciated with a Customer Number, a request to delete all of the patent practitioners associated with the Customer Number may not be granted if an applicant has given power of attorney to the patent practitioners associated with the Customer Number in an application that has an Office action to which a reply is due, but insufficient time remains for the applicant to file a reply. See § 41.5 of this title for withdrawal during proceedings before the Board of Patent Appeals and Interferences.

See 37 CFR 1.36(a) in MPEP § 402.05 for revoca- tion. See 37 CFR 10.40 for information regarding per- missive and mandatory withdrawal. When filing a request to withdraw as attorney or agent of record, the patent attorney or agent should briefly state the rea- son(s) for which he or she is withdrawing so that the Office can determine whether to grant the request. >Note that disciplinary rule, 37 CFR 10.40(a) pro- vides that a “practitioner shall not withdraw from employment until the practitioner has taken reason- able steps to avoid foreseeable prejudice to the rights of the client.” Among several scenarios addressed in 37 CFR 10.40(c), subsections (iv) and (vi) permit withdrawal when the client fails to compensate the practitioner, or when “other conduct on the part of the client has rendered the representation unreasonably difficult.” When preparing a request for withdrawal for such reasons, the practitioner should also be mind- ful of 37 CFR 10.57(b)(2), which prohibits the use of a confidence or secret of a client to the disadvantage of a client. Where withdrawal is predicated upon such reasons, the practitioner, rather than divulging confi- dential or secret information about the client, should identify the reason(s) for requesting to withdraw as

being based on “irreconcilable differences.” An explanation of and the evidence supporting “irrecon- cilable differences” should be submitted as propri- etary material in accordance with MPEP § 724.02 to ensure that the client’s confidences are maintained.<

In the event that a notice of withdrawal is filed by the attorney or agent of record, the file will be for- warded to the **>appropriate official for decision on the request<. The withdrawal is effective when approved rather than when received.

To expedite the handling of requests for permission to withdraw as attorney or agent, under 37 CFR 1.36(b), Form PTO/SB/83 may be used. Because the Office does not recognize law firms, each attorney of record must sign the notice of withdrawal, or the notice of withdrawal must contain a clear indication of one attorney signing on behalf of himself or herself and another. A withdrawal of another attorney or agent of record, without also withdrawing the attorney or agent signing the request is a revocation, not a withdrawal.

The Director of the United States Patent and Trade- mark Office usually requires that there be at least 30 days between approval of withdrawal and the later of the expiration date of a time period for reply or the expiration date of the period which can be obtained by a petition and fee for extension of time under 37 CFR 1.136(a). This is so that the applicant will have suffi- cient time to obtain other representation or take other action. If a period has been set for reply and the period may be extended without a showing of cause pursuant to 37 CFR 1.136(a) by filing a petition for extension of time and fee, the practitioner will not be required to seek such extension of time for withdrawal to be approved. In such a situation, however, withdrawal will not be approved unless at least 30 days would remain between the date of approval and the last date on which such a petition for extension of time and fee could properly be filed.

For withdrawal during reexamination proceedings, see MPEP § 2223.

Form PTO/SB/83 may be used to request with- drawal of attorney or agent of record.

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**> Form PTO/SB/83 Request for Withdrawal as Attorney or Agent and Change of Correspondence Address

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Privacy Act Statement

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402.07 Assignee Can Revoke Power of Attorney of Applicant and Appoint New Power of Attorney [R-5]

The assignee of record of the entire interest can revoke the power of attorney of the applicant unless an “irrevocable” right to prosecute the application had been given as in some government owned applica- tions.

37 CFR 3.71. Prosecution by assignee. (a) Patents — conducting of prosecution. One or more

assignees as defined in paragraph (b) of this section may, after becoming of record pursuant to paragraph (c) of this section, con- duct prosecution of a national patent application or a reexamina- tion proceeding to the exclusion of either the inventive entity, or the assignee(s) previously entitled to conduct prosecution.

(b) Patents — assignee(s) who can prosecute. The assignee(s) who may conduct either the prosecution of a national application for patent or a reexamination proceeding are:

(1) A single assignee. An assignee of the entire right, title and interest in the application or patent being reexamined who is of record, or

(2) Partial assignee(s) together or with inventor(s). All partial assignees, or all partial assignees and inventors who have not assigned their right, title and interest in the application or patent being reexamined, who together own the entire right, title and interest in the application or patent being reexamined. A par- tial assignee is any assignee of record having less than the entire right, title and interest in the application or patent being reexam- ined.

(c) Patents — Becoming of record. An assignee becomes of record either in a national patent application or a reexamination proceeding by filing a statement in compliance with § 3.73(b) that is signed by a party who is authorized to act on behalf of the assignee.

(d) Trademarks. The assignee of a trademark application or registration may prosecute a trademark application, submit docu- ments to maintain a trademark registration, or file papers against a third party in reliance on the assignee’s trademark application or registration, to the exclusion of the original applicant or previous assignee. The assignee must establish ownership in compliance with § 3.73(b).

See 37 CFR 1.36 in MPEP § 402.05.

A power of attorney by the assignee of the entire interest revokes all powers given by the applicant and prior assignees if the assignee establishes their right to take action as provided in 37 CFR 3.73(b). See MPEP § 324. Ordinarily, the applicant will still have access to the application (MPEP § 106).

In an application that has been accorded status under 37 CFR 1.47(a), or for which status under 37 CFR 1.47(a) has been requested, a power of attorney given by the inventors who have signed the declara- tion (available inventors) may be revoked by an assignee of the entire interest of the available inven- tors (i.e., the applicant). See 37 CFR 1.32(b)(4). Rights of the assignee to take action may be estab- lished as provided in 37 CFR 3.73(b) and MPEP § 324.

Form PTO/SB/80 may be used by an assignee of the entire interest of the applicant to revoke a power of attorney and appoint a new power of attorney. The assignee would sign the power of attorney, and a newly appointed practitioner, having authority to take action on behalf of the assignee would sign a state- ment under 37 CFR 3.73(b) for the application in which the general power of attorney is to be used.

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**> Form PTO/SB/80 Power of Attorney To Prosecute Applications Before the USPTO

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Privacy Act Statement

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402.08 Application in Interference

While an application is involved in an interference, no power of attorney of any kind should be entered in such application by the technical support staff of the Technology Center.

If a power of attorney or revocation is received for an application which is in interference, it should be forwarded to the Service Branch of the Board of Patent Appeals and Interferences because all parties to the interference must be notified.

402.09 International Application [R-3] > 37 CFR 11.9. Limited recognition in patent matters

(a) Any individual not registered under § 11.6 may, upon a showing of circumstances which render it necessary or justifiable, and that the individual is of good moral character and reputation, be given limited recognition by the OED Director to prosecute as attorney or agent a specified patent application or specified patent applications. Limited recognition under this paragraph shall not extend further than the application or applications specified. Lim- ited recognition shall not be granted while individuals who have passed the examination or for whom the examination has been waived are awaiting registration to practice before the Office in patent matters.

(b) A nonimmigrant alien residing in the United States and fulfilling the provisions of § 11.7(a) and (b) may be granted lim- ited recognition if the nonimmigrant alien is authorized by the Bureau of Citizenship and Immigration Services to be employed or trained in the United States in the capacity of representing a patent applicant by presenting or prosecuting a patent application. Limited recognition shall be granted for a period consistent with the terms of authorized employment or training. Limited recogni- tion shall not be granted or extended to a non-United States citizen residing abroad. If granted, limited recognition shall automatically expire upon the nonimmigrant alien’s departure from the United States.

(c) An individual not registered under § 11.6 may, if appointed by an applicant, prosecute an international patent appli- cation only before the United States International Searching Authority and the United States International Preliminary Exam- ining Authority, provided that the individual has the right to prac- tice before the national office with which the international application is filed as provided in PCT Art. 49, Rule 90 and § 1.455 of this subchapter, or before the International Bureau when the USPTO is acting as Receiving Office pursuant to PCT Rules 83.1bis and 90.1.<

37 CFR 1.455. Representation in international applications.

(a) **>Applicants of international applications may be rep- resented by attorneys or agents registered to practice before the United States Patent and Trademark Office or by an applicant appointed as a common representative (PCT Art. 49, Rules 4.8

and 90 and § 11.9). If applicants have not appointed an attorney or agent or one of the applicants to represent them, and there is more than one applicant, the applicant first named in the request and who is entitled to file in the U.S. Receiving Office shall be consid- ered to be the common representative of all the applicants. An attorney or agent having the right to practice before a national office with which an international application is filed and for which the United States is an International Searching Authority or International Preliminary Examining Authority may be appointed to represent the applicants in the international application before that authority. An attorney or agent may appoint an associate attorney or agent who shall also then be of record (PCT Rule 90.1(d)). The appointment of an attorney or agent, or of a com- mon representative, revokes any earlier appointment unless other- wise indicated (PCT Rule 90.6(b) and (c)).<

(b) **>Appointment of an agent, attorney or common repre- sentative (PCT Rule 4.8) must be effected either in the Request form, signed by applicant, in the Demand form, signed by appli- cant, or in a separate power of attorney submitted either to the United States Receiving Office or to the International Bureau.<

(c) Powers of attorney and revocations thereof should be submitted to the United States Receiving Office until the issuance of the international search report.

(d) The addressee for correspondence will be as indicated in section 108 of the Administrative Instructions.

For representation in international applications, see MPEP § 1807.

402.10 Appointment/Revocation by Less Than All Applicants or Owners [R-5]

Papers giving or revoking a power of attorney in an application generally require signature by all the applicants or owners of the application. Papers revok- ing a power of attorney in an application (or giving a power of attorney) will not be accepted by the Office when signed by less than all of the applicants or own- ers of the application unless they are accompanied by a petition under 37 CFR 1.36(a) and fee under 37 CFR 1.17(*>f<) with a showing of sufficient cause (if revocation), or a petition under 37 CFR 1.183 and fee under 37 CFR 1.17(f) (if appointment) demonstrating the extraordinary situation where justice requires waiver of the requirement of 37 CFR 1.32(b)(4) that the applicant, or the assignee of the entire interest of the applicant sign the power of attorney. The petition should be directed to the Office of Petitions. The acceptance of such papers by petition under 37 CFR 1.36(a) or 1.183 will result in more than one attorney, agent, applicant, or owner prosecuting the application at the same time. Therefore, each of these parties must

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sign all subsequent replies submitted to the Office. See In re Goldstein, 16 USPQ2d 1963 (Dep. Assist. Comm’r Pat. 1988). In an application filed under 37 CFR 1.47(a), an assignee of the entire interest of the available inventors (i.e., the applicant) who have signed the declaration may appoint or revoke a power of attorney without a petition under 37 CFR 1.36(a) or 1.183. See MPEP § 402.07. However, in applications accepted under 37 CFR 1.47, such a petition under 37 CFR 1.36(a) or 1.183 submitted by a previously nonsigning inventor who has now joined in the appli- cation will not be granted. See MPEP § 409.03(i). Upon accepting papers appointing and/or revoking a power of attorney that are signed by less than all of the applicants or owners, the Office will indicate to applicants who must sign subsequent replies. Dual correspondence will still not be permitted. Accord- ingly, when the acceptance of such papers results in an attorney or agent and at least one applicant or owner prosecuting the application, correspondence will be mailed to the attorney or agent. When the acceptance of such papers results in more than one attorney or agent prosecuting the application, the cor- respondence address will continue to be that of the attorney or agent first named in the application, unless all parties agree >to a different correspondence address<. Each attorney or agent signing subsequent papers must indicate whom he or she represents.

The following are examples of who must sign replies when there is more than one person responsi- ble for prosecuting the application:

(A) If coinventor A has given a power of attorney >to a patent practitioner< and coinventor B has not, replies must be signed by the *>patent practitioner< of A and by coinventor B.

(B) If coinventors A and B have each appointed their own *>patent practitioner<, replies must be signed by both *>patent practitioners<.

403 Correspondence — With Whom Held [R-5]

37 CFR 1.33. Correspondence respecting patent applications, reexamination proceedings, and other proceedings.

(a) **>Correspondence address and daytime telephone number. When filing an application, a correspondence address must be set forth in either an application data sheet (§ 1.76), or elsewhere, in a clearly identifiable manner, in any paper submitted

with an application filing. If no correspondence address is speci- fied, the Office may treat the mailing address of the first named inventor (if provided, see §§ 1.76(b)(1) and 1.63(c)(2)) as the cor- respondence address. The Office will direct all notices, official letters, and other communications relating to the application to the correspondence address. The Office will not engage in double cor- respondence with an applicant and a patent practitioner, or with more than one patent practitioner except as deemed necessary by the Director. If more than one correspondence address is specified in a single document, the Office will select one of the specified addresses for use as the correspondence address and, if given, will select the address associated with a Customer Number over a typed correspondence address. For the party to whom correspon- dence is to be addressed, a daytime telephone number should be supplied in a clearly identifiable manner and may be changed by any party who may change the correspondence address. The cor- respondence address may be changed as follows:

(1) Prior to filing of § 1.63 oath or declaration by any of the inventors. If a § 1.63 oath or declaration has not been filed by any of the inventors, the correspondence address may be changed by the party who filed the application. If the application was filed by a patent practitioner, any other patent practitioner named in the transmittal papers may also change the correspondence address. Thus, the inventor(s), any patent practitioner named in the trans- mittal papers accompanying the original application, or a party that will be the assignee who filed the application, may change the correspondence address in that application under this paragraph.<

(2) Where a § 1.63 oath or declaration has been filed by any of the inventors. If a § 1.63 oath or declaration has been filed, or is filed concurrent with the filing of an application, by any of the inventors, the correspondence address may be changed by the parties set forth in paragraph (b) of this section, except for para- graph (b)(2).

(b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:

(1) **>A patent practitioner of record appointed in com- pliance with § 1.32(b);<

(2) **>A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;<

(3) An assignee as provided for under § 3.71(b) of this chapter; or

(4) All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.

(c) All notices, official letters, and other communications for the patent owner or owners in a reexamination proceeding will be directed to the attorney or agent of record (see § 1.32(b)) in the patent file at the address listed on the register of patent attorneys and agents maintained pursuant to §§ 11.5 and 11.11 of this sub- chapter, or if no attorney or agent is of record, to the patent owner or owners at the address or addresses of record. Amendments and other papers filed in a reexamination proceeding on behalf of the patent owner must be signed by the patent owner, or if there is more than one owner by all the owners, or by an attorney or agent of record in the patent file, or by a registered attorney or agent not

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of record who acts in a representative capacity under the provi- sions of § 1.34. Double correspondence with the patent owner or owners and the patent owner’s attorney or agent, or with more than one attorney or agent, will not be undertaken. If more than one attorney or agent is of record and a correspondence address has not been specified, correspondence will be held with the last attorney or agent made of record.

(d) A “correspondence address” or change thereto may be filed with the Patent and Trademark Office during the enforceable life of the patent. The “correspondence address” will be used in any correspondence relating to maintenance fees unless a separate “fee address” has been specified. See § 1.363 for “fee address” used solely for maintenance fee purposes.

> (e) A change of address filed in a patent application or

patent does not change the address for a patent practitioner in the roster of patent attorneys and agents. See § 11.11 of this title.<

37 CFR 1.33(a) provides for an applicant to supply an address to receive correspondence from the U.S. Patent and Trademark Office so that the Office may direct mail to any address of applicant’s selection, such as a corporate patent department, a firm of attor- neys or agents, or an individual attorney, agent, or other person.

37 CFR 1.33(a) provides that in a patent application the applicant must specify a correspondence address to which the Office will send notices, letters and other communications relating to the application. The cor- respondence address must appear either in an applica- tion data sheet (37 CFR 1.76) or in a clearly identifiable manner elsewhere in any papers submit- ted with an application filing. Where more than one correspondence address is specified, the Office will **>select one of the correspondence addresses for use< as the correspondence address. This is intended to cover, for example, the situation where an applica- tion is submitted with multiple addresses, such as one correspondence address being given in the application transmittal letter, and a different one in an accompa- nying 37 CFR 1.63 oath or declaration, or other simi- lar situations. The **>Office will select which of the multiple correspondence addresses to use according to the following order: (A) application data sheet (ADS); (B) application transmittal; (C) oath or declaration (unless power of attorney is more current); and (D) power of attorney.< If more than one correspondence address is specified in a single document, the Office will *>select< the address associated with a Customer Number over a typed correspondence address.

37 CFR 1.33(a) requests the submission of a day- time telephone number of the party to whom corre- spondence is to be addressed. While business is to be conducted on the written record (37 CFR 1.2), a day- time telephone number would be useful in initiating contact that could later be reduced to writing. The telephone number would be changeable by any party who could change the correspondence address.

37 CFR 1.33(a)(1) provides that any party filing the application and setting forth a correspondence address could later change the correspondence address pro- vided that a 37 CFR 1.63 oath/declaration by any of the inventors has not been submitted. If one joint inventor filed an application, the person who may change the correspondence address would include only the one inventor who filed the application, even if another inventor was identified on the application transmittal letter. If two of three inventors filed the application, the two inventors filing the application would be needed to change the correspondence address. Additionally, any registered practitioner named in the application transmittal letter, or a person who has the authority to act on behalf of the party that will be the assignee (if the application was filed by the party that will be the assignee), could change the cor- respondence address. A registered practitioner named in a letterhead would not be sufficient, but rather a clear identification of the individual as being a repre- sentative would be required. A company (to whom the invention has been assigned, or to whom there is an obligation to assign the invention) who files an appli- cation, is permitted to designate the correspondence address, and to change the correspondence address, until such time as a (first) 37 CFR 1.63 oath/declara- tion is filed. The mere filing of a 37 CFR 1.63 oath/ declaration that does not include a correspondence address does not affect any correspondence address previously established on the filing of the application, or changed per 37 CFR 1.63(a)(1), even if the applica- tion was filed by a company that is only a partial assignee. The expression “party that will be the assignee,” rather than assignee, is used in that until a declaration is submitted, inventors have only been identified, and any attempted assignment, or partial assignment, cannot operate for Office purposes until the declaration is supplied. Hence, if the application transmittal letter indicates that the application is being filed on behalf of XYZ company, with an assignment

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to be filed later, XYZ company would be allowed to change the correspondence address without resort to 37 CFR 3.73(b) until an executed oath or declaration is filed, and with resort to 37 CFR 3.73(b) after the oath or declaration is filed.

Where a correspondence address was set forth or changed pursuant to 37 CFR 1.33(a)(1) (prior to the filing of a 37 CFR 1.63 oath or declaration), that cor- respondence address remains in effect upon filing of a 37 CFR 1.63 declaration and can then only be changed pursuant to 37 CFR 1.33(a)(2).

37 CFR 1.33 states that when an attorney or agent has been duly appointed to prosecute an application, correspondence will be held with the attorney or agent unless some other correspondence address has been given. If an attorney or agent of record assigns a cor- respondence address which is different than an address where the attorney or agent normally receives mail, the attorney or agent is reminded that 37 CFR 10.57 requires the attorney or agent to keep informa- tion obtained by attorney/agent – client relationship in confidence. Double correspondence with an applicant and his or her attorney, or with two representatives, will not be undertaken. See MPEP § 403.01, § 403.02, and § 714.01(d).

If double correspondence is attempted, form para- graph 4.01 should be included in the next Office action.

¶ 4.01 Dual Correspondence Applicant has appointed an attorney or agent to conduct all

business before the Patent and Trademark Office. Double corre- spondence with an applicant and applicant's attorney or agent will not be undertaken. Accordingly, applicant is required to conduct all future correspondence with this Office through the attorney or agent of record. See 37 CFR 1.33.

Examiner Note: 1. The first time a reply is received directly from applicant, include this paragraph in the Office action and send a copy of the action to the applicant. See MPEP §§ 403 and 714.01. 2. Should applicant file additional replies, do not send copies of subsequent Office actions to the applicant. 3. Status letters from the applicant may be acknowledged in isolated instances.

In a joint application with no attorney or agent, the applicant whose name first appears in the papers receives the correspondence, unless other instructions are given. All applicants must sign the replies. See MPEP § 714.01(a). If the assignee of the entire inter- est of the applicant is prosecuting the application

(MPEP § 402.07), the assignee may specify a corre- spondence address.

37 CFR 1.33(c) relates to which address communi- cations for the patent owner will be sent in reexamina- tion proceedings. See also MPEP § 2224.

Powers of attorney to firms are not recognized by the U.S. Patent and Trademark Office. See MPEP § 402. However, the firm’s address may be used for the correspondence address. The address should appear as follows:

John Doe (inventor) In care of Able, Baker, and Charlie (firm) 1234 Jefferson Davis Highway Arlington, Virginia 22202

>Patent practitioners are reminded that the attorney and agent roster must be updated separately from and in addition to any change of address filed in individ- ual patent applications.<

See MPEP § 601.03 for change of correspondence address.

See MPEP § 201.06(c) regarding change of corre- spondence address in continuation or divisional appli- cations filed under 37 CFR 1.53(b).

I. CUSTOMER NUMBER PRACTICE

A Customer Number (previously a “Payor Num- ber”) may be used to:

(A) designate the correspondence address of a patent application or patent such that the correspon- dence address for the patent application or patent would be the address associated with the Customer Number (37 CFR 1.32(a)(*>5<)(i));

(B) designate the fee address (37 CFR 1.363) of a patent such that the fee address for the patent would be the address associated with the Customer Number (37 CFR 1.32(a)(*>5<)(ii)); and

(C) submit a list of practitioners such that those practitioners associated with the Customer Number would have power of attorney (37 CFR 1.32(a)(*>5<)(iii)).

Thus, a Customer Number may be used to desig- nate the address associated with the Customer Num- ber as the correspondence address of an application (or patent) or the fee address of a patent, and may also be used to submit a power of attorney in the applica-

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tion (or patent) to the registered practitioners associ- ated with the Customer Number.

Applicant may use either the same or different cus- tomer number(s) for the correspondence address, the fee address and/or a list of practitioners. The customer number associated with the correspondence address is the Customer Number used to obtain access to the Patent Application Information Retrieval (PAIR) sys- tem at http://pair.uspto.gov. See MPEP § 1730 for additional information regarding PAIR.

The following forms are suggested for use with the Customer Number practice:

(A) the “Request for Customer Number” (PTO/ SB/125) to request a Customer Number;

(B) the “Request for Customer Number Data Change” (PTO/SB/124) to request a change in the data (address or list of practitioners) associated with an existing Customer Number;

(C) the “Change of Correspondence Address, Application” (PTO/SB/122) to change the correspon- dence address of an individual application to the address associated with a Customer Number; and

(D) the “Change of Correspondence Address, Patent” (PTO/SB/123) to change the correspondence address of an individual patent to the address associ- ated with a Customer Number.

The Office will also accept requests submitted elec- tronically via a computer-readable diskette to change the correspondence address of a list of applications or patents or the fee address for a list of patents to the address associated with a Customer Number.

Such electronic requests must be submitted in the manner set forth in the Notice entitled “Extension of the Payor Number Practice (through “Customer Numbers”) to Matters Involving Pending Patent Applications,” published in the Federal Register at 61 FR 54622, 54623-24 (October 21, 1996), and in the Official Gazette at 1191 O. G. 187, 188-89 (October 29, 1996). Note that such electronic requests are no longer accepted to change the power of attorney in a patent application or patent. See the notice entitled “Notice of Elimination of Batch Update Practice to Change Power of Attorney,” published in the Official Gazette at 1272 O.G. 24 (July 1, 2003).

With Customer Number practice, a patentee is also able to designate a “fee address” for the receipt of maintenance fee correspondence, and a different

address for the receipt of all other correspondence. The designation of a “fee address” by reference to a Customer Number will not affect or be affected by the designation of a correspondence address by reference to another Customer Number, in that the Office will send maintenance fee correspondence to the address associated with the Customer Number designated as the “fee address” and will send all other correspon- dence to the address associated with the Customer Number designated as the correspondence address.

The association of a list of practitioners with a Cus- tomer Number will permit an applicant to appoint all of the practitioners associated with the Customer Number merely by reference to the Customer Number in the Power of Attorney (i.e., without individually listing the practitioners in the Power of Attorney). The addition and/or deletion of a practitioner from the list of practitioners associated with a Customer Number by submitting a corresponding “Request for Customer Number Data Change” (PTO/SB/124) will result in the addition or deletion of such practitioner from the list of persons authorized to represent any applicant or assignee of the entire interest of the applicant who appointed all of the practitioners associated with such Customer Number. This will avoid the necessity for the filing of additional papers in each patent applica- tion affected by a change in the practitioners of the law firm prosecuting the application. The appoint- ment of practitioners associated with a Customer Number is optional, in that any applicant may con- tinue to individually name those practitioners to rep- resent the applicant in a patent application, so long as fewer than ten patent practitioners are named. See 37 CFR 1.32(c)(3).

The Customer Number practice does not affect the prohibition against, and does not amount to, an appointment of a law firm (rather than specified prac- titioners). The Office prohibits an appointment of a specified law firm because the Office cannot ascertain from its records whether a particular practitioner sub- mitting a paper to the Office is associated with the law firm specified in an appointment. The Office will per- mit an appointment of all of the practitioners associ- ated with a specified Customer Number because the Office can ascertain from its records for the specified Customer Number whether a particular practitioner is associated with that Customer Number.

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As the Office will not recognize more than one cor- respondence address (37 CFR 1.33(a)), any inconsis- tencies between the correspondence address resulting from a Customer Number being provided in an appli- cation for the correspondence address and any other correspondence address provided in that application *>will generally< be resolved in favor of the address of the Customer Number. Due to the prohibition against dual correspondence in an application (37 CFR 1.33(a)), an applicant will be permitted to pro- vide only a single number at a time as the Customer Number for the correspondence address.

Where an applicant appoints all of the practitioners associated with a Customer Number as well as a list of individually named practitioners, such action would be treated as only an appointment of all of the practitioners associated with a Customer Number due to the potential for confusion and data entry errors in entering registration numbers from plural sources. Furthermore, Office computer systems do not allow for entry of both a power of attorney to a list of practi- tioners associated with a Customer Number and a list of practitioners.

Although Customer Numbers are designed to des- ignate both a correspondence address and to associate one or more patent **>practitioners< with an applica- tion, one Customer Number may be used for the cor- respondence address, and another Customer Number may be used for the power of attorney.

Applicants are strongly cautioned not to attempt to appoint more than one Customer Number for a partic- ular purpose (e.g., correspondence address) in a single communication, as such action will not have a cumu- lative effect.

The Office has created a Mail Stop designation for correspondence related to a Customer Number (“Mail Stop EBC”), and all correspondence related to a Cus- tomer Number (e.g., requests for a Customer Number) should be addressed to this mail stop designation.

The following persons are authorized to change the information associated with an established Customer Number: (1) a registered practitioner associated with the Customer Number; and (2) the person who requested the Customer Number (signed the Request for Customer Number, Form PTO/SB/125).

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**> Form PTO/SB/122. Change of Correspondence Address Application

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Privacy Act Statement

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Form PTO/SB/123. Change of Correspondence Address Patent

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Privacy Act Statement

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Form PTO/SB/124A. Request for Customer Number

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Form PTO/SB/124B. Request for Customer Number Data Change Practitioner Registration Number Supplemental Sheet

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Privacy Act Statement

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Form PTO/SB/25A Request for Customer Number

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Form PTO/SB/25B Request for Customer Number Practitioner Registration Number Supplemental Sheet

REPRESENTATIVE OF INVENTOR OR OWNER 403

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Form PTO/SB/25B Request for Customer Number Practitioner Registration Number Supplemental Sheet

<

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II. PATENT APPLICATION FILED WITH- OUT CORRESPONDENCE ADDRESS

In accordance with the provisions of 35 U.S.C. 111(a) and 37 CFR 1.53, a filing date is granted to a nonprovisional application for patent filed in the U.S. Patent and Trademark Office, if it includes at least a specification containing a description pursuant to 37 CFR 1.71 and at least one claim pursuant to 37 CFR 1.75, and any drawing referred to in the spec- ification or required by 37 CFR 1.81(a). If a nonprovi- sional application which has been accorded a filing date does not include the appropriate basic filing fee, search fee, examination fee, or oath or declaration, the applicant will be so notified and given a period of time within which to file the missing parts to com- plete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) in order to prevent abandon- ment of the application. If a provisional application which has been accorded a filing date does not include the appropriate filing fee, or the cover sheet, the applicant will be so notified and given a period of time within which to file the missing parts to com- plete the application and to pay the surcharge as set forth in 37 CFR 1.16(g) in order to prevent abandon- ment of the application.

In order for the Office to so notify the applicant, a correspondence address must also be provided by the applicant. The address may be different from the post office address of the applicant. For example, the address of the applicant’s registered attorney or agent may be used as the correspondence address. If the applicant fails to provide the Office with a correspon- dence address, the Office will be unable to provide the applicant with notification to complete the application and to pay the surcharge as set forth in 37 CFR 1.16(f) for nonprovisional applications and 37 CFR 1.16(g) for provisional applications. In such a case, the appli- cant will be considered to have constructive notice as of the filing date that the application must be com- pleted and the applicant will have 2 months from the filing date in which to do so before abandonment occurs.

The periods of time within which the applicant must complete the application may be extended under the provisions of 37 CFR 1.136. Applications which are not completed in a timely manner will be aban- doned.

403.01 Correspondence Held With Associate Attorney [R-3]

Where the attorneys bear relation of principal attor- ney and associate attorney, the correspondence will be had with the associate attorney unless the principal attorney directs otherwise. Ex parte Eggan, 1911 C.D. 213, 172 O.G. 1091 (Comm’r Pat. 1911). The associ- ate attorney may specify or change the correspon- dence address to which communications about the application are to be directed. >Associate powers of attorney are not accepted after June 25, 2004, but any associate power of attorney filed before June 25, 2004 will continue to have effect.<

403.02 Two *>Patent Practitioners< for Same Application [R-5]

If the applicant simultaneously appoints two princi- pal *>patent practitioners<, he or she should indicate with whom correspondence is to be conducted. If one is a local Washington metropolitan area *>patent practitioner< and the applicant fails to indicate either *>patent practitioner<, correspondence will be con- ducted with the local *>patent practitioner<.

If, after one *>patent practitioner< is appointed, a second *>patent practitioner< is later appointed with- out revocation of the power of the first *>patent prac- titioner<, the correspondence address of the second *>patent practitioner< is entered into the application file record (Ex parte Eggan, 1911 C.D. 213, 172 O.G. 1091 (Comm’r Pat. 1911)), so that the Office letters are to be sent to him or her.

404 Conflicting Parties Having Same *>Patent Practitioner< [R-5]

See 37 CFR 10.66.

405 *>Patent Practitioner< Not of Record [R-5]

Papers may be filed in patent applications and reex- amination proceedings by registered attorneys or agents not of record under 37 CFR 1.34. Filing of such papers is considered to be a representation that the attorney or agent is authorized to act in a represen- tative capacity on behalf of applicant. However, inter- views with a registered attorney or agent not of record will ordinarily be conducted based only on the infor-

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mation and files supplied by the attorney or agent in view of 35 U.S.C. 122. Interviews may be conducted with a registered practitioner who does not have a copy of the application file, but has proper authority from the applicant or attorney or agent of record in the form of a paper on file in the application. See also

MPEP § 713.05. Such a paper may be an “Authoriza- tion to Act in a Representative Capacity.” **>Form/ PTO/SB/84,< “Authorization to Act in a Representa- tive Capacity” is available from the USPTO Internet web site at http://www.uspto.gov/web/forms/ sb0084.pdf.

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**> Sample Form - Authorization To Act in a Representative Capacity

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<

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A change of correspondence address or a docu- ment granting access (i.e., a power to inspect) may only be signed by an attorney or agent who is not of record if an executed oath or declaration has not been filed in the application. See 37 CFR 1.33(a) (corre- spondence address) and 1.14(c)(4).

406 Death of *>Patent Practitioner< [R-5]

The power of a principal *>patent practitioner< will be revoked or terminated by his or her death. Such a revocation or termination of the power of the principal *>patent practitioner< will also terminate the power of those appointed by him or her. Thus, a principal *>patent practitioner< may appoint an asso- ciate *>patent practitioner (effective June 25, 2004, the associate power of * patent practitioner practice has been eliminated)< but such a power terminates with that of the principal. The principal *>patent prac- titioner< may not appoint a “substitute” and any attempt by the principal to appoint a “substitute” *>patent practitioner< whose power is intended to survive his or her own will not be recognized by the Office.

If notification is received from the applicant or assignee of the death of the sole principal *>patent practitioner< and the application is up for action by the examiner, correspondence is held with the appli- cant or assignee who originally appointed the deceased *>patent practitioner<.

If notification is received from the office of the deceased attorney and the application is up for action, the examiner when preparing the Office action should add form paragraph 4.02. **>

¶ 4.02 Death of Patent Practitioner, Notice Received from Patent Practitioner’s Office

In view of the notification of the death of the attorney or agent of record, the power of attorney is terminated. A new registered attorney or agent may be appointed.

Examiner Note: As the power of attorney has been terminated, Office corre-

spondence is sent to the applicant or the assignee who originally appointed the deceased attorney or agent.

< If notification of the death of the sole principal

attorney is received from the Office of Enrollment and

Discipline or some other source, there will be no paper of record in the file wrapper to indicate that the attorney is deceased. Correspondence therefore con- tinues to be held with the office of the deceased attor- ney but a copy of the Office action is also mailed to the person who originally appointed the attorney. In such an Office action where the application is not ready for allowance, the examiner should add form paragraph 4.03. **>

¶ 4.03 Death of Patent Practitioner, Notice from Other Source

Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is therefore terminated, a copy of this action is being mailed to the [1].

Examiner Note: In bracket 1, insert --applicant-- or --assignee-- if the assignee

originally appointed the deceased attorney or agent.

< If notification of the death of the sole principal

*>patent practitioner< is received from the Office of Enrollment and Discipline or some other source and the application is ready for allowance, the examiner prepares the application for allowance and writes a letter to the office of the deceased *>patent practitio- ner< with a copy to the person who originally appointed the deceased *>patent practitioner< includ- ing the wording of form paragraph 4.04. **>

¶ 4.04 Death of Patent Practitioner, Application Is Ready for Allowance

Notice of the death of the attorney or agent of record has come to the attention of this Office. Since the power of attorney is thus terminated, and this application is now ready for allowance, the Notice of Allowance will be mailed to the office of the deceased attorney or agent in the absence of a new power of attorney.

Examiner Note: A copy should also be mailed to the applicant or the assignee

who originally appointed the attorney or agent.

< Note MPEP § 405.

407 Suspended or Excluded >Patent< Practitioner [R-5]

>Any power of attorney given to a practitioner who has been suspended or disbarred by the Office is inef-

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fective, and does not authorize the person to practice before the Office or to represent applicants or paten- tees in patent matters.<

See MPEP § 105. Form paragraphs 4.06, 4.07, and 4.08 should be

used where power of attorney is given to an attorney or agent who has been suspended from practice before the Office.

¶ 4.06 Attorney/Agent Suspended (Sole Practitioner, Sole Inventor)

The instant application contains a power of attorney to [1] who has been [2] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice. Accordingly, the Office action is being mailed to you as the inven- tor.

Applicant may, of course, file a new power of attorney in the application to have a registered attorney or agent represent you before the Office. In the absence of an attorney or agent of record, all amendments and other papers filed in the application must be signed: (1) by you; or (2) if there is an assignee of record of an undivided part interest, by you and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a reg- istered patent attorney or agent, not of record, who acts in a repre- sentative capacity under the provisions of 37 CFR 1.34.

Applicant may obtain a list of registered patent attorneys and agents located in your area by consulting the USPTO web site, http://www.uspto.gov, or by calling the Office of Enrollment and Discipline at (571) 272-4097.

Examiner Note: 1. In bracket 1, insert name of suspended or excluded practitio- ner. 2. In bracket 2, insert either --suspended-- or --excluded--. 3. This form paragraph should be used when a suspended or excluded practitioner is the only practitioner of record and there is only a single inventor. Use form paragraph 4.07 if there are joint inventors. 4. The Office action is to be mailed only to the inventor at his/ her current address of record.

¶ 4.07 Attorney/Agent Suspended (Sole Practitioner, Joint Inventors)

The instant application contains a power of attorney to [1] who has been [2] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice. Accordingly, the Office action is being mailed to the address of the inventor first named in the application.

Applicants may, of course, file a new power of attorney in the application to have a registered attorney or agent represent them before the Office. In the absence of an attorney or agent of record, all amendments and other papers filed in the application must be signed: (1) by all named applicants unless one named applicant

has been given a power of attorney to sign on behalf of the remaining applicants, and the power of attorney is of record in the application; or (2) if there is an assignee of record of an undivided part interest, by all named applicants retaining an interest and such assignee; or (3) if there is an assignee of the entire interest, by such assignee; or (4) by a registered patent attorney or agent not of record who acts in a representative capacity under the pro- visions of 37 CFR 1.34.

Applicants may obtain a list of registered patent attorneys and agents located in their area by consulting the USPTO web site, http://www.uspto.gov, or by calling the Office of Enrollment and Discipline at (571) 272-4097.

Examiner Note: 1. In bracket 1, insert the name of the suspended or excluded practitioner. 2. In bracket 2, insert either --suspended-- or --excluded--. 3. This form paragraph should be used when the suspended or excluded practitioner is the only practitioner of record and there are joint inventors. Use form paragraph 4.06 if there is a single inventor. 4. The Office action is to be mailed only to the inventor first named in the declaration at his or her current address of record.

¶ 4.08 Attorney/Agent Suspended (Plural Practitioners) The present application was filed containing a power of attor-

ney to [1] and [2]. A correspondence address was supplied for [3]. No address was supplied for [4].

[5] was [6] from practice before the Patent and Trademark Office (Office). The Office does not communicate with attorneys or agents who have been suspended or excluded from practice.

As a correspondence address, other than to [7], is not of record, this Office action is being mailed to [8] at his/her last known address as listed on the register of patent attorneys and agents. To ensure that a copy of this Office action is received in a timely manner to allow for a timely reply, a copy of the Office action is being mailed directly to the address of the inventor first named in the declaration or oath. Any reply by applicant(s) should be by way of the remaining practitioner(s) of record and should include a new correspondence address.

Examiner Note: 1. In brackets 1, 3, 5 and 7 insert the name of the suspended or excluded practitioner. 2. In brackets 2, 4 and 8, insert the name of the first named unsuspended (unexcluded) registered practitioner of record. 3. In bracket 6, insert either --suspended-- or --excluded--. 4. This form paragraph should be used when there is at least one registered practitioner still of record who has not been sus- pended or excluded from practice. Use one of form paragraphs 4.06 or 4.07 if there are no remaining registered attorneys or agents of record. 5. The Office action is to be mailed both to the first named reg- istered attorney or agent of record (who is not suspended or excluded) at the address currently listed in the Attorney's Roster, and to the inventor first named in the declaration at his or her cur- rent address of record.

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408 Telephoning *>Patent Practitio- ner< [R-5]

Present Office policy places great emphasis on tele- phone interviews initiated by the examiner. For this reason, it is not necessary for **>a patent practitio- ner< to request a telephone interview. Examiners are not required to note or acknowledge requests for tele- phone calls or state reasons why such proposed tele- phone interviews would not be considered effective to advance prosecution. However, it is desirable for **>a patent practitioner< to call the examiner if the *>patent practitioner< feels the call will be beneficial to advance prosecution of the application. See MPEP § 713.01 and § 713.05.

Many *>patent practitioners< have offices or repre- sentatives in the Washington area and it sometimes expedites business to interview them concerning an application. When the examiner believes the progress of the application would be advanced by an interview, he or she may call the *>patent practitioner< in the application by telephone and ask the *>patent practi- tioner< to come to the Office.

Registered attorneys or agents not of record in a patent application and acting in a representative capacity under 37 CFR 1.34 should not be telephoned for restriction requirements, approval of examiner's amendments, or given any information relative to such patent application by telephone. In addition, non-registered representatives of the practitioner of record should not be telephoned for such actions, even if authorized by the attorney or agent of record.

Examiners should place all long distance telephone calls through the FTS (Federal Telecommunications System), even though collect calls may have been authorized by the *>patent practitioner<.

To facilitate any telephone calls that may become necessary, it is strongly recommended that amend- ments, letters of transmittal, and powers of attorney include the complete telephone number, with area code and extension, of the person with whom the interview should be held, preferably near the signa- ture.

In new applications, the telephone number may appear on the letter of transmittal or in the power of attorney, oath, or declaration, next to the *>patent practitioner’s< name and address.

SPECIFIC TELEPHONE INTERVIEW SITUA- TIONS

For restriction of invention, see MPEP § 812.01. For multiplicity, see MPEP § 2173.05(n).

409 Death, Legal Incapacity, or Un- availability of Inventor [R-5]

If the inventor is dead, insane, or otherwise legally incapacitated, refuses to execute an application, or cannot be found, an application may be made by someone other than the inventor, as specified in 37 CFR **>1.42, 1.43 and 1.47<, and 37 CFR 1.423, MPEP § 409.01 - § 409.03(j).

A minor (under age 18) inventor may execute an oath or declaration under 37 CFR 1.63 as long as the *>minor< is competent to sign (i.e., understands the document that he or she is signing); a legal represen- tative is not required to execute an oath or declaration on the minor’s behalf. See 37 CFR 1.63(a)(1).

Employees of the United States Patent and Trade- mark Office (Office) who were inventors are not per- mitted to sign an oath or declaration for patent application (37 CFR 1.63) during the period of their employment with the Office and one year thereafter. 35 U.S.C. 4. These employees (inventors) will be treated as being unavailable to sign the oath or decla- ration pursuant to 37 CFR 1.47.

409.01 Death of Inventor [R-5]

Unless a power of attorney is coupled with an inter- est (i.e., **>a patent practitioner< is assignee or part- assignee), the death of the inventor (or one of the joint inventors) terminates the power of attorney given by the deceased inventor. A new power from the heirs, administrators, executors, or assignees is necessary if the deceased inventor is the sole inventor or all pow- ers of attorney in the application have been terminated (but see MPEP § 409.01(f)). See also 37 CFR 1.422.

409.01(a) Prosecution by Administrator or Executor

35 U.S.C. 117. Death or incapacity of inventor Legal representatives of deceased inventors and of those under

legal incapacity may make application for patent upon compliance with the requirements and on the same terms and conditions appli- cable to the inventor.

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400-41 Rev. 5, Aug. 2005

37 CFR 1.42. When the inventor is dead. In case of the death of the inventor, the legal representative

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

One who has reason to believe that he or she will be appointed legal representative of a deceased inventor may apply for a patent as legal representative in accordance with 37 CFR 1.42.

Application may be made by the heirs of the inven- tor, as such, if there is no will or the will did not appoint an executor and the estate was under the sum required by state law for the appointment of an administrator. The heirs should identify themselves as the legal representative of the deceased inventor in the oath or declaration submitted pursuant to 37 CFR 1.63 and 1.64.

409.01(b) Proof of Authority of Adminis- trator or Executor

The Office no longer requires proof of authority of the legal representative of a deceased or incapacitated inventor. Although the Office does not require proof of authority to be filed, any person acting as a legal representative of a deceased or incapacitated inventor should ensure that he or she is properly acting in such a capacity.

409.01(c) After Administrator or Execu- tor Has Been Discharged

When an administrator or executor has performed his or her functions and has been discharged and it is desired to make an application for an invention of the deceased, it is necessary for the administrator or exec- utor to take out new letters of administration in order that he or she may file a new application for an inven- tion of the deceased inventor.

409.01(d) Exception in Some Foreign Countries

The terms “Executor” and “Administrator” do not have exact counterparts in all foreign countries, and

therefore, those terms must be construed to fit the cir- cumstances of the case. Hence, the person or persons having authority corresponding to that of executor or administrator are permitted to make application as, for example, the heirs in the Federal Republic of Ger- many where no existing executor or administrator has been or will be appointed.

409.01(e) If Applicant of Assigned Appli- cation Dies

When an applicant who has prosecuted an applica- tion after assignment, dies, the administrator of the deceased applicant’s estate may carry on the prosecu- tion upon filing letters of administration unless and until the assignee intervenes (MPEP § 402.07).

409.01(f) Intervention of Executor Not Compulsory

When an inventor dies after filing an application and executing the oath or declaration required by 37 CFR 1.63, the executor or administrator should inter- vene, but the allowance of the application will not be withheld nor the application withdrawn from issue if the executor or administrator does not intervene.

This practice is applicable to an application which has been placed in condition for allowance or passed to issue prior to notification of the death of the inven- tor. See MPEP § 409.01.

When a joint inventor of a pro se application dies after filing the application, the living joint inventor(s) must submit proof that the other joint inventor is dead. Upon submission of such proof, only the signatures of the living joint inventors are required on the papers filed with the USPTO if the legal representative of the deceased inventor does not intervene. If the legal rep- resentative of the deceased inventor wishes to inter- vene, the legal representative must submit an oath or declaration in compliance with 37 CFR 1.63 and 1.64 (e.g., stating that he or she is the legal representative of the deceased inventor and his or her residence, citi- zenship and post office address). Once the legal repre- sentative of the deceased inventor intervenes in the pro se application, the signatures of the living joint inventors and the legal representative are required on the papers filed with the USPTO.

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409.02 Insanity or Other Legal Incapac- ity [R-3]

37 CFR 1.43. When the inventor is insane or legally incapacitated.

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

When an inventor *>becomes legally incapaci- tated< prior to the filing of an application and prior to *>executing< the oath or declaration required by 37 CFR 1.63 and no legal representative has been appointed, one must be appointed by a court of com- petent jurisdiction for the purpose of execution of the oath or declaration of the application.

409.03 Unavailability of Inventor [R-3]

35 U.S.C. 116. Inventors When an invention is made by two or more persons jointly,

they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contri- bution to the subject matter of every claim of the patent.

If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of himself and the omitted inventor. The Director, on proof of the pertinent facts and after such notice to the omitted inventor as he prescribes, may grant a patent to the inventor making the application, subject to the same rights which the omitted inventor would have had if he had been joined. The omitted inventor may subsequently join in the application.

Whenever through error a person is named in an application for patent as the inventor, or through an error an inventor is not named in an application, and such error arose without any decep- tive intention on his part, the Director may permit the application to be amended accordingly, under such terms as he prescribes.

35 U.S.C. 118. Filing by other than inventor Whenever an inventor refuses to execute an application for

patent, or cannot be found or reached after diligent effort, a person to whom the inventor has assigned or agreed in writing to assign the invention or who otherwise shows sufficient proprietary inter- est in the matter justifying such action, may make application for patent on behalf of and as agent for the inventor on proof of the pertinent facts and a showing that such action is necessary to pre- serve the rights of the parties or to prevent irreparable damage; and the Director may grant a patent to such inventor upon such notice to him as the Director deems sufficient, and on compliance with such regulations as he prescribes.

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

(a) **>If a joint inventor refuses to join in an application for patent or cannot be found or reached after diligent effort, the application may be made by the other inventor on behalf of him- self or herself and the nonsigning inventor. The oath or declara- tion in such an application must be accompanied by a petition including proof of the pertinent facts, the fee set forth in § 1.17(g), and the last known address of the nonsigning inventor. The non- signing inventor may subsequently join in the application by filing an oath or declaration complying with § 1.63<.

(b) **>Whenever all of the inventors refuse to execute an application for patent, or cannot be found or reached after diligent effort, a person to whom an inventor has assigned or agreed in writing to assign the invention, or who otherwise shows sufficient proprietary interest in the matter justifying such action, may make application for patent on behalf of and as agent for all the inven- tors. The oath or declaration in such an application must be accompanied by a petition including proof of the pertinent facts, a showing that such action is necessary to preserve the rights of the parties or to prevent irreparable damage, the fee set forth in § 1.17(g), and the last known address of all of the inventors. An inventor may subsequently join in the application by filing an oath or declaration complying with § 1.63<.

(c) The Office will send notice of the filing of the applica- tion to all inventors who have not joined in the application at the address(es) provided in the petition under this section, and publish notice of the filing of the application in the Official Gazette. The Office may dispense with this notice provision in a continuation or divisional application, if notice regarding the filing of the prior application was given to the nonsigning inventor(s).

Application papers submitted pursuant to 37 CFR 1.47 are forwarded by the Office of Initial Patent Examination (OIPE) to the Office of Petitions for a determination of whether the papers are proper, com- plete, and acceptable under 37 CFR 1.47 and for a decision on the petition under 37 CFR 1.47 before the application is sent to the Technology Center. Since an application without an oath or declaration executed by all of the inventors may be an incomplete application, an examiner should not mail an Office action in an application without a fully executed oath or declara- tion under 37 CFR 1.63 unless the application has been accorded status under 37 CFR 1.47 in a written decision on the petition.

A bona fide attempt must be made to comply with the provisions of 37 CFR 1.47 at the time the oath or declaration is first submitted. If the oath or declara- tion, and evidence submitted with the oath or declara- tion, are not acceptable, the 37 CFR 1.47 applicant will be notified of the reasons why the papers are not acceptable. The 37 CFR 1.47 applicant may request

REPRESENTATIVE OF INVENTOR OR OWNER 409.03(b)

400-43 Rev. 5, Aug. 2005

reconsideration and file supplemental evidence in a case where a bona fide attempt was made to comply with 37 CFR 1.47 from the outset.

A decision granting a petition under 37 CFR 1.47 does not alter the ownership interest or title of the application. If the nonsigning inventor has not signed an assignment document which has been recorded in the USPTO, then the 37 CFR 1.47 applicant (the com- pany that files the petition under 37 CFR 1.47(b) and establishes proprietary interest in the application) is NOT the assignee of the entire interest of the applica- tion.

409.03(a) At Least One Joint Inventor Available

37 CFR 1.47(a) and 35 U.S.C. 116, second para- graph, requires all available joint inventors to file an application “on behalf of” themselves and on behalf of a joint inventor who “cannot be found or reached after diligent effort” or who refuses to “join in an application.”

In addition to other requirements of law (35 U.S.C. 111(a) and 115), an application deposited in the U.S. Patent and Trademark Office pursuant to 37 CFR 1.47(a) must meet the following requirements:

(A) All the available joint inventors must (1) make oath or declaration on their own behalf as required by 37 CFR 1.63 or 1.175 (see MPEP § 602, § 605.01, and § 1414) and (2) make oath or declara- tion on behalf of the nonsigning joint inventor as required by 37 CFR 1.64. An oath or declaration signed by all the available joint inventors with the sig- nature block of the nonsigning inventor(s) left blank may be treated as having been signed by all the avail- able joint inventors on behalf of the nonsigning inven- tor(s), unless otherwise indicated.

(B) The application must be accompanied by proof that the nonsigning inventor (1) cannot be found or reached after diligent effort or (2) refuses to exe- cute the application papers. See MPEP § 409.03(d).

(C) The last known address of the nonsigning joint inventor must be stated. See MPEP § 409.03(e).

409.03(b) No Inventor Available

Filing under 37 CFR 1.47(b) and 35 U.S.C. 118 is permitted only when no inventor is available to make application. These provisions allow a “person” with a

demonstrated proprietary interest to make application “on behalf of and as agent for” an inventor who “can- not be found or reached after diligent effort” or who refuses to sign the application oath or declaration. The word “person” has been construed by the U.S. Patent and Trademark Office to include juristic entities, such as a corporation. Where 37 CFR 1.47(a) is available, application cannot be made under 37 CFR 1.47(b).

In addition to other requirements of law (35 U.S.C. 111(a) and 115), an application deposited pursuant to 37 CFR 1.47(b) must meet the following require- ments:

(A) The 37 CFR 1.47(b) applicant must make the oath required by 37 CFR 1.63 and 1.64 or 1.175. Where a corporation is the 37 CFR 1.47(b) applicant, an officer (President, Vice-President, Secretary, Trea- surer, or Chief Executive Officer) thereof should nor- mally sign the necessary oath or declaration. A corporation may authorize any person, including an attorney or agent registered to practice before the U.S. Patent and Trademark Office, to sign the application oath or declaration on its behalf. Where an oath or declaration is signed by a registered attorney or agent on behalf of a corporation, either proof of the attor- ney's or agent's authority in the form of a statement signed by an appropriate corporate officer must be submitted, or the attorney or agent may simply state that he or she is authorized to sign on behalf of the corporation. Where the oath or declaration is being signed on behalf of an assignee, see MPEP § 324. An inventor may not authorize another individual to act as his or her agent to sign the application oath or dec- laration on his or her behalf. Staeger v. Commissioner, 189 USPQ 272 (D.D.C. 1976), In re Striker, 182 USPQ 507 (Comm'r Pat. 1973). Where an application is executed by one other than the inventor, the decla- ration required by 37 CFR 1.63 must state the full name, residence, post office address, and citizenship of the nonsigning inventor. Also, the title or position of the person signing must be stated if signing on behalf of a corporation under 37 CFR 1.47(b).

(B) The 37 CFR 1.47(b) applicant must state his or her relationship to the inventor as required by 37 CFR 1.64.

(C) The application must be accompanied by proof that the inventor (1) cannot be found or reached after a diligent effort or (2) refuses to execute the application papers. See MPEP § 409.03(d).

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Rev. 5, Aug. 2005 400-44

(D) The last known address of the inventor must be stated. See MPEP § 409.03(e).

(E) The 37 CFR 1.47(b) applicant must make out a prima facie case (1) that the invention has been assigned to him or her or (2) that the inventor has agreed in writing to assign the invention to him or her or (3) otherwise demonstrate a proprietary interest in the subject matter of the application. See MPEP § 409.03(f).

(F) The 37 CFR 1.47(b) applicant must prove that the filing of the application is necessary (1) to pre- serve the rights of the parties or (2) to prevent irrepa- rable damage. See MPEP § 409.03(g).

409.03(c) Legal Representatives of De- ceased Inventor Not Available

37 CFR 1.47 should not be considered an alterna- tive to 37 CFR 1.42 or 35 U.S.C. 117 since the lan- guage “cannot be found or reached after diligent effort” has no reasonable application to a deceased inventor. In re Application Papers Filed September 10, 1954, 108 USPQ 340 (Comm’r Pat. 1955). See 37 CFR 1.42 and MPEP § 409.01. However, 37 CFR 1.47 does apply where a known legal representative of a deceased inventor cannot be found or reached after diligent effort, or refuses to make application. In such cases, the last known address of the legal representa- tive must be given (see MPEP § 409.03(e)).

409.03(d) Proof of Unavailability or Re- fusal [R-3]

>

I. < INVENTOR CANNOT BE REACHED

Where inability to find or reach a nonsigning inven- tor “after diligent effort” is the reason for filing under 37 CFR 1.47, a statement of facts should be submitted that fully describes the exact facts which are relied on to establish that a diligent effort was made.

The fact that a nonsigning inventor is on vacation or out of town and is therefore temporarily unavail- able to sign the declaration is not an acceptable reason for filing under 37 CFR 1.47.

Furthermore, the fact that an inventor is hospital- ized and/or is not conscious is not an acceptable rea- son for filing under 37 CFR 1.47. 37 CFR 1.43 may be available under these circumstances. See MPEP

§ 409.02. Such a petition under 37 CFR 1.47 will be dismissed as inappropriate.

The statement of facts must be signed, where at all possible, by a person having firsthand knowledge of the facts recited therein. Statements based on hearsay will not normally be accepted. Copies of documentary evidence such as internet searches, certified mail return receipts, cover letters of instructions, tele- grams, that support a finding that the nonsigning inventor could not be found or reached should be made part of the statement. The steps taken to locate the whereabouts of the nonsigning inventor should be included >in the< statement of facts. It is important that the statement contain facts as opposed to conclu- sions. >

II. < REFUSAL TO JOIN

A refusal by an inventor to sign an oath or declara- tion when the inventor has not been presented with the application papers does not itself suggest that the inventor is refusing to join the application unless it is clear that the inventor understands exactly what he or she is being asked to sign and refuses to accept the application papers. A copy of the application papers should be sent to the last known address of the non- signing inventor, or, if the nonsigning inventor is rep- resented by counsel, to the address of the nonsigning inventor’s attorney. The fact that an application may contain proprietary information does not relieve the 37 CFR 1.47 applicant of the responsibility to present the application papers to the inventor if the inventor is willing to receive the papers in order to sign the oath or declaration. It is noted that the inventor may obtain a complete copy of the application, unless the inven- tor has assigned his or her interest in the application, and the assignee has requested that the inventor not be permitted access. See MPEP § 106. It is reasonable to require that the inventor be presented with the appli- cation papers before a petition under 37 CFR 1.47 is granted since such a procedure ensures that the inven- tor is apprised of the application to which the oath or declaration is directed. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956).

Where a refusal of the inventor to sign the applica- tion papers is alleged, the circumstances of the pre- sentation of the application papers and of the refusal must be specified in a statement of facts by the person

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400-45 Rev. 5, Aug. 2005

who presented the inventor with the application papers and/or to whom the refusal was made. State- ments by a party not present when an oral refusal is made will not be accepted.

Proof that a bona fide attempt was made to present a copy of the application papers (specification, includ- ing claims, drawings, and oath or declaration) to the nonsigning inventor for signature, but the inventor refused to accept delivery of the papers or expressly stated that the application papers should not be sent, may be sufficient. When there is an express oral refusal, that fact along with the time and place of the refusal must be stated in the statement of facts. When there is an express written refusal, a copy of the docu- ment evidencing that refusal must be made part of the statement of facts. The document may be redacted to remove material not related to the inventor’s reasons for refusal.

When it is concluded by the 37 CFR 1.47 applicant that a nonsigning inventor’s conduct constitutes a refusal, all facts upon which that conclusion is based should be stated in the statement of facts in support of the petition or directly in the petition. If there is docu- mentary evidence to support facts alleged in the peti- tion or in any statement of facts, such evidence should be submitted. Whenever a nonsigning inventor gives a reason for refusing to sign the application oath or dec- laration, that reason should be stated in the petition.

409.03(e) Statement of Last Known Ad- dress

An application filed pursuant to 37 CFR 1.47 must state the last known address of the nonsigning inven- tor.

That address should be the last known address at which the inventor customarily receives mail. See MPEP § 605.03. Ordinarily, the last known address will be the last known residence of the nonsigning inventor.

Inasmuch as a nonsigning inventor is notified that an application pursuant to 37 CFR 1.47 has been filed on his or her behalf, other addresses at which the non- signing inventor may be reached should also be given.

409.03(f) Proof of Proprietary Interest

When an application is deposited pursuant to 37 CFR 1.47(b), the 37 CFR 1.47(b) applicant must prove that

(A) the invention has been assigned to the appli- cant, or

(B) the inventor has agreed in writing to assign the invention to the applicant, or

(C) the applicant otherwise has sufficient propri- etary interest in the subject matter to justify the filing of the application.

If the application has been assigned, a copy of the assignment (in the English language) must be submit- ted. The assignment must clearly indicate that the invention described in the 37 CFR 1.47(b) application was assigned to the 37 CFR 1.47(b) applicant. A statement under 37 CFR 3.73(b) by the assignee must also be submitted (see MPEP § 324). An assignment of an application and any “reissue, division, or contin- uation of said application” does not itself establish an assignment of a continuation-in-part application. In re Gray, 115 USPQ 80 (Comm’r Pat. 1956). An assign- ment to a 37 CFR 1.47(b) applicant for the sole pur- pose of obtaining a filing date for a 37 CFR 1.47(b) application is not considered an assignment within the meaning of 35 U.S.C. 118 and 37 CFR 1.47(b).

When an inventor has agreed in writing to assign an invention described in an application deposited pursu- ant to 37 CFR 1.47(b), a copy of that agreement should be submitted. If an agreement to assign is dependent on certain specified conditions being met, it must be established by a statement of facts by some- one with first hand knowledge of the circumstances in which those conditions have been met. A typical agreement to assign is an employment agreement where an employee (nonsigning inventor) agrees to assign to his or her employer (37 CFR 1.47(b) appli- cant) all inventions made during employment. When such an agreement is relied on, it must be established by a statement of a person having firsthand knowl- edge of the facts that the invention was made by the employee while employed by the 37 CFR 1.47(b) applicant.

If the invention has not been assigned, or if there is no written agreement to assign, the 37 CFR 1.47(b) applicant must demonstrate that he or she otherwise has a sufficient proprietary interest in the matter.

A proprietary interest obtained other than by assignment or agreement to assign may be demon- strated by an appropriate legal memorandum to the effect that a court of competent jurisdiction (federal, state, or foreign) would by the weight of authority in

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that jurisdiction award title of the invention to the 37 CFR 1.47(b) applicant. The facts in support of any conclusion that a court would award title to the 37 CFR 1.47(b) applicant should be made of record by way of an affidavit or declaration of the person having firsthand knowledge of same. The legal mem- orandum should be prepared and signed by an attor- ney at law familiar with the law of the jurisdiction involved. A copy (in the English language) of a stat- ute (if other than the United States statute) or a court decision (if other than a reported decision of a federal court or a decision reported in the United States Pat- ents Quarterly) relied on to demonstrate a proprietary interest should be made of record.

409.03(g) Proof of Irreparable Damage

Irreparable damage may be established by a show- ing (a statement) that a filing date is necessary to pre- serve the rights of the party or to prevent irreparable damage.

409.03(h) Processing and Acceptance of a 37 CFR 1.47 Application [R-3]

A filing date is assigned to an application deposited pursuant to 37 CFR 1.47 provided the requirements of 37 CFR 1.53(b) are met. A filing receipt will be sent to the applicant and the application >, or an electronic message concerning the petition under 37 CFR 1.47,< will be forwarded to the Office of Petitions, for con- sideration of the petition filed under 37 CFR 1.47.

When papers deposited pursuant to 37 CFR 1.47 are found acceptable, the Office of Petitions enters a decision to that effect in the file. A notice will be pub- lished in the Official Gazette identifying the applica- tion number, filing date, the title of the invention and the name(s) of the nonsigning inventor(s). The U.S. Patent and Trademark Office will notify the nonsign- ing inventor(s) or, if the inventor is deceased, the legal representative(s), of the filing of an application under 37 CFR 1.47 by sending a letter to the last known address of the nonsigning inventor(s) or legal repre- sentative(s). In a continuation or divisional applica- tion filed under 37 CFR 1.53(b) of an application accorded status under 37 CFR 1.47, if a copy of a dec- laration from a prior application and a copy of a deci- sion according status under 37 CFR 1.47 are filed as permitted by 37 CFR 1.63(d)(3)(i), the notice will not be repeated. See 37 CFR 1.47(c). In addition, the

notice is not repeated in continued prosecution appli- cations filed under 37 CFR 1.53(d).

409.03(i) Rights of the Nonsigning Inven- tor [R-3]

The nonsigning inventor (also referred to as an “inventor designee”) may protest his or her designa- tion as an inventor. The nonsigning inventor is enti- tled to inspect any paper in the application, order copies thereof at the price set forth in 37 CFR 1.19, and make his or her position of record in the file wrapper of the application. Alternatively, the nonsign- ing inventor may arrange to do any of the preceding through a registered patent attorney or agent.

While the U.S. Patent and Trademark Office will grant the nonsigning inventor access to the applica- tion, inter partes proceedings will not be instituted in 37 CFR 1.47 case. In re Hough, 108 USPQ 89 (Comm'r Pat. 1955). A nonsigning inventor is not entitled to a hearing (Cogar v. Schuyler, 464 F.2d 747, 173 USPQ 389 (D.C. Cir. 1972)), and is not entitled to prosecute the application if status under 37 CFR 1.47 has been accorded, or if proprietary interest of the 37 CFR 1.47(b) applicant has been shown to the satisfac- tion of the U.S. Patent and Trademark Office.

A nonsigning inventor may join in a 37 CFR 1.47 application. To join in the application, the nonsigning inventor must file an appropriate 37 CFR 1.63 oath or declaration. Even if the nonsigning inventor joins in the application, he or she cannot revoke or give a power of attorney without agreement of the 37 CFR 1.47 applicant. >See MPEP § 402.10.<

The rights of a nonsigning inventor are protected by the fact that the patent resulting from an application filed under 37 CFR 1.47(b) and 35 U.S.C. 118 must issue to the inventor, and in an application filed under 37 CFR 1.47(a) and 35 U.S.C. 116, the inventor has the same rights that he or she would have if he or she had joined in the application. In re Hough, 108 USPQ 89 (Comm'r Pat. 1955).

If a nonsigning inventor feels that he or she is the sole inventor of an invention claimed in a 37 CFR 1.47 application naming him or her as a joint inventor, the nonsigning inventor may file his or her own appli- cation and request that his or her application be placed in interference with the 37 CFR 1.47 application. If the claims in both the nonsigning inventor's applica-

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tion and the 37 CFR 1.47 application are otherwise found allowable, an interference may be declared.

409.03(j) Action Following Acceptance of a 37 CFR 1.47 Application [R-3]

After an application deposited pursuant to 37 CFR 1.47 is found acceptable by the Office, the examiner will act on the application in the usual manner. Papers filed by an inventor who did not originally join in the application, and papers relating to its 37 CFR 1.47 status, will be placed in the file wrapper.

In the event the previously nonsigning inventor decides to join in the application by filing an executed oath or declaration complying with 37 CFR 1.63, the oath or declaration will be placed in the application file.

**>When an examiner receives an application in which a petition under 37 CFR 1.47 has been filed, he or she must check the file to determine that the peti- tion has been decided by the Office of Petitions. If the petition has not been decided by the Office of Peti- tions, the application, or an electronic message con- cerning the petition, must be forwarded to the Office of Petitions for appropriate action.<

An application filed under 37 CFR 1.47 can be pub- lished as a Statutory Invention Registration.

410 Representations to the U.S. Patent and Trademark Office [R-5]

37 CFR 1.4. Nature of correspondence and signature requirements.

*****

(d)(4) Certifications. (i) Section 10.18 certifications: The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 10.18(b) of this chapter. Violations of § 10.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the impo- sition of sanctions under § 10.18(c) of this chapter. Any practitio- ner violating § 10.18(b) of this chapter may also be subject to disciplinary action. See §§ 10.18(d) and 10.23(c)(15) of this chap- ter.

(ii) Certifications as to the signature: (A) Of another: A person submitting a document signed by another under paragraphs (d)(2) or (d)(3) of this section is obligated to have a reasonable basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature.

(B) Self certification: The person inserting a signature under paragraphs (d)(2) or (d)(3) of this section in a document submitted to the Office certifies that the inserted signature appear- ing in the document is his or her own signature.

(C) Sanctions: Violations of the certifications as to the signature of another or a person’s own signature, set forth in para- graphs (d)(4)(ii)(A) and (B) of this section, may result in the imposition of sanctions under § 10.18(c) and (d) of this chapter.

(e) Correspondence requiring a person’s signature and relat- ing to registration practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or dis- ciplinary proceedings must be submitted with an original hand written signature personally signed in permanent dark ink or its equivalent by that person.

*****

37 CFR 10.18. Signature and certificate for correspondence filed in the Patent and Trademark Office.

(a) For all documents filed in the Office in patent, trade- mark, and other non-patent matters, except for correspondence that is required to be signed by the applicant or party, each piece of correspondence filed by a practitioner in the Patent and Trade- mark Office must bear a signature by such practitioner complying with the provisions of § 1.4(d), § 1.4(e), or § 2.193(c)(1) of this chapter.

(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party’s own knowl- edge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this paragraph may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom; and

(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circum- stances, that —

(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of prosecution before the Office;

(ii) The claims and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the estab- lishment of new law;

(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

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(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

(c) Violations of paragraph (b)(1) of this section by a practi- tioner or non-practitioner may jeopardize the validity of the appli- cation or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom. Viola- tions of any of paragraphs (b)(2)(i) through (iv) of this section are, after notice and reasonable opportunity to respond, subject to such sanctions as deemed appropriate by the Commissioner, or the Commissioner's designee, which may include, but are not limited to, any combination of —

(1) Holding certain facts to have been established; (2) Returning papers; (3) Precluding a party from filing a paper, or presenting

or contesting an issue; (4) Imposing a monetary sanction; (5) Requiring a terminal disclaimer for the period of the

delay; or (6) Terminating the proceedings in the Patent and Trade-

mark Office. (d) Any practitioner violating the provisions of this section

may also be subject to disciplinary action. See § 10.23(c)(15).

37 CFR 1.4(d)(4) provides that the presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or nonpractitioner, constitutes a certifica- tion under 37 CFR 10.18(b), and that violations of 37 CFR 10.18(b)(2) may subject the party to sanc- tions under 37 CFR 10.18(c). Thus, by presenting a paper to the Office, the party is making the certifica- tions set forth in 37 CFR 10.18(b), and is subject to sanctions under 37 CFR 10.18(c) for violations of 37 CFR 10.18(b)(2), regardless of whether the party is a practitioner or nonpractitioner. A practitioner violat- ing 37 CFR 10.18(b) may also be subject to disciplin- ary action in lieu of or in addition to sanctions under 37 CFR 10.18(c) for violations of 37 CFR 10.18(b).

Additional certifications provided in 37 CFR 1.4(d)(4) include that a person inserting a signature into a document under 37 CFR 1.4(d)(2) or 1.4(d)(3) certifies that the inserted signature appearing in the document is his or her own signature. Also, a person filing a document signed by another under 37 CFR 1.4(d)(2) or 1.4(d)(3) is obligated to have a reasonable belief that the signature present on the document was actually inserted by that person. The person filing the document should retain evidence of the authenticity of the signature. See 37 CFR 1.4(h).

37 CFR 10.18(b) provides that, by presenting any paper to the USPTO, the party presenting such paper

is making two certifications: (1) the first certification is that the statements made therein are subject to the declaration clause of 37 CFR 1.68; (2) the second cer- tification is the certification required for papers filed in a federal court under Rule 11(b) of the Federal Rules of Civil Procedure.

The first certification has permitted the USPTO to eliminate the separate verification requirement previ- ously contained in 37 CFR 1.6, 1.8, 1.10, 1.27, 1.28, 1.47, 1.48, 1.52, 1.55, 1.69, 1.102, 1.125, 1.137, 1.377, 1.378, 1.740, 1.804, 1.805, 3.26, and 5.4 for statements of facts by persons who are not registered to practice before the USPTO. As statements submit- ted to the USPTO by any person are now, by operation of 37 CFR 10.18(b)(1), verified statements, a separate verification requirement is no longer necessary. The USPTO, however, has retained the verification requirement for a statement to be submitted under oath or declaration (37 CFR 1.68) in a number of sec- tions (e.g., 37 CFR 1.63, 1.130, 1.131, 1.132, 1.495(f), and 5.25).

The second certification is based upon Rule 11(b) of the Federal Rules of Civil Procedure (1993). This provision is promulgated pursuant to the Director’s authority under 35 U.S.C. *>2(b)(2)< to establish reg- ulations for the conduct of proceedings in the USPTO, and is intended to discourage the filing of frivolous papers by practitioners or non-practitioners in the USPTO. Rule 11(b) of the Federal Rules of Civil Pro- cedure provides:

Representations to Court. By presenting to the court (whether by signing, filing, submitting, or later advo- cating) a pleading, written motion, or other paper, an attorney or unrepresented party is certifying that to the best of the person's knowledge, information and belief, formed after an inquiry reasonable under the circum- stances, --

(1) it is not being presented for any improper purpose, such as to harass or to cause unnecessary delay or need- less increase in the cost of litigation;

(2) the claims, defenses, and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the establishment of new law;

(3) the allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

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(4) the denials of factual contentions are warranted on the evidence or, if specifically so identified, are reason- ably based on a lack of information or belief.

Fed. R. Civ. P. 11(b)(1993). 37 CFR 10.18(b)(2) tracks the language of Fed. R.

Civ. P. 11(b). The advisory committee notes to Fed. R. Civ. P. 11(b) provide, in part, that:

[Fed. R. Civ. P. 11(b) and (c)] restate the provisions requiring attorneys and pro se litigants to conduct a rea- sonable inquiry into the law and facts before signing pleadings, written motions, and other documents, and pre- scribing sanctions for violations of these obligations. The [1993] revision in part expands the responsibilities of liti- gants to the court, while providing greater constraints and flexibility in dealing with infractions of the rule. The rule continues to require litigants to “stop-and-think” before initially making legal or factual contentions. It also, how- ever, emphasizes the duty of candor by subjecting litigants to potential sanctions for insisting upon a position after it is no longer tenable and by generally providing protection against sanctions if they withdraw or correct contentions after a potential violation is called to their attention.

The rule applies only to assertions contained in papers filed with or submitted to the court. It does not cover mat- ters arising for the first time during oral presentations to the court, when counsel may make statements that would not have been made if there had been more time for study and reflection. However, a litigant's obligations with respect to the contents of these papers are not measured solely as of the time they are filed with or submitted to the court, but include reaffirming to the court and advocating positions contained in those pleadings and motions after learning that they cease to have any merit. For example, an attorney who during a pretrial conference insists on a claim or defense should be viewed as “presenting to the court” that contention and would be subject to the obliga- tions of [Rule 11(b)] measured at that time. Similarly, if after a notice of removal is filed, a party urges in federal court the allegations of a pleading filed in state court (whether as claims, defenses, or in disputes regarding removal or remand), it would be viewed as “presenting”-- and hence certifying to the district court under Rule 11-- those allegations.

The certification with respect to allegations and other fac- tual contentions is revised in recognition that sometimes a litigant may have good reason to believe that a fact is true or false but may need discovery, formal or informal, from opposing parties or third persons to gather and confirm the evidentiary basis for the allegation. Tolerance of fac- tual contentions in initial pleadings by plaintiffs or defen- dants when specifically identified as made on information and belief does not relieve litigants from the obligation to

conduct an appropriate investigation into the facts that is reasonable under the circumstances; it is not a license to join parties, make claims, or present defenses without any factual basis or justification. Moreover, if evidentiary sup- port is not obtained after a reasonable opportunity for fur- ther investigation or discovery, the party has a duty under the rule not to persist with that contention. [Rule 11(b)] does not require a formal amendment to pleadings for which evidentiary support is not obtained, but rather calls upon a litigant not thereafter to advocate such claims or defenses.

The certification is that there is (or likely will be) “eviden- tiary support” for the allegation, not that the party will prevail with respect to its contention regarding the fact. That summary judgment is rendered against a party does not necessarily mean, for purposes of this certification, that it had no evidentiary support for its position. On the other hand, if a party has evidence with respect to a con- tention that would be sufficient to defeat a motion for summary judgment based thereon, it would have suffi- cient “evidentiary support” for purposes of Rule 11.

Denials of factual contentions involve somewhat different considerations. Often, of course, a denial is premised upon the existence of evidence contradicting the alleged fact. At other times a denial is permissible because, after an appropriate investigation, a party has no information concerning the matter or, indeed, has a reasonable basis for doubting the credibility of the only evidence relevant to the matter. A party should not deny an allegation it knows to be true; but it is not required, simply because it lacks contradictory evidence, to admit an allegation that it believes is not true.

The changes in [Rule 11(b)(3) and (4)] will serve to equal- ize the burden of the rule upon plaintiffs and defendants, who under Rule 8(b) are in effect allowed to deny allega- tions by stating that from their initial investigation they lack sufficient information to form a belief as to the truth of the allegation. If, after further investigation or discov- ery, a denial is no longer warranted, the defendant should not continue to insist on that denial. While sometimes helpful, formal amendment of the pleadings to withdraw an allegation or denial is not required by [Rule 11(b)].

Arguments for extensions, modifications, or reversals of existing law or for creation of new law do not violate [Rule 11(b)(2)] provided they are “nonfrivolous.” This establishes an objective standard, intended to eliminate any “empty-head pure-heart” justification for patently frivolous arguments. However, to the extent to which a litigant has researched the issues and found some support for its theories even in minority opinions, in law review articles, or through consultation with other attorneys should certainly be taken into account in determining whether [Rule 11(b)(2)] has been violated. Although

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arguments for a change in law are not required to be spe- cifically so identified, a contention that is so identified should be viewed with greater tolerance under [Rule 11].

Amendments to the Federal Rules of Civil Procedure at 50-53 (1993), reprinted in 146 F.R.D. 401, 584-87. An “inquiry reasonable under the circumstances” requirement of 37 CFR 10.18(b)(2) is identical to that in Fed. R. Civ. P. 11(b). The Federal courts have stated in regard to the “reasonable inquiry” require- ment of Fed. R. Civ. P. 11:

In requiring reasonable inquiry before the filing of any pleading in a civil case in federal district court, Rule 11 demands “an objective determination of whether a sanc- tioned party's conduct was reasonable under the circum- stances.” In effect it imposes a negligence standard, for negligence is a failure to use reasonable care. The equa- tion between negligence and failure to conduct a reason- able precomplaint inquiry is . . . that “the amount of investigation required by Rule 11 depends on both the time available to investigate and on the probability that more investigation will turn up important evidence; the Rule does not require steps that are not cost-justified.”

Hays v. Sony Corp. of Am., 847 F.2d 412, 418, 7 USPQ2d 1043, 1048 (7th. Cir. 1988) (citations omitted) (decided prior to the 1993 amendment to Fed. R. Civ. P. 11, but discussing a “reasonable under the circumstances” standard).

37 CFR 1.4(d)(4) and 10.18 do not require a practi- tioner to advise the client (or third party) providing information of this certification effect (or the sanc- tions applicable to noncompliance), or question the client (or third party) when such information or instructions are provided. When a practitioner is sub- mitting information (e.g., a statement of fact) from the applicant or a third party, or relying upon information from the applicant or a third party in his/her argu- ments, the Office will consider a practitioner's “inquiry reasonable under the circumstances” duty under 37 CFR 10.18 met so long as the practitioner has no knowledge of information that is contrary to the information provided by the applicant or third party or would otherwise indicate that the information provided by the applicant or third party was so pro- vided for the purpose of a violation of 37 CFR 10.18 (e.g., was submitted to cause unnecessary delay).

Nevertheless, it is highly advisable for a practitio- ner to advise a client or third party that any informa- tion so provided must be reliable and not misleading. The submission by an applicant of misleading or inac-

curate statements of facts during the prosecution of applications for patent has resulted in the patents issuing on such applications being held unenforce- able. See, e.g. , Refac Int'l Ltd. v. Lotus Development Corp., 81 F.3d 1576, 38 USPQ2d 1665 (Fed. Cir. 1996); Paragon Podiatry Laboratory, Inc. v. KLM Laboratories, Inc., 984 F.2d 1182, 25 USPQ2d 1561 (Fed. Cir 1993); Rohm & Haas Co. v. Crystal Chem. Co., 722 F.2d 1556, 200 USPQ 289 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); Ott v. Goodpasture, 40 USPQ2d 1831 (D.N. Tex. 1996); Herman v. Will- iam Brooks Shoe Co., 39 USPQ2d 1773 (S.D.N.Y. 1996); Golden Valley Microwave Food Inc. v. Weaver Popcorn Co., 837 F. Supp. 1444, 24 USPQ2d 1801 (N.D. Ind. 1992), aff'd, 11 F.3d 1072 (Fed. Cir. 1993)(table), cert. denied, 511 U.S. 1128 (1994). Likewise, false statements by a practitioner in a paper submitted to the Office during the prosecution of an application for patent have resulted in the patent issu- ing on such application also being held unenforceable. See General Electro Music Corp. v. Samick Music Corp., 19 F.3d 1405, 30 USPQ2d 1149 (Fed. Cir. 1994)(false statement in a petition to make an applica- tion special constitutes inequitable conduct, and ren- ders the patent issuing on such application unenforceable).

An applicant has no duty to conduct a prior art search as a prerequisite to filing an application for patent. See Nordberg, Inc. v. Telsmith, Inc., 82 F.3d 394, 397, 38 USPQ2d 1593, 1595-96 (Fed. Cir. 1996); FMC Corp. v. Hennessy Indus., Inc., 836 F.2d 521, 526 n.6, 5 USPQ2d 1272, 1275-76 n.6 (Fed. Cir. 1987); FMC Corp. v. Manitowoc Co., 835 F.2d 1411, 1415, 5 USPQ2d 1112, 1115 (Fed. Cir. 1987); Ameri- can Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d 1350, 1362, 220 USPQ 763, 772 (Fed. Cir.), cert. denied, 469 U.S. 821, 224 USPQ 520 (1984). Thus, the “inquiry reasonable under the circumstances” requirement of 37 CFR 10.18 does not create any new duty on the part of an applicant for patent to conduct a prior art search. See MPEP § 609; cf. Judin v. United States, 110 F.3d 780, 42 USPQ2d 1300 (Fed. Cir 1997)(the failure to obtain and examine the accused infringing device prior to bringing a civil action for infringement violates the 1983 version of Fed. R. Civ. P. 11). The “inquiry reasonable under the circum- stances” requirement of 37 CFR 10.18, however, will require an inquiry into the underlying facts and cir-

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cumstances when a practitioner provides conclusive statements to the Office (e.g., a statement that the entire delay in filing the required reply from the due date for the reply until the filing of a grantable peti- tion pursuant to 37 CFR 1.137(b) was unintentional).

37 CFR 10.18(c) specifically provides that viola- tions of 37 CFR 10.18(b)(1) may jeopardize the valid- ity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom, and that violations of any of 37 CFR 10.18(b)(2)(i) through (iv) are, after notice and reasonable opportunity to respond, subject to such sanctions as deemed appropriate by the Com- missioner, or the Commissioner's designee, which may include, but are not limited to, any combination of:

(A) holding certain facts to have been established; (B) returning papers; (C) precluding a party from filing a paper, or pre-

senting or contesting an issue; (D) imposing a monetary sanction; (E) requiring a terminal disclaimer for the period

of the delay; or (F) terminating the proceedings in the U.S. Patent

and Trademark Office.

The Office has amended 37 CFR 1.4(d)(4) and 10.18 with the objective of discouraging the filing of frivolous or clearly unwarranted correspondence in the Office, not to routinely review correspondence for compliance with 37 CFR 10.18(b)(2) and impose sanctions under 37 CFR 10.18(c).

Where the circumstances of an application or other proceeding warrant a determination of whether there has been a violation of 37 CFR 10.18(b), the file or the application or other proceeding will be forwarded to the Office of Enrollment and Discipline (OED) for a determination of whether there has been a violation of 37 CFR 10.18(b). In the event that OED determines that a provision of 37 CFR 10.18(b) has been violated, the Commissioner, or the Commissioner’s designee, will determine what (if any) sanction(s) under 37 CFR 10.18(c) is to be imposed in the application or other proceeding. In addition, if OED determines that a pro- vision of 37 CFR 10.18(b) has been violated by a practitioner, OED will determine whether such practi- tioner is to be subject to disciplinary action (see 37 CFR 1.4(d)(4) and 10.18(d)). That is, OED will pro- vide a determination of whether there has been a vio- lation of 37 CFR 10.18(b), and if such violation is by a practitioner, whether such practitioner is to be sub- ject to disciplinary action; however, OED will not be responsible for imposing sanctions under 37 CFR 10.18(c) in an application or other proceeding.

37 CFR 10.18(d) provides that any practitioner vio- lating the provisions of this section may also be sub- ject to disciplinary action. 37 CFR 10.18(d) (and the corresponding provision of 37 CFR 1.4(d)(4)) clari- fies that a practitioner may be subject to disciplinary action in lieu of, or in addition to, the sanctions set forth in 37 CFR 10.18(c) for violations of 37 CFR 10.18.

●●●●●●●●●●●●●●●●●●●●●●●●●●●●●

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Chapter 500 Receipt and Handling of Mail and Papers

500-1 Rev. 5, Aug. 2006

501 Filing Papers With the U.S. Patent and Trademark Office

502 Depositing Correspondence 502.01 Correspondence Transmitted by Facsimile 502.02 Correspondence Signature

Requirements 502.03 Communications via the Internet 502.04 Duplicate Copies of Correspondence 503 Application Number and Filing Receipt 504 Assignment of Application for Examination 505 “Office Date” Stamp of Receipt 506 Completeness of Original

Application 506.02 Review of Refusal To Accord Filing Date 507 Drawing Review in the Office of Initial Patent

Examination 508 Distribution 508.01 Papers Sent to Wrong

Technology Center (TC) 508.02 Papers Received After

Patenting or Abandonment 508.03 Unmatched Papers 508.04 Unlocatable Patent or Application Files 509 Payment of Fees 509.01 Deposit Accounts 509.02 Small Entity Status — Definitions 509.03 Claiming Small Entity Status 510 U.S. Patent and Trademark Office Business

Hours 511 Postal Service Interruptions and Emergencies 512 Certificate of Mailing or

Transmission 513 Deposit as Express Mail with U.S. Postal

Service

501 Filing Papers With the U.S. Patent and Trademark Office [R-5]

37 CFR 1.1. Addresses for non-trademark correspondence with the United States Patent and Trademark Office.

(a) In general. Except as provided in paragraphs (a)(3)(i), (a)(3)(ii) and (d)(1) of this section, all correspondence intended for the United States Patent and Trademark Office must be addressed to either “Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313- 1450” or to specific areas within the Office as set out in para- graphs (a)(1), and (a)(3)(iii) of this section. When appropriate, correspondence should also be marked for the attention of a par- ticular office or individual.

(1) Patent correspondence. (i) In general. All correspondence concerning patent

matters processed by organizations reporting to the Commissioner for Patents should be addressed to: Commissioner for Patents, PO Box 1450, Alexandria, Virginia 22313-1450.

(ii) Board of Patent Appeals and Interferences. See § 41.10 of this title. Notices of appeal, appeal briefs, reply briefs, requests for oral hearing, as well as all other correspondence in an application or a patent involved in an appeal to the Board for which an address is not otherwise specified, should be addressed as set out in paragraph (a)(1)(i) of this section.

(2) [Reserved] (3) Office of General Counsel correspondence.—

(i) Litigation and service. Correspondence relating to pending litigation or otherwise within the scope of part 104 of this title shall be addressed as provided in § 104.2.

(ii) Disciplinary proceedings. Correspondence to counsel for the Director of the Office of Enrollment and Disci- pline relating to disciplinary proceedings pending before an Administrative Law Judge or the Director shall be mailed to: Office of the Solicitor, PO Box 16116, Arlington, Virginia 22215.

(iii) Solicitor, in general. Correspondence to the Office of the Solicitor not otherwise provided for shall be addressed to: Mail Stop 8, Director of the United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313- 1450.

(iv) General Counsel. Correspondence to the Office of the General Counsel not otherwise provided for, including corre- spondence to the General Counsel relating to disciplinary pro- ceedings, shall be addressed to: General Counsel, United States Patent and Trademark Office, PO Box 1450, Alexandria, Virginia 22313-1450.

(v) Improper correspondence. Correspondence im- properly addressed to a Post Office Box specified in paragraphs (a)(3)(i) and (a)(3)(ii) of this section will not be filed elsewhere in the United States Patent and Trademark Office, and may be re- turned.

(4) Office of Public Records correspondence. (i) Assignments. All patent-related documents sub-

mitted by mail to be recorded by Assignment Services Division, except for documents filed together with a new application, should be addressed to: Mail Stop Assignment Recordation Ser- vices, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450. See § 3.27.

(ii) Documents. All requests for certified or uncerti- fied copies of patent documents should be addressed to: Mail Stop Document Services, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313- 1450.

(5) Office of Enrollment and Discipline correspondence. All correspondence directed to the Office of Enrollment and Dis- cipline concerning enrollment, registration, and investigation mat- ters should be addressed to Mail Stop OED, Director of the United States Patent and Trademark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

(b) Patent Cooperation Treaty. Letters and other communi- cations relating to international applications during the interna-

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tional stage and prior to the assignment of a national serial number should be additionally marked “Mail Stop PCT.”

(c) For reexamination proceedings. (1) Requests for ex parte reexamination (original request

papers only) should be additionally marked “Mail Stop Ex parte Reexam.”

(2) Requests for inter partes reexamination (original request papers) and all subsequent inter partes reexamination cor- respondence filed in the Office, other than correspondence to the Office of the General Counsel pursuant to § 1.1(a)(3) and § 1.302(c), should be additionally marked “Mail Stop Inter partes Reexam.”

(d) Maintenance fee correspondence.— (1) Payments. Payments of maintenance fees in patents

not submitted electronically should be mailed to: United States Patent and Trademark Office, P.O. Box 371611, Pittsburgh, Penn- sylvania 15250-1611.

(2) Other correspondence. Correspondence related to maintenance fees other than payments of maintenance fees in pat- ents is not to be mailed to P.O. Box 371611, Pittsburgh, Pennsyl- vania 15250-1611, but must be mailed to: Mail Stop M Correspondence, Director of the United States Patent and Trade- mark Office, P.O. Box 1450, Alexandria, Virginia 22313-1450.

(e) Patent term extension. All applications for extension of patent term under 35 U.S.C. 156 and any communications relating thereto intended for the United States Patent and Trademark Office should be additionally marked “Mail Stop Patent Ext.” When appropriate, the communication should also be marked to the attention of a particular individual, as where a decision has been rendered.

(f) [Reserved]

37 CFR 1.4. Nature of correspondence and signature requirements.

(a) Correspondence with the Patent and Trademark Office comprises:

(1) Correspondence relating to services and facilities of the Office, such as general inquiries, requests for publications supplied by the Office, orders for printed copies of patents, orders for copies of records, transmission of assignments for recording, and the like, and

(2) Correspondence in and relating to a particular applica- tion or other proceeding in the Office. See particularly the rules relating to the filing, processing, or other proceedings of national applications in subpart B, §§ 1.31 to 1.378; of international appli- cations in subpart C, §§ 1.401 to 1.499; of ex parte reexaminations of patents in subpart D, §§ 1.501 to 1.570; of extension of patent term in subpart F, §§ 1.710 to 1.785; of inter partes reexamina- tions of patents in subpart H, §§ 1.902 to 1.997; and of the Board of Patent Appeals and Interferences in part 41 of this title.

(b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other pro- ceeding must be furnished for each file to which the paper per- tains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspon- dence in the file of an application, patent, or other proceeding

should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.

(c) Since different matters may be considered by different branches or sections of the United States Patent and Trademark Office, each distinct subject, inquiry or order must be contained in a separate paper to avoid confusion and delay in answering papers dealing with different subjects.

(d)(1) Handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must:

(i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equiva- lent, by that person; or

(ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original. In the event that a copy of the original is filed, the original should be retained as evi- dence of authenticity. If a question of authenticity arises, the Office may require submission of the original.

**> (2) S-signature. An S-signature is a signature inserted

between forward slash marks, but not a handwritten signature as defined by § 1.4(d)(1). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature not covered by either a handwrit- ten signature of § 1.4(d)(1) or an Office Electronic Filing System (EFS) character coded signature of § 1.4(d)(3). Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d), or via the Office Electronic Filing System as an EFS Tag(ged) Image File Format (TIFF) attachment, for a patent application, patent, or a reexamination proceeding may be S-signature signed instead of being personally signed (i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) are as follows.<

(i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./); and

**> (ii) A patent practitioner (§ 1.32(a)(1)), signing pursu-

ant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitio- ner’s registration number; otherwise the number character may not be used in an S-signature.<

(iii) The signer’s name must be: (A) Presented in printed or typed form preferably

immediately below or adjacent the S-signature, and (B) Reasonably specific enough so that the identity

of the signer can be readily recognized.

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(3) EFS character coded signature. Correspondence in character coded form being filed via the Office Electronic Filing System for a patent application or patent may be signed electroni- cally. The electronic signature must consist only of letters of the English alphabet, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctu- ation. The person signing the correspondence must personally insert the electronic signature with a first single forward slash mark before, and a second single forward slash mark after, the electronic signature (e.g., /Dr. James T. Jones, Jr./).

(4) Certifications. (i) Section 10.18 certifications: The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 10.18(b) of this chapter. Violations of § 10.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the impo- sition of sanctions under § 10.18(c) of this chapter. Any practitio- ner violating § 10.18(b) of this chapter may also be subject to disciplinary action. See §§ 10.18(d) and 10.23(c)(15) of this chap- ter.

(ii) Certifications as to the signature: (A) Of another: A person submitting a document signed by another under para- graphs (d)(2) or (d)(3) of this section is obligated to have a reason- able basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature.

(B) Self certification: The person inserting a signa- ture under paragraphs (d)(2) or (d)(3) of this section in a docu- ment submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.

(C) Sanctions: Violations of the certifications as to the signature of another or a person’s own signature, set forth in paragraphs (d)(4)(ii)(A) and (B) of this section, may result in the imposition of sanctions under § 10.18(c) and (d) of this chapter.

(e) Correspondence requiring a person’s signature and relat- ing to registration practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or dis- ciplinary proceedings must be submitted with an original hand written signature personally signed in permanent dark ink or its equivalent by that person.

(f) When a document that is required by statute to be certi- fied must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.

(g) An applicant who has not made of record a registered attorney or agent may be required to state whether assistance was received in the preparation or prosecution of the patent applica- tion, for which any compensation or consideration was given or charged, and if so, to disclose the name or names of the person or persons providing such assistance. Assistance includes the prepa- ration for the applicant of the specification and amendments or other papers to be filed in the Patent and Trademark Office, as well as other assistance in such matters, but does not include merely making drawings by draftsmen or stenographic services in typing papers.

(h) Ratification/confirmation/evidence of authenticity: The Office may require ratification, confirmation (which includes sub- mission of a duplicate document but with a proper signature), or

evidence of authenticity of a signature, such as when the Office has reasonable doubt as to the authenticity (veracity) of the signa- ture, e.g., where there are variations of a signature, or where the signature and the typed or printed name, do not clearly identify the person signing.

I. GENERAL MAILING ADDRESSES

The U.S. Patent and Trademark Office (Office) has three separate general mailing addresses. The addresses are as follows:

A. For Patent Applications and Patent-Related Papers

Correspondence in patent-related matters under the direction of the Commissioner for Patents should be addressed to:

Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450

Such correspondence includes: patent applications, replies to notices of informality, requests for exten- sion of time, notices of appeal to the Board of Patent Appeals and Interferences (the Board), briefs in sup- port of an appeal to the Board, requests for oral hear- ing before the Board, applications for extensions of term of patent, requests for publication of Statutory Invention Registration (SIR), requests for reexamina- tion, statutory disclaimers, certificates of correction, petitions to the Commissioner for Patents, submission of information disclosure statements, petitions to institute a public use proceeding, petitions to revive abandoned patent applications, and other correspon- dence related to patent applications and patents which is processed by organizations reporting to the Com- missioner for Patents.

Certain patent-related correspondence requires immediate Office attention. Examples are:

(A) Petitions for express abandonment to avoid publication under 37 CFR 1.138(c);

(B) Petitions to withdraw an application from issue under 37 CFR 1.313(c);

(C) Request for expedited examination of a design application (rocket docket); and

(D) Papers required by the Office of Patent Publi- cation to be hand-carried or faxed to the Office of Patent Publication.

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Applicants are encouraged to transmit these types of correspondence by facsimile transmission (see MPEP § 502.01) or, where permitted (items B and D only), hand-carry them to the appropriate area of the Office for processing. (see MPEP § 502)

B. For Trademark Applications and Trademark- Related Papers

Correspondence in trademark-related matters under the direction of the Commissioner for Trademarks or the Trademark Trial and Appeal Board should be addressed to:

Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451

Such correspondence includes all trademark appli- cations and other trademark-related mail, except for trademark documents sent to the Assignment Division for recordation, correspondence for the Office’s Madrid Processing Unit, requests for certified and uncertified copies of trademark documents, and fil- ings submitted electronically. See 37 CFR 2.190.

Correspondence to be delivered by the United States Postal Service to the Office’s Madrid Process- ing Unit must be mailed to:

Commissioner for Trademarks P.O. Box 16471 Arlington, VA 22215-1471 Attention MPU

C. For Other Correspondence

Patent and trademark documents sent to the Assign- ment Division for recordation (Mail Stop Assignment Recordation Services), requests for certified or uncer- tified copies of patent and trademark documents (Mail Stop Document Services), and for correspondence for which an address is not otherwise specified in 37 CFR 1.1, should be addressed to:

Director of the United States Patent and Trademark Office P.O. Box 1450 Alexandria, VA 22313-1450

II. SEPARATE MAILING ADDRESSES FOR CERTAIN CORRESPONDENCE

The Office has separate mailing addresses for cer- tain correspondence:

(A) Certain court-related correspondence (e.g., summons and complaint) being delivered to the Office via the U.S. Postal Service (USPS) must be addressed:

General Counsel United States Patent and Trademark Office P.O. Box 15667 Arlington, VA 22215

(B) Correspondence directed to the Office of Enrollment and Discipline (OED) Director relating to disciplinary proceedings pending before an Adminis- trative Law Judge or the Director must be addressed:

Office of the Solicitor P.O. Box 16116 Arlington, Virginia 22215

(C) Payments of maintenance fees in patents being delivered to the Office via the USPS should be addressed:

United States Patent and Trademark Office P.O. Box 371611 Pittsburgh, Pennsylvania 15250-1611

(D) A deposit account replenishment being deliv- ered to the Office via the USPS should be addressed:

Director of the United States Patent and Trademark Office P.O. Box **>371279 Pittsburgh, PA 15251-7279<

Persons filing correspondence with the Office should check the rules of practice, the Official Gazette, or the Office’s Internet Web site (http:// www.uspto.gov) to determine the appropriate mailing address for such correspondence.

III. HAND-DELIVERY OF PAPERS

Patent-related papers may be hand-carried to the Office. If the correspondence is hand-carried to the Office, with limited exceptions (see subsection I.A., above) it must be delivered to:

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Customer Service Window Randolph Building 401 Dulany Street Alexandria, VA 22314

See MPEP § 502. Trademark-related papers may be filed at the

“walk-up” window located in the Trademark Assis- tance Center, Madison East, Concourse Level, Room C55, 600 Dulany Street, Alexandria, VA 22314.

As provided in 37 CFR 1.4(c), matters that are to be considered by different branches or sections of the USPTO must be contained in separate papers. The fol- lowing form paragraph may be used to notify the applicant of this requirement when the applicant has filed a single paper containing distinct subjects, inquiries, or orders.

¶ 5.01.01 Separate Paper Required The [1] submitted [2] should have been submitted as a separate

paper as required by 37 CFR 1.4(c). The paper has been entered. However, all future correspondence must comply with 37 CFR 1.4.

Examiner Note: 1. In bracket 1, indicate the item required to be separately sub- mitted, such as an affidavit, petition, or other appropriate docu- ment. 2. If the applicant is a pro se inventor, include a copy of the rule.

Those who correspond with the USPTO are strongly encouraged not to include correspondence which will have to be directed to different areas (e.g., Patents and Trademarks) of the Office in a single envelope. Including multiple papers in a single enve- lope increases the likelihood that one or more of the papers will be delayed before reaching the appropriate area. Placing the papers in separately addressed enve- lopes will reduce the number of actions being per- formed by the USPTO unnecessarily or inappropriately.

Pursuant to 37 CFR 1.1, correspondence intended for the USPTO must be mailed to P.O. Box 1450, Alexandria, VA 22313-1450, except as otherwise pro- vided. Except for certain mail addressed incorrectly to the Office of the General Counsel (see 37 CFR 1.1(a)(3)(v)), there will be no penalty for addressing a document to the wrong area within the Office, as long as one of the approved addresses is used. Use of the specific addresses listed within 37 CFR 1.1 is strongly encouraged because it will facilitate the process both

for the Office and the filer. Accordingly, a new appli- cation incorrectly addressed to the Director will be treated the same as if the application was addressed to the specific Commissioner.

All mailed communications are received by the Incoming-Mail Section of the Office of Initial Patent Examination (OIPE), which opens and distributes all official mail.

Special mail stops have been established to allow the forwarding of particular types of mail to appropri- ate areas of the Office as quickly as possible. A list of these mail stops is published weekly in the Official Gazette. Only the specified type of document for a particular mail stop should be placed in an envelope addressed to that mail stop.

If any documents other than the specified type iden- tified for each department are addressed to that department, they will be significantly delayed in reaching the appropriate area for which they were intended.

502 Depositing Correspondence [R-5]

37 CFR 1.5. Identification of patent, patent application, or patent-related proceeding.

(a) No correspondence relating to an application should be filed prior to receipt of the application number from the Patent and Trademark Office. When a letter directed to the Patent and Trade- mark Office concerns a previously filed application for a patent, it must identify on the top page in a conspicuous location, the appli- cation number (consisting of the series code and the serial num- ber; e.g., 07/123,456), or the serial number and filing date assigned to that application by the Patent and Trademark Office, or the international application number of the international appli- cation. Any correspondence not containing such identification will be returned to the sender where a return address is available. The returned correspondence will be accompanied with a cover letter which will indicate to the sender that if the returned corre- spondence is resubmitted to the Patent and Trademark Office within two weeks of the mail date on the cover letter, the original date of receipt of the correspondence will be considered by the Patent and Trademark Office as the date of receipt of the correspondence. Applicants may use either the Certificate of Mailing or Transmission procedure under § 1.8 or the Express Mail procedure under § 1.10 for resubmissions of returned corre- spondence if they desire to have the benefit of the date of deposit in the United States Postal Service. If the returned correspondence is not resubmitted within the two-week period, the date of receipt of the resubmission will be considered to be the date of receipt of the correspondence. The two-week period to resubmit the returned correspondence will not be extended. In addition to the applica- tion number, all letters directed to the Patent and Trademark Office concerning applications for patent should also state the name of the applicant, the title of the invention, the date of filing

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the same, and, if known, the group art unit or other unit within the Patent and Trademark Office responsible for considering the letter and the name of the examiner or other person to which it has been assigned.

(b) When the letter concerns a patent other than for purposes of paying a maintenance fee, it should state the number and date of issue of the patent, the name of the patentee, and the title of the invention. For letters concerning payment of a maintenance fee in a patent, see the provisions of § 1.366(c).

(c) [Reserved] (d) A letter relating to a reexamination proceeding should

identify it as such by the number of the patent undergoing reexam- ination, the reexamination request control number assigned to such proceeding, and, if known, the group art unit and name of the examiner to which it been assigned.

(e) [Reserved] (f) When a paper concerns a provisional application, it

should identify the application as such and include the application number.

37 CFR 1.6. Receipt of correspondence. (a) Date of receipt and Express Mail date of deposit. Corre-

spondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:

(1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for corre- spondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this sec- tion, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.

(2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as “Express Mail” with the United States Postal Service.

(3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.

(4) [Reserved] (b) [Reserved] (c) Correspondence delivered by hand. In addition to being

mailed, correspondence may be delivered by hand during hours the Office is open to receive correspondence.

(d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the United States Patent and Trademark Office, unless that date is a Saturday, Sunday, or Fed- eral holiday within the District of Columbia. See § 1.6(a)(3). To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the United States Patent and Trademark Office. The application number of a patent application, the control

number of a reexamination proceeding, the interference number of an interference proceeding, or the patent number of a patent should be entered as a part of the sender’s identification on a fac- simile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the follow- ing situations:

(1) Correspondence as specified in § 1.4(e), requiring an original signature;

(2) Certified documents as specified in § 1.4(f); (3) Correspondence which cannot receive the benefit of

the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D) and (F), and § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;

(4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, or 1.437;

(5) A request for reexamination under § 1.510 or § 1.913; (6) Correspondence to be filed in a patent application

subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;

(7) [Reserved] (8) [Reserved] (9) In contested cases before the Board of Patent Appeals

and Interferences except as the Board may expressly authorize. (e) [Reserved] (f) Facsimile transmission of a patent application under

§ 1.53(d). In the event that the Office has no evidence of receipt of an application under § 1.53(d) (a continued prosecution applica- tion) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53(d) may petition the Director to accord the application under § 1.53(d) a filing date as of the date the application under § 1.53(d) is shown to have been transmitted to and received in the Office,

(1) Provided that the party who transmitted such applica- tion under § 1.53(d):

(i) Informs the Office of the previous transmission of the application under § 1.53(d) promptly after becoming aware that the Office has no evidence of receipt of the application under § 1.53(d);

(ii) Supplies an additional copy of the previously transmitted application under § 1.53(d); and

(iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previ- ous transmission of the application under § 1.53(d) and is accom- panied by a copy of the sending unit’s report confirming transmission of the application under § 1.53(d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53(d).

(2) The Office may require additional evidence to deter- mine if the application under § 1.53(d) was transmitted to and received in the Office on the date in question.

All applications (provisional and nonprovisional) may be sent to the U.S. Patent and Trademark Office by mail (see MPEP § 501), or they may be hand-car-

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ried to the Customer Service Window. New utility patent applications and provisional applications can also be filed via the Office’s Electronic Filing System (EFS). See MPEP § 1730, subsection II.B. A contin- ued prosecution application (CPA) filed under 37 CFR 1.53(d) (available for design applications only), amendments, and other papers may be sent to the U.S. Patent and Trademark Office by mail (see MPEP § 501), by facsimile (see MPEP § 502.01) or hand-carried to the Customer Service Window. Any correspondence sent to the U.S. Patent and Trademark Office should include the sender’s return address and ZIP Code designation. For correspondence hand- delivered to the Office, see subsection II. below.

See 37 CFR 2.190 and MPEP § 501 for addresses pertaining to trademark correspondence.

All correspondence related to a national patent application already filed with the U.S. Patent and Trademark Office must include the identification of the application number or the serial number and the filing date assigned to the application by the Office. Any correspondence not containing the proper identi- fication set forth in 37 CFR 1.5(a) will be returned to the sender by OIPE. Each paper should be inspected to assure that the papers being returned contain either an “Office Date” stamp or a TC date stamp. A minor error in the identification of the application can be corrected by the Office provided the correct identifi- cation can be quickly discovered. Examples of minor errors are transposed numbers, typographical errors, and listing the parent application number. The failure to give any application number is not a minor error. The Office often experiences difficulty in matching incoming papers with the application file to which they pertain because insufficient or erroneous infor- mation is given. This applies especially to amend- ments, powers of attorney, changes of address, status letters, petitions for extension of time, and other peti- tions.

It would be of great assistance to the Office if all incoming papers pertaining to a filed application car- ried the following items:

(A) Application number (checked for accuracy, including series code and serial no.).

(B) Art Unit number (copied from most recent Office communication).

(C) Filing date. (D) Name of the examiner who prepared the most

recent Office action. (E) Title of invention. (F) Confirmation number (see MPEP § 503).

Applicants may be reminded of this provision by including form paragraph 5.01.

¶ 5.01 Proper Heading for Incoming Papers It would be of great assistance to the Office if all incoming

papers pertaining to a filed application carried the following items:

1. Application number (checked for accuracy, including series code and serial no.).

2. Art Unit number (copied from most recent Office communi- cation).

3. Filing date. 4. Name of the examiner who prepared the most recent Office

action. 5. Title of invention. 6. Confirmation number (see MPEP § 503).

The Office prefers identifying indicia to be pro- vided on the drawings. If such identifying indicia is provided, it must be placed on the front of each sheet of drawings within the top margin. See 37 CFR 1.84(c). The identifying indicia should include the title of the invention, inventor’s name, application number, and confirmation number (see MPEP § 503). If the Office has not yet assigned an application num- ber and confirmation number to the application, the docket number (if any) used by the applicant to track the application should be provided.

When the Office receives replacement sheets of drawings for patent applications after the application has been filed, a cover letter identifying the drawings by application number should accompany them. The application number and other identifying indicia should be placed on each sheet of drawings in accor- dance with 37 CFR 1.84(c). Each drawing sheet sub- mitted after the filing date of the application must be identified as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d).

It is requested that the submission of additional or supplemental papers on a newly filed application be deferred until an application number has been received.

Documents which have no particular time or sequence requirements should be filed in the Office with materials submitted in reply to the statutory or regulatory requirements. Examples are certified cop-

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ies of foreign documents to support priority in patent applications, changes of power of attorney, or changes in mailing address following first action.

All letters relating to a reexamination proceeding should identify the proceeding involved by patent number and reexamination request control number.

I. POST ALLOWANCE CORRESPON- DENCE

All post allowance correspondence, except for petitions under 37 CFR 1.313(c), should be addressed “Mail Stop Issue Fee.” Any petition filed under 37 CFR 1.313(c) to withdraw an application from issue after payment of the issue fee should be clearly marked “Petition under 37 CFR 1.313(c)” and be either hand-carried to the Office of Petitions or sub- mitted by facsimile to the Office of Petitions at (571) 273-0025. All other types of petitions, if transmitted by facsimile transmission to the Office, must be directed to the central facsimile number ((571) 273- 8300).

Any paper filed after receiving the Issue notifica- tion should include the indicated patent number.

Since an allowed application may be issued as a patent within about four weeks of payment of the issue fee, all post allowance correspondence should be filed prior to the date of issue fee payment to ensure the papers reach the appropriate USPTO offi- cial for consideration before the date the application issues as a patent. See MPEP § 2732 for a discussion of the patent term adjustment impact of submitting amendments or other papers after a notice of allow- ance has been mailed.

If the above suggestions are adopted, the process- ing of both new and allowed applications could pro- ceed more efficiently and promptly through the U.S. Patent and Trademark Office.

II. HAND-DELIVERY OF PAPERS

No official paper which relates to a pending appli- cation may be personally delivered to a TC except papers that are directed to an application subject to a secrecy order pursuant to 35 U.S.C. 181, or are national security classified and that are directed to Licensing and Review. Effective December 1, 2003, all official patent application related correspondence for organizations reporting to the Commissioner for Patents (e.g., TCs, the Office of Patent Publication,

and the Office of Petitions) that is hand-carried (or delivered by other delivery services) must be deliv- ered to the Customer Service Window, with a few exceptions.

Correspondence for Which Centralized Delivery of Hand-Carried Papers Is Not Required

The following types of patent application related correspondence may be delivered to the specific loca- tion where they are processed instead of the Customer Service Window. Before hand-carrying papers to a specific location or a particular office within the USPTO, the office should be called to obtain its cur- rent location. Applicants should check the USPTO web site for the current telephone number. Any such correspondence carried to the Customer Service Win- dow will be accepted and routed to the appropriate office, thereby incurring a delay before being pro- cessed. Correspondence which is not related to a spe- cific patent or patent application, such as question on policy, on employment, or other general inquiry may be hand-carried to the current designated locations depending on the substance of the correspondence.

(A) Access Requests - Requests for access to patent application files may be hand-carried to the File Information Unit (FIU) in Room 2E04, 2900 Crystal Drive (South Tower), Arlington, VA 22202. Requests for access to patent application files that are maintained in the Image File Wrapper system and that have not yet been published may also be hand-carried to the Public Search Facility on the 1st floor of the Madison East Building, 600 Dulany Street, Alexan- dria, VA 22314.

(B) Patent Term Extensions under 35 U.S.C. 156 - Applications for patent term extension under 35 U.S.C. 156 may be hand-carried to the Office of Patent Legal Administration (OPLA) in Room 07D85 of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madi- son West, the security guard should call the OPLA at (571) 272-*>7701< or (571) 272-7746 for delivery assistance.

(C) Assignments to be Recorded - Assignments may be hand-carried to the Office of Public Records Customer Service Window on the 2nd floor of the South Tower Building, 2900 Crystal Drive, Arlington, VA 22202.

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(D) Office of General Counsel - Correspondence for the Office of General Counsel may be hand-car- ried to the Office of General Counsel in Room 10C20 of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madi- son East, the security guard should call the Office of General Counsel at (571) 272-7000 for delivery assis- tance.

(E) Solicitor’s Office - Correspondence for the Solicitor’s Office may be hand-carried to the Solici- tor’s Office in Room 8C43>-A< of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Solicitor’s Office at (571) 272- 9035 for delivery assistance.

(F) Interference Related Correspondence - Corre- spondence relating to interferences may be hand-car- ried to the 1st floor lobby of Madison East Building, 600 Dulany Street, Alexandria, VA 22314, where a drop-off box for hand-carried documents to be filed with the Board of Patent Appeals and Interferences (Board) is located. Customers need to pass through the magnetometer and have the materials passed through the x-ray sensor before placing them in the drop-off box. The drop-off box is for Interference related correspondence only. Boxes are not permitted in the drop-off box. Box materials should be hand- carried to Madison East, Room 9B55-A using the fol- lowing procedures. At the guard station in Madison East, the security guard should call the Board at (571) 272-9797 to obtain authorization to allow entry into the building for delivery to Room 9B55-A. Access to Room 9B55-A is available from 8:30 am to 4:45 pm only. Documents/boxes hand-carried to the drop-off box or to Room 9B55-A after 4:45 pm will receive the next day’s filing date. Customers desiring a stamped return receipt for their filing need to personally bring their filing and postcard to Room 9B55-A during the hours stated above, or leave the postcard with the fil- ing (postcard must include correct postage mail stamp and the address where the postcard is to be mailed). The Board will stamp the filing date and mail the postcard to the customer.

(G) Secrecy Order - Applications subject to a secrecy order pursuant to 35 U.S.C. 181, or are national security classified, and correspondence related thereto, may be hand-carried to Licensing and Review in Room 4B31 of the Knox Building, 501

Dulany Street, Alexandria, VA 22314. At the guard station in Knox, the security guard should call Licens- ing and Review at (571) 272-8203 for delivery assis- tance.

(H) Expedited Foreign Filing License Petitions - Petitions for foreign filing license pursuant to 37 CFR 5.12(b) for which expedited handling is requested and petitions for retroactive license under 37 CFR 5.25 may be hand-carried to **>a drop-off box located at the guard station at the lobby of the Knox Building, 501 Dulany Street, Alexandria, VA 22314. Upon approaching the guard station, the delivery personnel should state their desire to drop off the request. Corre- spondence packages will be inspected/scanned before being placed in the drop-off box. All requests should identify a fax number, telephone number and mailing address. All responses to the request will be sent by fax, followed by a mailed copy. If a fax number is not available, a hardcopy will be mailed to the mailing address provided.<

(I) Petitions to Withdraw from Issue - Petitions to withdraw from issue may be hand-carried to the Office of Petitions on the 7th floor of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Office of Petitions at (571) 272-3282 for delivery assistance. Hand-carried papers will be accepted between the hours of 8:30 am to 3:45 pm.

(J) Documents Requested by the Office of Patent Publication - Documents requested by the Office of Patent Publication may be hand-carried to the Office of Patent Publication in Room 8A24, 2900 Crystal Drive (South Tower Building), Arlington, VA 22202, during business hours.

> (K) Office of Enrollment and Discipline (OED) –

Correspondence for the Office of Enrollment and Dis- cipline may be hand-carried to the receptionist at Room 8C43-B of the Madison West Building, 600 Dulany Street, Alexandria, VA 22314. At the guard station in Madison West, the security guard should call the Office of Enrollment and Discipline at 571- 272-4097 for delivery assistance.

(L) Office of Finance – Refund requests, deposit account replenishments, and maintenance fee pay- ments may be hand-carried to the Office of Finance receptionist in Suite 300 of the Carlyle Place Build-

502.01 MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 500-10

ing, 2051 Jamieson Ave., Alexandria, VA 22314. Hand-carried correspondence will only be accepted, and not processed. Although the receptionist will not process any correspondence, if the correspondence is delivered with an itemized postcard, the receptionist will provide a delivery receipt by date stamping the postcard. Depending on whether the correspondence is a refund request, deposit account related (e.g., a deposit account replenishment), or maintenance fee related (e.g., a maintenance fee payment), the corre- spondence should be placed in an envelope with REFUND, DEPOSIT ACCOUNT, or MAINTE- NANCE FEE written in dark ink across the envelope.

(M)Office of Public Records – Requests for certi- fied copies of Office records including patent and trademark copies, applications-as-filed, file wrappers and contents, and assignment records may be hand- carried to the Office of Public Records’ Customer Service Window on the 2nd floor of the South Tower Building, 2900 Crystal Drive, Arlington, VA 22202, during business hours.<

III. “EXPRESS MAIL” SERVICE

There are two types of “Express Mail” delivery offered by the U.S. Postal Service — “Post Office to Addressee” and “Post Office to Post Office.” The only type of service which can be used for “Express Mail” directed to the U.S. Patent and Trademark Office is the “Post Office to Addressee” service of the U.S. Postal Service. 37 CFR 1.10. This service provides for the use of a mailing label which clearly indicates the date on which a particular paper or fee was deposited.

The addresses that should be used for “Express Mail” sent to the U.S. Patent and Trademark Office are set forth in 37 CFR 1.1 (see MPEP § 501).

“Post Office to Post Office” Express Mail does not provide for delivery but instead is retained at the postal facility of the addressee for pickup. The Postal Service does not notify the addressee that this type of Express Mail has been received and is awaiting pickup. If not picked up, this mail is held for 15 days and then returned to the sender.

Therefore, since the U.S. Patent and Trademark Office does not have resources for picking up any mail, including Express Mail, the “Post Office to Post Office” Express Mail will not reach the U.S. Patent and Trademark Office.

See MPEP § 513 for the use of the Express Mail Mailing procedure of 37 CFR 1.10.

502.01 Correspondence Transmitted by Facsimile [R-5]

37 CFR 1.6. Receipt of correspondence.

*****

(d) Facsimile transmission. Except in the cases enumerated below, correspondence, including authorizations to charge a deposit account, may be transmitted by facsimile. The receipt date accorded to the correspondence will be the date on which the complete transmission is received in the United States Patent and Trademark Office, unless that date is a Saturday, Sunday, or Fed- eral holiday within the District of Columbia. See § 1.6(a)(3). To facilitate proper processing, each transmission session should be limited to correspondence to be filed in a single application or other proceeding before the United States Patent and Trademark Office. The application number of a patent application, the control number of a reexamination proceeding, the interference number of an interference proceeding, or the patent number of a patent should be entered as a part of the sender’s identification on a fac- simile cover sheet. Facsimile transmissions are not permitted and, if submitted, will not be accorded a date of receipt in the follow- ing situations:

(1) Correspondence as specified in § 1.4(e), requiring an original signature;

(2) Certified documents as specified in § 1.4(f); (3) Correspondence which cannot receive the benefit of

the certificate of mailing or transmission as specified in § 1.8(a)(2)(i)(A) through (D) and (F), and § 1.8(a)(2)(iii)(A), except that a continued prosecution application under § 1.53(d) may be transmitted to the Office by facsimile;

(4) Color drawings submitted under §§ 1.81, 1.83 through 1.85, 1.152, 1.165, 1.173, or 1.437;

(5) A request for reexamination under § 1.510 or § 1.913; (6) Correspondence to be filed in a patent application

subject to a secrecy order under §§ 5.1 through 5.5 of this chapter and directly related to the secrecy order content of the application;

(7) [Reserved] (8) [Reserved] (9) In contested cases before the Board of Patent Appeals

and Interferences except as the Board may expressly authorize.

*****

The date of receipt accorded to any correspondence permitted to be sent by facsimile transmission, includ- ing a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (for design applications only), is the date the complete transmission is received by an Office facsimile unit, unless the transmission is com- pleted on a Saturday, Sunday, or Federal holiday within the District of Columbia. Correspondence for

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500-11 Rev. 5, Aug. 2006

which transmission was completed on a Saturday, Sunday, or Federal holiday within the District of Columbia, will be accorded a receipt date of the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia. For example, a facsimile transmission to the Office from California starting on a Friday at 8:45 p.m. Pacific time and taking 20 minutes, would be completed at 9:05 p.m. Pacific time. The complete transmission would be received in the Office around 12:05 a.m. Eastern time on Saturday. The receipt date accorded to the correspondence is the date of the following business day, which in this case, would be Monday (assuming that Monday was not a Federal holiday within the District of Columbia). Note however, that if the Certificate of Transmission is available (for doc- uments not proscribed by 37 CFR 1.8(a)(2)), then the above facsimile may be considered timely filed on Friday if it contains a Certificate of Transmission and is in compliance with 37 CFR 1.8(a)(1)(i)(B) and (ii).

37 CFR 1.6(d) specifies the types of correspon- dence which may be transmitted by facsimile. These would include CPAs filed under 37 CFR 1.53(d) (available for design applications only), amendments, declarations, petitions, information disclosure state- ments (IDS), terminal disclaimers, notices of appeal and appeal briefs, requests for continued examination (RCEs) under 37 CFR 1.114, assignment documents, issue fee transmittals and authorizations to charge deposit accounts. The situations where transmissions by facsimile are prohibited are identified in 37 CFR 1.6(d)(1)-(9). Prohibitions cover situations where originals are required as specified in 37 CFR 1.4(e) and (f), and situations where accepting a facsimile transmission would be unduly burdensome on the Office. As a courtesy, the Office will attempt to notify senders whenever correspondence is sent to the Office by facsimile transmission that falls within one of these prohibitions. Senders are cautioned against sub- mitting correspondence by facsimile transmission which is not permitted under 37 CFR 1.6(d) since such correspondence will not be accorded a receipt date.

An applicant filing a CPA for a design application only by facsimile transmission must include an autho- rization to charge the basic filing fee to a deposit account or to a credit card, or the application will be

treated under 37 CFR 1.53(f) as having been filed without the basic filing fee (as fees cannot otherwise be transmitted by facsimile).

There is a special receipt procedure for filing a CPA by fax, whereby the Office will fax back a receipt of the CPA filing if applicant submits the Office receipt form along with the CPA filing.

37 CFR 1.6. Receipt of correspondence.

*****

(f) Facsimile transmission of a patent application under § 1.53(d). In the event that the Office has no evidence of receipt of an application under § 1.53(d) (a continued prosecution applica- tion) transmitted to the Office by facsimile transmission, the party who transmitted the application under § 1.53(d) may petition the Director to accord the application under § 1.53(d) a filing date as of the date the application under § 1.53(d) is shown to have been transmitted to and received in the Office,

(1) Provided that the party who transmitted such applica- tion under § 1.53(d):

(i) Informs the Office of the previous transmission of the application under § 1.53(d) promptly after becoming aware that the Office has no evidence of receipt of the application under § 1.53(d);

(ii) Supplies an additional copy of the previously transmitted application under § 1.53(d); and

(iii) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previ- ous transmission of the application under § 1.53(d) and is accom- panied by a copy of the sending unit’s report confirming transmission of the application under § 1.53(d) or evidence that came into being after the complete transmission and within one business day of the complete transmission of the application under § 1.53(d).

(2) The Office may require additional evidence to deter- mine if the application under § 1.53(d) was transmitted to and received in the Office on the date in question.

37 CFR 1.6(f) provides for the situation in which the Office has no evidence of receipt of a CPA trans- mitted to the Office by facsimile transmission. 37 CFR 1.6(f) requires a petition be filed requesting that the CPA be accorded a filing date as of the date the CPA is shown to have been transmitted to and received in the Office. The showing must include, inter alia, a copy of the sending unit’s report confirm- ing transmission of the application or evidence that came into being after the complete transmission of the application and within one business day of the com- plete transmission of the application.

502.01 MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 500-12

I. CENTRALIZED FACSIMILE NUMBER FOR OFFICIAL PATENT APPLICATION RELATED CORRESPONDENCE

A. Central Number

Effective December 1, 2003, all patent application related correspondence transmitted by facsimile must be directed to the central facsimile number, with a few exceptions below. The central facsimile number is (571) 273-8300. Replies to Office actions including after-final amendments that are transmitted by facsim- ile must be directed to the central facsimile number. Unofficial correspondence such as draft proposed amendments for interviews may continue to be trans- mitted by facsimile to the Technology Centers (TCs). Office personnel should not use their personal facsim- ile numbers for official application related correspon- dence. Office personnel that inadvertently receive official application related correspondence on a per- sonal facsimile number must either route (do not for- ward) the correspondence to the official central facsimile number or they may, with applicant’s (or applicant’s representative) permission, make the fac- simile amendment part of an examiner’s amendment.

B. Correspondence Which May Be Sent by Fac- simile to Other Than the Central Facsimile Number

For each Office location listed below, only the par- ticular type of correspondence indicated may be trans- mitted to the specific facsimile number at that Office location. All other types of facsimile transmitted cor- respondence must be sent to the central facsimile number ((571) 273-8300).

(1) ** PCT Operations and PCT Legal Adminis- tration

Correspondence subsequent to filing in an interna- tional application before the U.S. Receiving Office, the U.S. International Searching Authority, or the U.S. International Preliminary Examining Authority:

-- Papers in international applications: (571) 273- 3201 facsimile number

-- Response to Decisions on Petition: (571) 273- 0459 facsimile number

Note: An international application for patent or a copy of the international application and the basic national fee necessary to enter national stage, as spec- ified in 37 CFR 1.495(b), may not be submitted by facsimile. See 37 CFR 1.6(d)(3) (referencing 37 CFR 1.8(a)(2)(i)(D) and (F)). Subsequent correspondence may be transmitted by facsimile in an application before the U.S. Receiving Office, the U.S. Interna- tional Searching Authority, or the U.S. International Preliminary Examining Authority, but it will not receive the benefit of any certificate of transmission (or mailing). See 37 CFR 1.8(a)(2)(i)(E). Correspon- dence during the national stage, subsequent to **>entry< are handled in the same manner as a U.S. to national application.

*>-- The PCT Help Desk: (571) 273-0419 facsimile number (571) 272-4300 telephone number

(2) < Office of Patent Publication Payment of an issue fee and any required publica-

tion fee by authorization to charge a deposit account or credit card, and drawings: **>(571) 273-2885< facsimile number

Note: Although submission of drawings by fac- simile may reduce the quality of the drawings, the Office will generally print the drawings as received.

*>Office of Patent Publication telephone num- bers to check on receipt of payment: (571) 272-4200 or 1-888-786-0101

(3) < Office of Pre-Grant Publication Petitions for express abandonment to avoid publi-

cation under 37 CFR 1.138(c), and Requests for express abandonment under 37 CFR 1.138: (703) 305-8568 facsimile number

*> (4) < Electronic Business Center (EBC)

Requests for Customer Number Data Change (PTO/SB/124), and Requests for a Customer Number (PTO/SB/125): (571) 273-0177 facsimile number

*>Note: The EBC may also be reached by e- mail at: ebc@uspto.gov. EBC telephone number for customer service and assistance: 866-217-9197

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500-13 Rev. 5, Aug. 2006

(5) < Assignment Branch

Assignments or other documents affecting title: (571) 273-0140 facsimile number

Note: Customers may submit documents directly into the automated Patent and Trademark Assignment System and receive the resulting recordation notice at their facsimile machine. (Assignment documents sub- mitted through the Electronic Patent Assignment Sys- tem also permit the recordation notice to be faxed to customers.) Credit card payments to record assign- ment documents are acceptable, and use of the Credit Card form (PTO-2038) is required for the credit card information to be separated from the assignment records. Only documents with an identified patent application or patent number, a single cover sheet to record a single type of transaction, and the fee paid by an authorization to charge a USPTO deposit account or credit card may be submitted via facsimile. Addi- tional information regarding the submission of assign- ment documents via facsimile may be obtained from the USPTO web site at http://www.uspto.gov/web/ offices/ac/ido/opr/ptasfax.pdf

*>Assignment Branch telephone number for assistance: (571) 272-3350

(6) < Central Reexamination Unit (CRU)

>Ex parte and< Inter partes reexamination cor- respondence, except for the initial request: **>(571) 273-9900< facsimile number

Note: **>Correspondence related to reexami- nation proceedings will be separately scanned in the CRU.

CRU telephone number for customer service and inquiries: (571) 272-7705<

*>

(7) < Board of Patent Appeals and Interfer- ences

Correspondence related to pending interferences permitted to be transmitted by facsimile (only where expressly authorized, see 37 CFR 1.6(d)(9)): (571) 273-0042 facsimile number

Note: Correspondence should not be transmitted to this number if an interference has not yet been declared.

*> (8) < Office of the General Counsel

Correspondence permitted to be transmitted by facsimile to the Office of the General Counsel: (571) 273-0099 facsimile number

*> (9) < Office of the Solicitor

Correspondence permitted to be transmitted by facsimile to the Office of the Solicitor: (571) 273- 0373 facsimile number

*> (10) < Licensing and Review

Petitions for a foreign filing license pursuant to 37 CFR 5.12(b), including a petition for a foreign fil- ing license where there is no corresponding U.S. application (37 CFR 5.13): (571) 273-0185 facsimile number

Note: Correspondence to be filed in a patent application subject to a secrecy order under 37 CFR 5.1 to 5.5 and directly related to the secrecy order content of the application may not be transmitted via facsimile. See 37 CFR 1.6(d)(6).

*> (11) < Office of Petitions

Petitions to withdraw from issue: (571) 273-0025 facsimile number

Note: All other types of petitions must be directed to the central facsimile number (571) 273- 8300. Petitions sent to the central facsimile number should be marked “Special Processing Submission.”

> (12) Office of the Enrollment and Discipline Correspondence permitted to be transmitted to

the Office of the Enrollment and Discipline: (571) 273-0074 facsimile number

(13) Office of Finance Refund requests, deposit account inquiries, and

maintenance fee payments: (571) 273-6500 facsimile number

Office of Finance telephone number for cus- tomer service and inquiries: (571) 272-6500

(14) Office of Public Records Requests for certified copies of Office records

may be transmitted to: (571) 273-3250 facsimile num- ber

The Office of Public Records’ Document Ser- vices Division telephone number for customer service and inquiries: (571) 272-3150<

502.02 MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 5, Aug. 2006 500-14

II. CORRESPONDENCE RELATIVE TO PATENTS AND PATENT APPLICATIONS WHERE FILING BY FACSIMILE TRANS- MISSION IS NOT PERMITTED

(A) A document that is required by statute to be certified;

(B) A national patent application specification and drawing (provisional or nonprovisional) or other correspondence for the purpose of obtaining an appli- cation filing date, other than a continued prosecution application filed under 37 CFR 1.53(d);

(C) Color drawings submitted under 37 CFR 1.81, 1.83-1.85, 1.152, 1.165, 1.173, or 1.437**;

(D) Correspondence in an interference which an Administrative Patent Judge orders to be filed by hand or “Express Mail”;

(E) Agreements between parties to an interfer- ence under 35 U.S.C. 135(c);

(F) Correspondence in contested cases before the Board of Patent Appeals and Interferences, unless expressly authorized by the Board;

(G) Correspondence to be filed in a patent appli- cation subject to a secrecy order under 37 CFR 5.1- 5.5 and directly related to the secrecy order content of the application;

(H) An international application for patent; (I) A copy of the international application and

the basic national fee necessary to enter the national stage, as specified in 37 CFR 1.495(b);

(J) A request for reexamination under 37 CFR 1.510 or 37 CFR 1.913.

Applicants are reminded that the facsimile process may reduce the quality of the drawings, and the Office will generally print the drawings as received.

See MPEP § 1834.01 for a discussion concerning facsimile transmissions in PCT applications.

502.02 Correspondence Signature Re- quirements [R-5]

37 CFR 1.4. Nature of correspondence and signature requirements.

*****

(d)(1)Handwritten signature. Each piece of correspondence, except as provided in paragraphs (d)(2), (d)(3), (e) and (f) of this section, filed in an application, patent file, or other proceeding in the Office which requires a person’s signature, must:

(i) Be an original, that is, have an original handwritten signature personally signed, in permanent dark ink or its equiva- lent, by that person; or

(ii) Be a direct or indirect copy, such as a photocopy or facsimile transmission (§ 1.6(d)), of an original. In the event that a copy of the original is filed, the original should be retained as evi- dence of authenticity. If a question of authenticity arises, the Office may require submission of the original.

**> (2) S-signature. An S-signature is a signature inserted

between forward slash marks, but not a handwritten signature as defined by § 1.4(d)(1). An S-signature includes any signature made by electronic or mechanical means, and any other mode of making or applying a signature not covered by either a handwrit- ten signature of § 1.4(d)(1) or an Office Electronic Filing System (EFS) character coded signature of § 1.4(d)(3). Correspondence being filed in the Office in paper, by facsimile transmission as provided in § 1.6(d), or via the Office Electronic Filing System as an EFS Tag(ged) Image File Format (TIFF) attachment, for a patent application, patent, or a reexamination proceeding may be S-signature signed instead of being personally signed (i.e., with a handwritten signature) as provided for in paragraph (d)(1) of this section. The requirements for an S-signature under this paragraph (d)(2) are as follows.<

(i) The S-signature must consist only of letters, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctuation, and the person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./); and

**> (ii) A patent practitioner (§ 1.32(a)(1)), signing pursu-

ant to §§ 1.33(b)(1) or 1.33(b)(2), must supply his/her registration number either as part of the S-signature, or immediately below or adjacent to the S-signature. The number (#) character may be used only as part of the S-signature when appearing before a practitio- ner’s registration number; otherwise the number character may not be used in an S-signature. <

(iii) The signer’s name must be: (A) Presented in printed or typed form preferably

immediately below or adjacent the S-signature, and (B) Reasonably specific enough so that the identity

of the signer can be readily recognized. (3) EFS character coded signature. Correspondence in

character coded form being filed via the Office Electronic Filing System for a patent application or patent may be signed electroni- cally. The electronic signature must consist only of letters of the English alphabet, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, or hyphens for punctu- ation. The person signing the correspondence must personally insert the electronic signature with a first single forward slash mark before, and a second single forward slash mark after, the electronic signature (e.g., /Dr. James T. Jones, Jr./).

(4) Certifications. (i) Section 10.18 certifications: The presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner

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500-15 Rev. 5, Aug. 2006

or non-practitioner, constitutes a certification under § 10.18(b) of this chapter. Violations of § 10.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the impo- sition of sanctions under § 10.18(c) of this chapter. Any practitio- ner violating § 10.18(b) of this chapter may also be subject to disciplinary action. See §§ 10.18(d) and 10.23(c)(15) of this chap- ter.

(ii) Certifications as to the signature: (A) Of another: A person submitting a document signed by another under para- graphs (d)(2) or (d)(3) of this section is obligated to have a reason- able basis to believe that the person whose signature is present on the document was actually inserted by that person, and should retain evidence of authenticity of the signature.

(B) Self certification: The person inserting a signa- ture under paragraphs (d)(2) or (d)(3) of this section in a docu- ment submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.

(C) Sanctions: Violations of the certifications as to the signature of another or a person’s own signature, set forth in paragraphs (d)(4)(ii)(A) and (B) of this section, may result in the imposition of sanctions under § 10.18(c) and (d) of this chapter.

(e) Correspondence requiring a person’s signature and relat- ing to registration practice before the Patent and Trademark Office in patent cases, enrollment and disciplinary investigations, or dis- ciplinary proceedings must be submitted with an original hand written signature personally signed in permanent dark ink or its equivalent by that person.

(f) When a document that is required by statute to be certi- fied must be filed, a copy, including a photocopy or facsimile transmission, of the certification is not acceptable.

*****

(h) Ratification/confirmation/evidence of authenticity: The Office may require ratification, confirmation (which includes sub- mission of a duplicate document but with a proper signature), or evidence of authenticity of a signature, such as when the Office has reasonable doubt as to the authenticity (veracity) of the signa- ture, e.g., where there are variations of a signature, or where the signature and the typed or printed name, do not clearly identify the person signing.

Correspondence filed in the Office, which requires a person’s signature, may be filed with one of three types of signatures: (A) handwritten signature; (B) “S-signature;” and (C) Office Electronic Filing Sys- tem (EFS) character coded signature. See 37 CFR 1.4(d).

I. HANDWRITTEN SIGNATURE

A person’s handwritten signature may be an origi- nal, or a copy thereof. The word original, as used herein, is defined as correspondence which is person- ally signed in permanent dark ink or its equivalent by the person whose signature appears thereon. Dark ink or equivalent permits traditional ink and newer non-

liquid gel type ink technologies. Since incoming cor- respondence is electronically stored and scanned as a black and white image, a dark color is required so that the scanned image is legible. Where copies of corre- spondence are acceptable, photocopies or facsimile transmissions may be filed. For example, a photocopy or facsimile transmission of an original of an amend- ment, declaration (e.g., under 37 CFR 1.63 or 1.67), petition, issue fee transmittal form, authorization to charge a deposit account or a credit card, may be sub- mitted in a patent application. Where copies are per- mitted, second and further generation copies (i.e., copy of a copy) are acceptable. For example, a client may fax a paper to an attorney and the attorney may then fax the paper to the Office, provided the paper is eligible to be faxed (see MPEP § 502.01). The origi- nal, if not submitted to the Office, should be retained as evidence of proper execution in the event that ques- tions arise as to the authenticity of the signature repro- duced on the photocopy or facsimile-transmitted correspondence. If a question of authenticity arises, the Office may require submission of the original.

37 CFR 1.4(d)(1) covers all handwritten signatures, except for the handwritten signatures on the types of correspondence covered by 37 CFR 1.4(e). The requirement in 37 CFR 1.4(d)(1) of permanent dark ink or its equivalent relates to whether a handwritten signature is compliant and is not limiting on the type of handwritten signature that is covered by 37 CFR 1.4(d)(1). Thus, 37 CFR 1.4(d)(1) would cover hand- written signatures in red ink or in pencil; although, under 37 CFR 1.4(d)(1) neither would be acceptable since red ink is not dark, and pencil is not permanent. A scanned image of a document that contains a hand- written signature filed via the Office’s EFS is permit- ted as a copy under 37 CFR 1.4(d)(1)(ii). A signature applied by an electric or mechanical typewriter directly to paper is not a handwritten signature, which is applied by hand. Accordingly, if a typewriter applied signature is used, it must meet the require- ments of 37 CFR 1.4(d)(2). Adding forward slashes to a handwritten (or hand-printed) ink signature that is personally applied will not cause the signature to be treated under 37 CFR 1.4(d)(2). Such a signature will be treated under 37 CFR 1.4(d)(1) or (e) with the slashes ignored. The end product from a manually applied hand stamp or from a signature replication or transfer means (such as by pen or by screen) appears

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Rev. 5, Aug. 2006 500-16

to be a handwritten signature, but is not actually hand- written, and would be treated under 37 CFR 1.4(d)(2). An electronic reproduction of a handwritten signature, e.g., scanned, that is electronically applied to a docu- ment is not a personally signed original document under 37 CFR 1.4(d)(1)(i) and reproductions of such correspondence cannot be copies under 37 CFR 1.4(d)(1)(ii).

II. S-SIGNATURE

The second type of signature is an S-signature. See 37 CFR 1.4(d)(2). An S-signature is a signature inserted between forward slash marks, but not a hand- written signature as defined by 37 CFR 1.4(d)(1) or (e), or an EFS character coded signature as defined by 37 CFR 1.4(d)(3). An S-signature includes any signa- ture made by electronic or mechanical means, and any other mode of making or applying a signature not covered by either a handwritten signature of 37 CFR 1.4(d)(1) or (e), or an EFS character coded signature of 37 CFR 1.4(d)(3). The S-signature can be used with correspondence filed in the Office in paper, by facsimile transmission as provided in 37 CFR 1.6(d), or via the Office EFS as an EFS Tag(ged) Image File Format (TIFF) attachment, for a patent application, a patent, or a reexamination proceeding. 37 CFR 1.4(d) does not authorize filing correspondence by e-mail.

An S-signature must consist only of letters, or Ara- bic numerals, or both, with appropriate spaces and punctuation (i.e., commas, periods, apostrophes, or hyphens). “Letters” include English and non- English alphabet letters, and text characters (e.g., Kanji). Non- text, graphic characters (e.g., a smiley face created in the True Type Wing Dings font) are not permitted. “Arabic numerals” are the numerals 0, 1, 2, 3, 4, 5, 6, 7, 8, and 9, which are the standard numerals used in the United States. To accommodate as many varieties of names as possible, a signer may select any combi- nation of letters, Arabic numerals, or both, for his or her S-signature under 37 CFR 1.4(d)(2)(i). The person signing the correspondence must insert his or her own S-signature with a first single forward slash mark before, and a second single forward slash mark after, the S-signature (e.g., /Dr. James T. Jones, Jr./). Addi- tional forward slashes are not permitted as part of the S-signature. The presentation of just letters and Ara- bic numerals as an S-signature without the S-signa-

ture being placed between two forward slashes will be treated as an unsigned document.

Commas, periods, apostrophes, and hyphens are often found in names and will therefore be found in many S-signatures. These punctuation marks and appropriate spaces may be used with letters and Ara- bic numerals in an S-signature. A sample S-signature including punctuation marks and spaces, between two forward slashes, is: /John P. Doe/. Punctuation marks, per se, are not punctuation and are not permitted with- out proper association with letters and Arabic numer- als. An S-signature of only punctuation marks would be improper (e.g., /- - -/). In addition, punctuation marks, such as question marks (e.g., /???/), are often utilized to represent an intent not to sign a document and may be interpreted to be a non-bona fide attempt at a signature, in addition to being improper.

Script fonts are not permitted for any portion of a document except the S-signature. See 37 CFR 1.52(b)(2)(ii). Presentation of a typed name in a script font without the typed name being placed between the required slashes does not present the proper indicia manifesting an intent to sign and will be treated as an unsigned document.

37 CFR 1.4(d)(2)(i) also defines who can insert an S-signature into a document. 37 CFR 1.4(d)(2)(i) requires that a person, which includes a practitioner, must insert his or her own signature using letters and/ or Arabic numerals, with appropriate commas, peri- ods, apostrophes, or hyphens as punctuation and spaces. The “must insert his or her own signature” requirement is met by the signer directly typing his or her own signature using a keyboard. The requirement does not permit one person (e.g., a secretary) to type in the signature of a second person (e.g., a practitio- ner) even if the second person directs the first person to do so. A person physically unable to use a key- board, however, may, while simultaneously reviewing the document for signature, direct another person to press the appropriate keys to form the S-signature.

For consistency purposes, and to avoid raising a doubt as to who has signed, the same S-signature should be utilized each time, with variations of the signature being avoided. The signer should review any indicia of identity of the signer in the body of the document, including any printed or typed name and registration number, to ensure that the indicia of iden- tity in the body of the document is consistent with

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how the document is S-signed. Knowingly adopting an S-signature of another is not permitted.

While an S-signature need not be the name of the signer of the document, the Office strongly suggests that each signer use an S-signature that has his or her full name. The Office expects that where persons do not sign with their name it will be because they are using an S-signature that is the usual S-signature for that person, which is his or her own signature, and not something that is employed to obfuscate or misiden- tify the signer. Titles may be used with the signer’s S- signature and must be placed between the slash marks (e.g., /Dr. John Doe/), or with the printed or typed ver- sion of the name.

37 CFR 1.4(d)(2)(ii) requires that a practitioner >(37 CFR 1.32(a)(1))< signing pursuant to 37 CFR 1.33(b)(1) or (b)(2) must place his or her registration number, either as part of, or adjacent, his or her S-sig- nature. A number character (#) may only be used in an S-signature if it is prior to a practitioner’s registration number that is part of the S-signature. When a practi- tioner is signing as an assignee, or as an applicant (inventor) pursuant to 37 CFR 1.33(b)(3) or (b)(4), a registration number is not required and should not be supplied to avoid confusion as to which basis the practitioner is signing, e.g., as a practitioner or as the assignee.

The signer’s name must be (A) presented in printed or typed form preferably immediately below or adja- cent the S-signature, and (B) reasonably specific enough so that the identity of the signer can be readily recognized. See 37 CFR 1.4(d)(2)(iii)(A). The printed or typed name requirement is intended to describe any manner of applying the signer’s name to the docu- ment, including by a typewriter or machine printer. It could include a printer (mechanical, electrical, opti- cal, etc.) associated with a computer or a facsimile machine but would not include manual or hand print- ing. See 37 CFR 1.52(a)(1)(iv). The printed or typed name may be inserted before or after the S-signature is applied, and it does not have to be inserted by the S- signer. A printed or typed name appearing in the let- terhead or body of a document is not acceptable as the presentation of the name of the S-signer.

III. EFS CHARACTER CODED SIGNATURE

The third type of an acceptable signature estab- lished by 37 CFR 1.4(d)(3) is the EFS character coded

signature, which is an electronic signature, for corre- spondence submitted via EFS in character coded form for a patent application, e-IDS or an assignment cover sheet signed consistent with 37 CFR 3.31. The elec- tronic signature must consist only of letters of the English alphabet, or Arabic numerals, or both, with appropriate spaces and commas, periods, apostrophes, and hyphens as punctuation. Letters of the English alphabet are the upper and lower case letters A through Z.

EFS character coded signatures are signatures inserted into EFS menus in the Office’s EFS software. The signature is inserted into transmittal, assignment, declaration, power of attorney, fee transmittal and e- IDS forms. These forms are identified in the list of EFS files transmitted as XML files. Scanned images of oaths and declarations with ink signatures (37 CFR 1.4(d)(1)) and S-signatures (37 CFR 1.4(d)(2)) may also be filed as an attachment in an EFS filing, and can be distinguished on the EFS file list as TIFF files.

IV. CERTIFICATIONS

37 CFR 1.4(d)(4)(i) establishes that the presenta- tion to the Office (whether by signing, filing, submit- ting, or later advocating) of any paper by a party, whether a practitioner or non- practitioner, constitutes a certification under 37 CFR 10.18(b) of this chapter.

37 CFR 1.4(d)(4)(ii)(A) establishes certifications as to the signature of another for a person submitting a document signed by another under 37 CFR 1.4(d)(2) or (d)(3). Thus, the submitting person is obligated to have a reasonable basis to believe that the person whose signature is present on the document actually inserted the signature on the document. Such reason- able basis does not require an actual knowledge but does require some reason to believe the signature is appropriate. For example, where a practitioner e-mails a 37 CFR 1.63 declaration to an inventor for signature by the inventor and receives an executed declaration by the inventor in return from the inventor, reasonable basis would exist. Where an assignee was involved in the transmission of the declaration form and/or the executed declaration, an additional showing of chain of custody (e.g., e-mail chain with attached docu- ments from the inventor to the assignee to the practi- tioner filing the declaration) involving the assignee

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would be required. Additionally, evidence of authen- ticity should be retained. This may involve retaining the e-mails sent to the inventor and any cover letter or e-mail (with the signed document as an attachment) back to the practitioner from the inventor in the exam- ple relating to execution of a 37 CFR 1.63 declaration.

37 CFR 1.4(d)(4)(ii)(B) establishes that a person inserting a signature under 37 CFR 1.4(d)(2) or (d)(3) in a document submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature. This is meant to prohibit a first person from requesting a second person to insert the first person’s signature in a document. While the certi- fication is directed at the person inserting another S- signature, the person requesting the inappropriate insertion may also be subject to sanctions.

37 CFR 1.4(d)(4)(ii)(C) establishes that violations of the certifications as to the signature of another or a person’s own signature, set forth in 37 CFR 1.4(d)(4)(ii)(A) and (B), may result in the imposition of sanctions under 37 CFR 10.18(c) and (d).

V. RATIFICATION, CONFIRMATION, OR EVIDENCE OF AUTHENTICITY

Pursuant to 37 CFR 1.4(h), the Office may addi- tionally inquire in regard to a signature so as to iden- tify the signer and clarify the record where the identity of the signer is unclear. An example of when ratification or confirmation of a signature may be required is when there are variations in a signature or whenever a name in an S-signature is not exactly the same as the name indicated as an inventor, or a practi- tioner of record. Hence, whatever signature is adopted by a signer, that signature should be consistently used on all documents. Also addressed is the treatment of variations in a signature or where a printed or typed name accompanies the S-signature or the EFS charac- ter coded signature but the identity of the signer is unclear. In such cases, the Office may require ratifica- tion or confirmation of a signature. Ratification requires the person ratifying to state he/she personally signed the previously submitted document as well as, if needed, the submission of a compliant format of the signature. Confirmation includes submitting a dupli- cate document, which is compliantly signed if the pre- vious signature was noncompliant (as opposed to unclear).

In lieu of ratification, the Office may require a resubmission of a properly signed duplicate docu- ment. Resubmission of a document may be required, for example, where ratification alone is inappropriate, such as where the image of the signature is of such poor quality (e.g., illegible font) that the Office is unable to store or reproduce the document with the signature image.

Ratification or confirmation alone does not provide a means for changing the name of a signer. For exam- ple, when an inventor changes her/his name and the inventor desires to change her/his name in the appli- cation, such change must be accompanied by a peti- tion under 37 CFR 1.182 and, preferably, an Application Data Sheet (ADS). See MPEP § 605.04(c).

In addition, the Office may require evidence of authenticity where the Office has reasonable doubt as to the authenticity (veracity) of the signature. Evidence of authenticity may include evidence estab- lishing a chain of custody of a document from the per- son signing the document to the person filing the document. Proper evidence of a chain of custody will aid in avoiding the impact of repudiation of a signa- ture.

Where there has been a bona fide attempt to follow the rule, but where there is some doubt as to the iden- tity of the signer of a signed document, the Office may require ratification of the signature. Note, ratifi- cation would only be an effective remedy if the signer was a proper party to have executed the document to be ratified. For example, a practitioner of record may ratify his or her signature on an amendment, but not the signature of a secretary who is not a practitioner or inventor in the application. A registered practitioner may, however, ratify the amendment made by another registered practitioner but may not ratify a document required to be signed by an inventor, such as a 37 CFR 1.63 declaration. Similarly, an inadvertent typographical error or simple misspelling of a name will be treated as a bona fide attempt to follow the rule, which would require ratification only where there is some doubt as to the identity of the signer rather than be treated as an unsigned paper requiring resubmission. Where there is an obvious typographi- cal error so that the Office does not have some doubt as to the identity of the signer (and therefore notifica- tion to applicant is not needed), further action by

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applicant would not be required and, where appropri- ate, the obvious error will be noted in the record.

The inadvertent failure to follow the format and content of an S-signature will be treated as a bona fide attempt at a signature but the paper will be considered as being unsigned correspondence. Examples of cor- respondence that will be treated as unsigned are (A) the S-signature is not enclosed in forward slashes, (B) the S-signature is composed of non-text graphic char- acters (e.g., a smiley face) and not letters and numer- als, and (C) the S-signature is not a name and there is no other accompanying name adjacent or below the S- signature so that the identity of the signer cannot be readily recognized.

If the signer, after being required to ratify or resub- mit a document with a compliant signature, repeats the same S-signature in reply without appropriate cor- rection, the reply will not be considered to be a bona fide attempt to reply, and no additional time period will be given to submit a properly signed document.

VI. CERTIFICATION OF DOCUMENTS RE- QUIRED BY STATUTE

When a document that is required by statute to be certified must be filed (such as a certified copy of a foreign patent application pursuant to 35 U.S.C. 119 or a certified copy of an international application pur- suant to 35 U.S.C. 365) a copy of the certification, including a photocopy or facsimile transmission, will not be acceptable. The requirement for an original certification does not apply to certifications such as required under 37 CFR 1.8 since these certifications are not required by statute.

502.03 Communications via the Internet [R-2]

The Office published a Patent Internet Usage Pol- icy to

(A) establish a policy for use of the Internet by the Patent Examining Corps and other organizations within the USPTO,

(B) address use of the Internet to conduct inter- view-like communications and other forms of formal and informal communications,

(C) publish guidelines for locating, retrieving, cit- ing, and properly documenting scientific and techni- cal information sources on the Internet,

(D) inform the public how the USPTO intends to use the Internet, and

(E) establish a flexible Internet policy framework which can be modified, enhanced, and corrected as the USPTO, the public, and customers learn to use, and subsequently integrate, new and emerging Inter- net technology into existing business infrastructures and everyday activities to improve the patent applica- tion, examining, and granting functions.

See Internet Usage Policy, 64 *>FR< 33056 (June 21, 1999). The Articles of the Patent Internet Usage Policy pertinent to communications via electronic mail are summarized below. See MPEP § 904.02(c) for information pertinent to Internet searching, and MPEP § 707.05(e) for information pertaining to the citation of electronic documents. See also MPEP § 713.04 for recordation of e-mail interviews. >

I. < CONFIDENTIALITY OF PROPRI- ETARY INFORMATION (ARTICLE 4)

If security and confidentiality cannot be attained for a specific use, transaction, or activity, then that specific use, transaction, or activity shall NOT be undertaken/conducted.

All use of the Internet by Patent Organization employees, contractors, and consultants shall be con- ducted in a manner that ensures compliance with con- fidentiality requirements in statutes, including 35 U.S.C. 122, and regulations. Where a written authorization is given by the applicant for the USPTO to communicate with the applicant via Internet e-mail, communications via Internet e-mail may be used.

Backup, archiving, and recovery of information sent or received via the Internet is the responsibility of individual users. The OCIO does not, and will not, as a normal practice, provide backup and recovery ser- vices for information produced, retrieved, stored, or transmitted to/from the Internet. >

II. < COMMUNICATIONS VIA THE IN- TERNET AND AUTHORIZATION (AR- TICLE 5)

Communications via Internet e-mail are at the dis- cretion of the applicant.

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Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains infor- mation subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such cor- respondence will be placed in the appropriate patent application.

The following is a sample authorization form which may be used by applicant:

“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communi- cate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file.”

A written authorization may be withdrawn by fil- ing a signed paper clearly identifying the original authorization. The following is a sample form which may be used by applicant to withdraw the authoriza- tion:

“The authorization given on______, to the USPTO to communicate with me via the Internet is hereby withdrawn. I understand that the withdrawal is effec- tive when approved rather than when received.”

Where a written authorization is given by the applicant, communications via Internet e-mail, other than those under 35 U.S.C. 132 or which otherwise require a signature, may be used. In such case, a printed copy of the Internet e-mail communications MUST be given a paper number, entered into the Patent Application Locating and Monitoring System (PALM) and entered in the patent application file. A reply to an Office action may NOT be communicated by applicant to the USPTO via Internet e-mail. If such a reply is submitted by applicant via Internet e-mail, a paper copy will be placed in the appropriate patent application file with an indication that the reply is NOT ENTERED. >For Image File Wrapper (IFW) processing, see IFW Manual.<

USPTO employees are NOT permitted to initiate communications with applicants via Internet e-mail unless there is a written authorization of record in the patent application by the applicant.

All reissue applications are open to public inspec- tion under 37 CFR 1.11(a) and all papers relating to a reexamination proceeding which have been entered of record in the patent or reexamination file are open to public inspection under 37 CFR 1.11(d).

USPTO employees are NOT permitted to initiate communications with applicant in a reissue applica- tion or a patentee of a reexamination proceeding via Internet e-mail unless written authorization is given by the applicant or patentee. >

III. < AUTHENTICATION OF SENDER BY A PATENT ORGANIZATION RECIPIENT (ARTICLE 6)

The misrepresentation of a sender’s identity (i.e., spoofing) is a known risk when using electronic com- munications. Therefore, Patent Organization users have an obligation to be aware of this risk and con- duct their Internet activities in compliance with estab- lished procedures.

Internet e-mail must be initiated by a registered practitioner, or an applicant in a pro se application, and sufficient information must be provided to show representative capacity in compliance with 37 CFR 1.34. Examples of such information include the attor- ney registration number, attorney docket number, and patent application number. >

IV. < USE OF ELECTRONIC MAIL SER- VICES (ARTICLE 7)

Once e-mail correspondence has been received from the applicant, as set forth in Patent Internet Usage Policy Article 4, such correspondence must be responded to appropriately. The Patent Examiner may respond to an applicant’s e-mail correspondence by telephone, fax, or other appropriate means. >

V. < INTERVIEWS (ARTICLE 8)

Internet e-mail shall NOT be used to conduct an exchange of communications similar to those exchanged during telephone or personal interviews unless a written authorization has been given under Patent Internet Usage Policy Article 5 to use Internet e-mail. In such cases, a paper copy of the Internet e- mail contents MUST be made and placed in the patent application file, as required by the Federal Records Act, in the same manner as an Examiner Interview Summary Form is entered.

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>

VI. < POLICY GUIDANCE AND CLARIFICA- TIONS (ARTICLE 13)

Within the Patent Organization, any questions regarding Internet usage policy should be directed to the user’s immediate supervisor. Non-USPTO person- nel should direct their questions to the Office of the Deputy Commissioner for Patent Examination Policy.

502.04 Duplicate Copies of Correspon- dence [R-2]

37 CFR 1.4. Nature of correspondence and signature requirements. **>

(b) Since each file must be complete in itself, a separate copy of every paper to be filed in a patent, patent file, or other pro- ceeding must be furnished for each file to which the paper per- tains, even though the contents of the papers filed in two or more files may be identical. The filing of duplicate copies of correspon- dence in the file of an application, patent, or other proceeding should be avoided, except in situations in which the Office requires the filing of duplicate copies. The Office may dispose of duplicate copies of correspondence in the file of an application, patent, or other proceeding.<

*****

When the Office does not require duplicate copies of a paper, the filing of multiple copies may cause a delay in processing by the Office. Accordingly, the Office may discard duplicate copies of correspon- dence filed in an application or patent file.

503 Application Number and Filing Receipt [R-3]

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

(a) It is desirable that all parts of the complete application be deposited in the Office together; otherwise, a letter must accom- pany each part, accurately and clearly connecting it with the other parts of the application. See § 1.53(f) and (g) with regard to com- pletion of an application.

(b) Applicant will be informed of the application number and filing date by a filing receipt, unless the application is an application filed under § 1.53(d).

Application numbers consisting of a series code and a serial number are assigned by the Office of Ini- tial Patent Examination (OIPE) immediately after mail has been opened.

The following series codes are assigned to the applications identified below:

(A) 01/ - *>11</ - for nonprovisional applica- tions (utility, plant, and reissue),

- The 01 series code was used from year 1925 to 1934,

02 – 1935 to 1947, 03 – 1948 to 1959, 04 – 1960 to 1969, 05 – 1970 to 1978, 06 – 1979 to 1986, 07 – 1987 to 1992, 08 – 1993 to 1997, 09 – 1998 to Nov. 2001, *

10 – Dec. 2001 to *>Nov. 2004, and 11 – Dec. 2004 to present;< (B) 29/ - for design applications; (C) 60/ - for provisional applications; (D) 90/ - for ex parte reexamination proceedings;

and (E) 95/ - for inter partes reexamination proceed-

ings.

If a self-addressed postcard is submitted with a patent application, that postcard will be provided with both the receipt date and application number prior to returning it to the addressee. The application number identified on such a postcard receipt is merely the pre- liminary assignment of an application number to the application, and should not be relied upon (e.g., with respect to foreign filings) as necessarily representing the application number assigned to such application. See 37 CFR 1.53(b).

The identifying data on the postcard should include:

(A) applicant’s name(s); (B) title of invention; (C) number of pages of specification, claims (for

nonprovisional applications), and sheets of drawing; (D) whether oath or declaration is included; (E) a list of any additional forms included with

the application (e.g., application transmittal form, application data sheet, fee transmittal form, and/or provisional application cover sheet); and

(F) amount and manner of paying the fee.

A return postcard should be attached to each patent application for which a receipt is desired.

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It is important that the return postcard itemize all of the components of the application. If the postcard does not itemize each of the components of the appli- cation, it will not serve as evidence that any compo- nent which was not itemized was received by the United States Patent and Trademark Office (USPTO).

It should be recognized that the identification of an application by application number does not necessar- ily signify that the USPTO has accepted the applica- tion as complete (37 CFR 1.53(a)).

OIPE mails a filing receipt to the attorney or agent, if any, otherwise to the applicant, for each application filed which meets the minimum requirements to receive a filing date. The filing receipt includes the application number, filing date, a confirmation num- ber, a suggested class in the U.S. Patent Classification System (see MPEP § 902.01), and the number of an art unit where the application is likely to be examined. The filing receipt also includes other information about the application as applicable, such as continuing data, national stage data, foreign priority data, foreign filing license data, entity status information, and the date the Office anticipates publishing the application under 35 U.S.C. 122(b). The filing receipt represents the official assignment by the USPTO of a specific application number and confirmation number to a par- ticular application. See 37 CFR 1.54(b). The applica- tion number officially assigned to an application on the filing receipt may differ from the application num- ber identified on a postcard receipt submitted with such application, and, as between inconsistent filing receipts and postcard receipts, the application number on the filing receipt is controlling.

The confirmation number is a four-digit number that is assigned to each newly filed application. The confirmation number, in combination with the appli- cation number, is used to verify the accuracy of the application number placed on correspondence filed with the Office to avoid misidentification of an appli- cation due to a transposition error in the application number. The confirmation number may be found in the upper left-hand corner of the filing receipt. The confirmation number will also be available through the Patent Application Information Retrieval (PAIR) system (http://pair.uspto.gov). The Office eventually plans to include the application’s confirmation num- ber (in addition to the application number) on all Office actions and notices concerning the application.

The confirmation number must be used when submit- ting an electronic filing system (EFS) copy of the application for publication to verify that the applica- tion number correctly identifies the application for which a copy is being submitted for publication. The Office also recommends that applicants include the application’s confirmation number (in addition to the application number) on all correspondence submitted to the Office concerning the application.

A continued prosecution application (CPA) filed under 37 CFR 1.53(d) (design applications only) will be assigned the application number of the prior appli- cation for identification purposes.

A nonprovisional application, other than a CPA filed under 37 CFR 1.53(d), is entitled to a filing date as of the date of receipt of the specification, including claims, and any required drawing. See 37 CFR 1.53(b). The filing receipt will be mailed at the time a determination is made that the application meets the minimum requirements to receive a filing date. The oath or declaration **>, basic filing fee, and for non- provisional applications filed on or after December 8, 2004, search fee and examination fee as set forth in 37 CFR 1.16,< may be filed later than the remaining application papers, but if so, they must be accompa- nied by the required surcharge >(if appropriate, see MPEP § 506)<. See 37 CFR 1.53(f). If the oath or declaration, **>basic< filing fee, **>and/or any required search fee and examination fee with the appropriate surcharge< are not timely filed, the appli- cation will be abandoned.

A provisional application is entitled to a filing date as of the date of receipt of the specification and any required drawing(s). See 37 CFR 1.53(c). A cover sheet (37 CFR 1.51(c)(1)), which may be an applica- tion data sheet (37 CFR 1.76) or a cover letter, identi- fying the application as a provisional application is required to prevent the provisional application from being treated as a nonprovisional application. 37 CFR 1.53(c)(1).

Each application which meets the minimum requirements to receive a filing date is given a filing date. It is important, when referring to application files, to identify them by their filing dates and confir- mation numbers as well as by application numbers.

Attorney docket numbers must be limited to a max- imum of 12 characters to prevent truncation. The Patent Application Locating and Monitoring (PALM)

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system data base allows a maximum of 12 characters for the attorney docket numbers. Spaces, slashes, and hyphens will no longer be included in the entered docket number on the official filing receipt. In an application where CASE or NAVY-CASE appears before the first character in the docket number, only the characters after CASE or NAVY-CASE will be entered on the official filing receipt.

The application papers are **>processed by OIPE and added to the Office’s Image File Wrapper (IFW) system.<

Applications which are entitled to a filing date and are filed, whether by regular mail*>, by< “Express Mail” under 37 CFR 1.10, by hand-delivery>, by the Office’s Electronic Filing System (EFS),< or other- wise, will not be returned to applicant even if requested. See 37 CFR 1.59. Accordingly, applicants must be careful not to file applications which are not intended to be filed, e.g., duplicates of applications already filed. Note that 37 CFR 1.26(a) provides that a change of purpose after the payment of a fee, as when a party desires to withdraw the filing of a patent application for which the fee was paid, will not entitle the party to a refund of such fee. See MPEP § 607.02.

RETURN POSTCARD

If a receipt for any item (e.g., paper or fee) filed in the USPTO is desired, it may be obtained by enclos- ing with the paper a self-addressed postcard specifi- cally identifying the item. To ensure the receipt of return receipt postcards, users must either: (A) pur- chase already stamped postcards from the United States Postal Service (USPS) or affix postage stamps to their postcards; or (B) if a postage meter is used, ensure that the meter postmark does not show the date. Any return receipt postcard containing a dated meter postmark may not be delivered by the USPS to the address provided on the postcard. >Users are reminded that they are solely responsible for placing the proper postage on self-addressed postcards that are submitted to the USPTO for the purpose of obtain- ing a receipt for correspondence being filed in the USPTO. Users should check with the USPS regarding postage and what size cards are acceptable to the USPS. Any return receipt postcard that does not con- tain sufficient postage or is not acceptable may not be delivered by the USPS to the address provided on the

postcard, and, if returned to the USPTO, may be dis- carded.<

The USPTO will stamp the receipt date on the postcard and place it in the outgoing mail. A postcard receipt which itemizes and properly identifies the items which are being filed serves as prima facie evi- dence of receipt in the USPTO of all the items listed thereon on the date stamped thereon by the USPTO.

The identifying data on the postcard should be so complete as to clearly identify the item for which a receipt is requested. For example, the postcard should identify the applicant’s name, application number (if known), confirmation number (if known), filing date, interference number, title of the invention, etc. The postcard should also identify the type of paper being filed, e.g., new application, affidavit, amend- ment, notice of appeal, appeal brief, drawings, fees, motions, supplemental oath or declaration, petition, etc., and the number of pages being submitted. If a new application is being filed, all parts of the appli- cation being submitted should be separately listed on the postcard, e.g., the number of pages of specifica- tion (including written description, claims and abstract), number of claims, number of sheets of drawings, number of pages of oath/declaration, num- ber of pages of cover sheet (provisional application).

The postcard receipt will not serve as prima facie evidence of receipt of any item which is not ade- quately itemized on the postcard. For example, merely listing on the postcard “a complete applica- tion” or “patent application” will not serve as a proper receipt for each of the required components of an application (e.g., specification (including claims), drawings (if necessary), oath or declaration and the application filing fee) or missing portions (e.g., pages, sheets of drawings) of an application if one of the components or portion of a component is found to be missing by the USPTO. Each separate component should be specifically and properly itemized on the postcard. Furthermore, merely incorporating by refer- ence in the postcard receipt, the items listed in a trans- mittal letter will not serve as prima facie evidence of receipt of those items.

The person receiving the item(s) in the USPTO will check the listing on the postcard against the item(s) being filed to be sure they are properly identified and that all the items listed on the postcard are presently

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being submitted to the USPTO. If any of the items listed on the postcard are not being submitted to the USPTO, those items will be crossed off and the post- card initialed by the person receiving the items.

Upon return of a postcard receipt from the USPTO, the postcard receipt should be promptly reviewed by the person who filed the items to ensure that every item specifically denoted on the postcard was received by the USPTO. If the postcard receipt has been annotated to indicate that a particular item denoted on the postcard was not received by the USPTO, the postcard receipt will not serve as prima facie evidence of receipt of that item in the USPTO.

504 Assignment of Application for Examination

The Office of Initial Patent Examination assigns a nonprovisional application to the art unit to which it appears to belong. Provisional applications will not be examined.

505 “Office Date” Stamp of Receipt [R-3]

37 CFR 1.6. Receipt of correspondence. (a) Date of receipt and Express Mail date of deposit. Corre-

spondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:

(1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for corre- spondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this sec- tion, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.

(2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as “Express Mail” with the United States Postal Service.

(3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.

(4) [Reserved]

*****

The United States Patent and Trademark Office (Office) stamps papers and fees with the date of their receipt in the Office. The stamp is referred to as the “Office Date” stamp.

When the last day for taking any action or paying any fee in the Office falls on a Saturday, Sunday, or a Federal holiday within the District of Columbia, the action or the fee is considered timely if the action is taken or the fee is paid on the next succeeding busi- ness day.

Effective November 29, 1999, Public Law 106-113 amended 35 U.S.C. 119(e)(3) to extend the period of pendency of a provisional application to the next succeeding business day if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the District of Columbia. See also 37 CFR 1.7(b). 35 U.S.C. 119(e)(3) as amended by Public Law 106- 113 applies to any provisional application filed on or after June 8, 1995 but has no effect on any patent which is the subject of litigation in an action com- menced before November 29, 1999.

New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as “Express Mail” with the United States Postal Service. For example, if a new patent application is deposited in “Express Mail” in accor- dance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Sat- urday, the Office will accord and stamp the correspon- dence with the Saturday date. 37 CFR 1.6(a)(2).

If an application includes the necessary compo- nents for a filing date (see 37 CFR 1.53(b)-(d) and MPEP § 506), the “Office Date” stamp establishes the “filing date.” Applications will not be accepted and stamped in the Technology Centers. They must be date stamped at the Customer **>Service< Window. See MPEP § 502.

506 Completeness of Original Applica- tion [R-5]

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

(a) Application number. Any papers received in the Patent and Trademark Office which purport to be an application for a patent will be assigned an application number for identification purposes.

(b) Application filing requirements - Nonprovisional appli- cation. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under para- graph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75, and any drawing

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required by § 1.81(a) are filed in the Patent and Trademark Office. No new matter may be introduced into an application after its fil- ing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121 or 365(c) and § 1.78(a).

(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.

(2) A continuation-in-part application (which may dis- close and claim subject matter not disclosed in the prior applica- tion) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.

(c) Application filing requirements - Provisional applica- tion. The filing date of a provisional application is the date on which a specification as prescribed by the first paragraph of 35 U.S.C. 112, and any drawing required by § 1.81(a) are filed in the Patent and Trademark Office. No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the provisional application.

(1) A provisional application must also include the cover sheet required by § 1.51(c)(1), which may be an application data sheet (§ 1.76), or a cover letter identifying the application as a provisional application. Otherwise, the application will be treated as an application filed under paragraph (b) of this section.

(2) An application for patent filed under paragraph (b) of this section may be converted to a provisional application and be accorded the original filing date of the application filed under paragraph (b) of this section. The grant of such a request for con- version will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:

(i) Abandonment of the application filed under para- graph (b) of this section;

(ii) Payment of the issue fee on the application filed under paragraph (b) of this section;

(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section; or

(iv) The filing of a request for a statutory invention registration under § 1.293 in the application filed under paragraph (b) of this section.

(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provi- sional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional appli- cation or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a pro- visional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the pro-

visional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional appli- cation pursuant to this paragraph). A request to convert a provi- sional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by the second paragraph of 35 U.S.C. 112, unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by the second paragraph of 35 U.S.C.112. The nonprovisional application resulting from conversion of a provi- sional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, an oath or decla- ration by the applicant pursuant to §§ 1.63, 1.162, or 1.175, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the oath or declaration was not present on the filing date accorded the resulting nonprovisional application (i.e., the filing date of the original provisional applica- tion). A request to convert a provisional application to a nonprovi- sional application must also be filed prior to the earliest of:

(i) Abandonment of the provisional application filed under paragraph (c) of this section; or

(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this sec- tion.

(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 365(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a design applica- tion based on a provisional application. No request under § 1.293 for a statutory invention registration may be filed in a provisional application. The requirements of §§ 1.821 through 1.825 regard- ing application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.

(d) Application filing requirements - Continued prosecution (nonprovisional) application.

(1) A continuation or divisional application (but not a continuation-in-part) of a prior nonprovisional application may be filed as a continued prosecution application under this paragraph, provided that:

(i) The application is for a design patent: (ii) The prior nonprovisional application is a design

application that is complete as defined by § 1.51(b); and (iii) The application under this paragraph is filed

before the earliest of: (A) Payment of the issue fee on the prior applica-

tion, unless a petition under § 1.313(c) is granted in the prior application;

(B) Abandonment of the prior application; or (C) Termination of proceedings on the prior appli-

cation. (2) The filing date of a continued prosecution application

is the date on which a request on a separate paper for an applica-

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tion under this paragraph is filed. An application filed under this paragraph:

(i) Must identify the prior application; (ii) Discloses and claims only subject matter disclosed

in the prior application; (iii) Names as inventors the same inventors named in

the prior application on the date the application under this para- graph was filed, except as provided in paragraph (d)(4) of this sec- tion;

(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or dec- laration from the prior application, to constitute the new applica- tion, and will be assigned the application number of the prior application for identification purposes; and

(v) Is a request to expressly abandon the prior applica- tion as of the filing date of the request for an application under this paragraph.

(3) The filing fee, search fee, and examination fee for a continued prosecution application filed under this paragraph are the basic filing fee as set forth in § 1.16(b), the search fee as set forth in § 1.16 (l), and the examination fee as set forth in § 1.16(p).

(4) An application filed under this paragraph may be filed by fewer than all the inventors named in the prior application, pro- vided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior applica- tion on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.

(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an appli- cation under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be con- sidered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.

(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of con- fidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the pro- visions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.

(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every applica- tion assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.

(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:

(i) Title of invention; (ii) Name of applicant(s); and (iii) Correspondence address.

(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.

(e) Failure to meet filing date requirements. (1) If an application deposited under paragraph (b),

(c), or (d) of this section does not meet the requirements of such paragraph to be entitled to a filing date, applicant will be so noti- fied, if a correspondence address has been provided, and given a period of time within which to correct the filing error. If, however, a request for an application under paragraph (d) of this section does not meet the requirements of that paragraph because the application in which the request was filed is not a design applica- tion, and if the application in which the request was filed was itself filed on or after June 8, 1995, the request for an application under paragraph (d) of this section will be treated as a request for continued examination under § 1.114.

(2) Any request for review of a notification pursuant to paragraph (e)(1) of this section, or a notification that the original application papers lack a portion of the specification or draw- ing(s), must be by way of a petition pursuant to this paragraph accompanied by the fee set forth in § 1.17(f). In the absence of a timely (§ 1.181(f)) petition pursuant to this paragraph, the filing date of an application in which the applicant was notified of a fil- ing error pursuant to paragraph (e)(1) of this section will be the date the filing error is corrected.

(3) If an applicant is notified of a filing error pursuant to paragraph (e)(1) of this section, but fails to correct the filing error within the given time period or otherwise timely (§ 1.181(f)) take action pursuant to this paragraph, proceedings in the application will be considered terminated. Where proceedings in an applica- tion are terminated pursuant to this paragraph, the application may be disposed of, and any filing fees, less the handling fee set forth in § 1.21(n), will be refunded.

(f) Completion of application subsequent to filing—Nonpro- visional (including continued prosecution or reissue) application.

(1) If an application which has been accorded a filing date pursuant to paragraph (b) or (d) of this section does not include the basic filing fee, the search fee, or the examination fee, or if an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include an oath or declara- tion by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and applicant has provided a correspondence address (§1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, search fee, and examination fee, file an oath or declaration in an application under paragraph (b) of this section, and pay the surcharge if required by § 1.16(f) to avoid abandonment.

(2) If an application which has been accorded a filing date pursuant to paragraph (b) of this section does not include the basic filing fee, the search fee, the examination fee, or an oath or decla- ration by the applicant pursuant to §§ 1.63, 1.162 or § 1.175, and

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applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, search fee, and examina- tion fee, file an oath or declaration, and pay the surcharge required by § 1.16(f) to avoid abandonment.

(3) If the excess claims fees required by §§ 1.16(h) and (i) and multiple dependent claim fee required by § 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by §§ 1.16(h), (i) and (j) must be paid or the claims can- celed by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the appli- cation size fee required by § 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or addi- tional fee under § 1.16(s), the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandon- ment.

(4) This paragraph applies to continuation or divisional applications under paragraphs (b) or (d) of this section and to con- tinuation-in-part applications under paragraph (b) of this section. See § 1.63(d) concerning the submission of a copy of the oath or declaration from the prior application for a continuation or divi- sional application under paragraph (b) of this section.

(5) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.

(g) Completion of application subsequent to filing—Provi- sional application.

(1) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has provided a correspondence address (§ 1.33(a)), applicant will be notified and given a period of time within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.

(2) If a provisional application which has been accorded a filing date pursuant to paragraph (c) of this section does not include the cover sheet required by § 1.51(c)(1) or the basic filing fee (§ 1.16(d)), and applicant has not provided a correspondence address (§ 1.33(a)), applicant has two months from the filing date of the application within which to pay the basic filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the surcharge required by § 1.16(g) to avoid abandonment.

(3) If the application size fee required by § 1.16(s) (if any) is not paid on filing, the fee required by § 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandon- ment.

(4) If applicant does not pay the basic filing fee during the pendency of the application, the Office may dispose of the application.

(h) Subsequent treatment of application - Nonprovisional (including continued prosecution) application. An application for a patent filed under paragraphs (b) or (d) of this section will not be placed on the files for examination until all its required parts,

complying with the rules relating thereto, are received, except that certain minor informalities may be waived subject to subsequent correction whenever required.

(i) Subsequent treatment of application - Provisional appli- cation. A provisional application for a patent filed under para- graph (c) of this section will not be placed on the files for examination and will become abandoned no later than twelve months after its filing date pursuant to 35 U.S.C. 111(b)(1).

(j) Filing date of international application. The filing date of an international application designating the United States of America is treated as the filing date in the United States of America under PCT Article 11(3), except as provided in 35 U.S.C. 102(e).

I. INCOMPLETE NONPROVISIONAL AP- LICATIONS FILED UNDER 37 CFR 1.53(b)

If the nonprovisional application papers filed under 37 CFR 1.53(b) do not include at least a specification containing a description and at least one claim and a drawing, if necessary under 35 U.S.C. 113 (first sen- tence), or if the submitted application papers are too informal to be given a filing date, the case is held in the Office of Initial Patent Examination (OIPE) as an incomplete application and the applicant is informed of the shortcomings of the papers. No filing date is granted until the incompleteness is corrected.

A Notice of Incomplete Application is prepared and mailed by OIPE when nonprovisional application papers filed under 37 CFR 1.53(b) are deemed incom- plete under 35 U.S.C. 111(a).

Such incompleteness may consist of the omission of any one of the following parts of an application. The component parts of a nonprovisional application filed under 37 CFR 1.53(b) necessary to obtain a fil- ing date are:

A specification as prescribed by 35 U.S.C. 112 and 37 CFR 1.71. A claim as prescribed by 35 U.S.C. 112 and 37 CFR 1.75. A drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.81(a).

See 37 CFR 1.53(b). Even though an application purports to include the

component parts necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above.

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For example, if the documents purporting to be a specification are so obviously informal and incoherent that they clearly do not constitute a specification as required by 35 U.S.C. 112 and 37 CFR 1.71, the application is not acceptable for examination and it will not be accorded a filing date until corrections are made. The filing date of the application will be the date the corrections are made.

Filing dates are accorded to nonprovisional applica- tions filed under 37 CFR 1.53(b) submitted without the names of all the inventors, the required fees (basic filing fee, and search and examination fees (for appli- cations filed on or after December 8, 2004)) and/or the oath or declaration. In such cases, a notice is mailed by OIPE requiring the appropriate fees and the oath or declaration (which must include the names of all the inventors) be filed, accompanied by a sur- charge (37 CFR 1.16(f)). For applications filed on or after December 8, 2004 but prior to July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(b), if the search and/or examination fees are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is not required. For applications filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(b), if any of the basic filing fee, the search fee, or the examination fee are paid on a date later than the filing date of the application, the surcharge under 37 CFR 1.16(f) is required. In addition to the basic filing fee, the search fee, and the examination fee, 37 CFR 1.16(s) sets forth the application size fee for any application (including any reissue applications) filed under 35 U.S.C. 111 on or after December 8, 2004 the specification and drawings of which, excluding a sequence listing or computer program listing filed in an electronic medium (see 37 CFR 1.52(f)), exceed 100 sheets of paper. The application size fee does not apply to any applications filed before December 8, 2004. The application size fee applies for each addi- tional 50 sheets or fraction thereof over 100 sheets of paper. Any sequence listing in an electronic medium in compliance with 37 CFR 1.52(e) and 37 CFR 1.821(c) or (e), and any computer program listing filed in an electronic medium in compliance with 37 CFR 1.52(e) and 1.96, will be excluded when deter- mining the application size fee required by 37 CFR 1.16(s). The application size fee required by 37 CFR 1.16(s) must be paid prior to the expiration of the time

period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment (37 CFR 1.53(f)(3)). See MPEP § 607 for additional informa- tion regarding fees. In addition to the basic filing fee, the search fee, the examination fee, and the applica- tion size fee required under 37 CFR 1.16, the pre- scribed filing fee (37 CFR 1.51(b)(4)) may include additional fees for filing more than 3 independent claims (37 CFR 1.16(h)), for filing a total of more than 20 claims (37 CFR 1.16(i)), or for filing a multi- ple dependent claim (37 CFR 1.16(j)). In those cases where the basic filing fee, the search fee, the examina- tion fee, and the application size fee are paid, but additional fees are required, under 37 CFR 1.16, a notice is mailed by OIPE or the Technology Center (TC), requiring that the balance of the prescribed fee be paid.

Occasionally, nonprovisional applications filed under 37 CFR 1.53(b) which have already been signed by the inventors contain informal claims that the attorney or agent feels should not be present in the application upon filing. However, since alteration after execution by the inventor and before filing is prohibited, such applications must be filed by the attorney or agent in the form in which they were exe- cuted by the inventors. A nonprovisional application filed under 37 CFR 1.53(b) may be filed with a pre- liminary amendment which is limited to the cancella- tion of claims. Any preliminary amendment, regardless of when it is filed, must be in compliance with 37 CFR 1.121, e.g., it must include a complete listing of all of the claims. Therefore, the Office strongly recommends that applicants file their appli- cations with a specification containing only the desired set of claims, rather than filing the application with a preliminary amendment canceling claims. If such a preliminary amendment canceling claims is filed, it will diminish the number of claims to be con- sidered for calculation of the filing fee. Any other changes to the application should be the subject of a separate amendment which may be entered after the filing fee has been calculated and the filing date granted. If a preliminary amendment which cancels claims does not accompany the application at the time the application is filed, the notification of insufficient fee will inform the inventor, attorney, or agent of the possibility of correcting the insufficient payment by either (1) paying the additional required fee amount,

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or (2) filing an amendment which cancels claims so that the remaining claims are covered by the fee sub- mitted upon filing. However, no refund will be made once the fee for claims is properly paid, even though claims are later canceled >, unless a petition for express abandonment under 37 CFR 1.138(d) is granted. See MPEP § 711.01.<

In the past, OIPE has reviewed the claimed subject matter of newly filed nonprovisional applications to determine whether a filing date should be granted. Such applications included those drawn to perpetual motion devices and methods of doing business and applications for reissue signed by assignees or filed more than 2 years after the grant of the patent which appear to contain broadened reissue claims.

Under the current practice, a filing date is normally granted in such cases if the nonprovisional application filed under 37 CFR 1.53(b) is otherwise sufficient and then forwarded to the examiner for consideration and decision during the regular course of examination.

II. INCOMPLETE PROVISIONAL APPLICA- TIONS

If the provisional application papers do not include at least a specification containing a description and a drawing, if necessary under 35 U.S.C. 113 (first sen- tence) or if the submitted application papers are too informal to be given a filing date, the case is held in OIPE as an incomplete application and the applicant is informed of the shortcomings of the papers. No fil- ing date is granted until the incompleteness is cor- rected.

Such incompleteness may consist of the omission of any one of the following parts of an application. The component parts of a provisional application nec- essary to obtain a filing date are:

A specification as prescribed by 35 U.S.C. 112, first paragraph, and 37 CFR 1.71. A drawing, if necessary under 35 U.S.C. 113 (first sentence) and 37 CFR 1.81(a).

Even though an application purports to include the component parts necessary to obtain a filing date, the application will still be held to be incomplete and a filing date will be refused if the component parts fail to satisfy the requirements set forth above. For exam- ple, if the documents purporting to be a specification

are so obviously informal and incoherent that they would clearly not constitute a specification as required by 35 U.S.C. 112, first paragraph, and 37 CFR 1.71, the application would not be acceptable and would not be accorded a filing date until correc- tions are made. The filing date of the application would be the date the corrections were made. A provi- sional application will not be examined. However, a provisional application which does not include a cover sheet (37 CFR 1.51(c)(1)), which may be an application data sheet (37 CFR 1.76) or a cover letter, identifying the application as a provi- sional application, will be treated as a nonprovisional application filed under 37 CFR 1.53(b). See 37 CFR 1.53(c)(1).

NOTE: No amendment, other than to make the provisional application comply with the patent statute and all applicable regulations, may be made to the provisional application after the filing date of the pro- visional application. See 37 CFR 1.53(c).

III. INFORMAL APPLICATIONS

An application is informal if it is typed on both sides of the paper, or is not permanent, legible, or reproducible. If such informalities are timely cor- rected, the application is given the filing date on which the original informal papers were filed.

OIPE accords a filing date, as of the date indicated by the “Office Date” stamp (see MPEP § 505), to application papers which include a specification containing a description and at least one claim (non- provisional applications filed under 37 CFR 1.53(b)), and a drawing, if necessary under 35 U.S.C. 113 (first sentence) but are informal because they do not com- ply with the rules or notices. In such applications, OIPE prepares a Notice of Informal Application indi- cating the informality and places it in the file wrapper. The TC mails the letter to applicant. Failure to correct the informality within the specified time results in abandonment of the application.

The letter of transmittal accompanying the filing of continuing applications should include such addi- tional information as the identification by application number of a provisional or parent application, its sta- tus, and location (if known) in the U.S. Patent and Trademark Office. The supplying of this information will simplify the processing of these applications.

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506.02 Review of Refusal To Accord Filing Date [R-3]

The filing date of the provisional or nonprovisional application is the date of receipt in the Office of the application which includes a specification containing description pursuant to 37 CFR 1.71 and at least one claim (required for nonprovisional applications only) pursuant to 37 CFR 1.75, and any drawings required by 37 CFR 1.81(a). See 37 CFR 1.53(b) and (c).

If any of these items are missing, applicant will be notified to file them and the filing date will be the date of receipt of the missing part(s). If the oath or declara- tion for a nonprovisional application was executed and filed with the application, a supplemental oath or declaration by the inventor is required in some cir- cumstances, e.g., where the missing item is the claim, specification, or a drawing. The supplemental declara- tion must identify the missing item and indicate, as appropriate, that it accurately claims, describes, or illustrates applicant’s invention. See MPEP § 601.01(d)-(g) where the application is filed without all the pages of the specification, without at least one claim (nonprovisional application), without drawings, or without all the figures of the drawings. An error in or failure to identify inventorship does not raise a fil- ing date issue.

Any review of the refusal to grant a filing date as of the date of deposit of the application would be by way of petition, accompanied by the petition fee (37 CFR 1.17(*>f<)). Petitioner should provide any arguments that he or she has that the items noted were not miss- ing or that a filing date should be assigned in the absence of such items if they are believed to be unnecessary. If petitioner alleges that no defect exists, a request for refund of the petition fee may be included in the petition.

For applications properly filed under 37 CFR 1.10, the filing date is the date that the application was deposited as “Express Mail” in the U.S. Postal Ser- vice. For example, if a new patent application is deposited in “Express Mail” in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2). If the proper procedures were not followed, the application will receive a filing date as of the date it was received

in the Office. Any review of these matters would be by way of petition, accompanied by the petition fee (37 CFR 1.17(*>f<)), providing whatever arguments and evidence petitioner has that the application is entitled to a filing date as of the date it was deposited as “Express Mail.” >See MPEP § 513.<

Petitions relating to the filing date accorded to patent applications under 37 CFR 1.53 are decided in the Office of the Deputy Commissioner for Patent Examination Policy (See MPEP § 1002.02(b)), with the exception of petitions relating to the filing date accorded to a design application, which are decided by the Director of Technology Center 2900. See MPEP § 1002.02(c)(3).

Any petition under this section should be marked to the attention of the Office of **>Petitions<.

507 Drawing Review in the Office of Initial Patent Examination [R-3]

The Office has revised the drawing review process to implement the eighteen-month publication of patent applications. Under the revised drawing review process, the Office of Initial Patent Examination (OIPE) performs an initial review of drawings in new utility and plant patent applications filed on or after November 29, 2000 to see if the drawings can be effectively scanned for publication purposes. Design applications are not published. Therefore, drawings filed in design patent applications (whether filed before, on or after November 29, 2000) will be reviewed but not for publication purposes. The stan- dard of review employed by OIPE is such that most drawings, including those that have been indicated by applicant to be informal drawings, will be accepted.

OIPE inspects the drawings to see if they can be effectively scanned and adequately reproduced. If the drawings are not acceptable, OIPE will object to the drawings and notify applicant that a timely submis- sion of acceptable drawings (e.g., drawings which can be scanned) is required. This initial review process in OIPE is necessary in order to ensure that applications can be timely published.

Under the OIPE review process, OIPE may object to and require corrected drawings within a set time period, if the drawings:

(A) have a line quality that is too light to be repro- duced (weight of all lines and letters must be heavy

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enough to permit adequate reproduction) or text that is illegible (reference characters, sheet numbers, and view numbers must be plain and legible). See 37 CFR 1.84(l) and (p)(1);

(B) have missing lead lines. See 37 CFR 1.84(q). Lead lines are those lines between the reference char- acters and the details referred to;

(C) contain excessive text or text that is not in English (including, for example, a flow chart that was originally not in English that has been marked up to include the English text). See 37 CFR 1.84(o) and (p)(2) and 37 CFR 1.52(d)(1);

(D) do not have the appropriate margin or are not on the correct size paper. See 37 CFR 1.84(f) and (g). Each sheet must include a top margin of at least 2.5 cm. (1 inch), a left size margin of at least 2.5 cm. (1 inch), a right size margin of at least 1.5 cm. (5/8 inch), and a bottom margin of at least 1.0 cm. (3/8 inch). The size of the sheets on which drawings are made must be either 21.0 cm. by 29.7 cm. (DIN size A4) or 21.6 cm. by 27.9 cm. (8-1/2 by 11 inches);

(E) have more than one figure and each figure is not labeled “Fig.” With a consecutive Arabic numeral (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.). See 37 CFR 1.84(u)(1);

(F) include photographs of the claimed invention which are capable of illustration by other medium such as ink drawings, and which are illegible after scanning. See 37 CFR 1.84(b); and

(G) contain color drawings or color photographs, but not a petition to accept color drawings/photo- graphs. Note that the requirement ** for a black and white photocopy of any color drawings/photographs has been *>eliminated<. **

If OIPE objects to the drawings and sends appli- cant a Notice requiring submission of corrected draw- ings within a set time period (usually two months), corrected drawings must be filed, in paper, to the mailing address set forth in the Notice, along with any other items required by OIPE, to avoid abandonment of the application. No fee will be necessary for filing corrected drawings which are required by OIPE. Oth- erwise, in most situations, patent application publica- tions and patents will reflect the quality of the drawings that are included with a patent application on filing unless applicant voluntarily submits better quality drawings as set forth *>in MPEP § 1121<.

**

508 Distribution [R-2]

**>All applications filed on or after June 30, 2003, are electronically scanned and loaded into the Image File Wrapper (IFW) system. Once documents are loaded into the IFW system, examiners, technical sup- port staff, and other Office personnel will perform fur- ther processing and examination using the IFW system.

For handling of models, exhibits, and specimen,< see MPEP § 608.03 and § 608.03(a).

508.01 Papers Sent to Wrong Technol- ogy Center (TC) [R-2]

If drawings, amendments, or other papers are deliv- ered to the wrong TC, the TC to which this applica- tion is assigned should be obtained from PALM and be placed on the paper and then forwarded to the appropriate TC. The TC to which the application is assigned as indicated by PALM may be verified by calling the TC as indicated before forwarding the paper. >For Image File Wrapper (IFW) processing, see IFW Manual.<

508.02 Papers Received After Patenting or Abandonment [R-2]

After an application is patented or abandoned, any incoming communication which is not to become part of the record will be returned to the sender by the Technology Center. >For Image File Wrapper (IFW) processing, see IFW Manual.<

508.03 Unmatched Papers [R-2]

>For Image File Wrapper (IFW) processing, see IFW Manual. Effective December 1, 2003, no official paper which relates to a pending application may be personally delivered to a Technology Center (TC) except papers that are directed to an application sub- ject to a secrecy order pursuant to 35 U.S.C. 181, or are national security classified and that are directed to Licensing and Review. See MPEP § 502.< Unmatched papers for nonprovisional applications >(maintained in paper application files)< within a **>TC< should be frequently reviewed to determine which should be sent to the Paper Correlating Office (PCO).

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Item I below treats the papers in the “Application number too high” category. Items II-VI below are directed to all other unmatched papers not in the “Application number too high” category.

I. UNMATCHED PAPERS IN THE “APPLI- CATION NUMBER TOO HIGH” CATE- GORY

This collection of papers being held by the TC should be reviewed at least once a week. Any paper having an application number which clearly should have already been received by the TC should be removed from this collection. Where the TC does not have a corresponding application for any of these papers, inquiry should be made of the Office of Initial Patent Examination (OIPE) to determine the TC of record. If another TC number is indicated, the paper should be forwarded to that TC. If OIPE does not yield a new TC number for the indicated application number, the paper should be sent to the PCO.

II. UNMATCHED PAPERS HAVING AN AP- PLICATION NUMBER

It can be assumed that either the TC number or the application number on these papers is incorrect. Inquiry should be made of the OIPE and PALM to determine the TC of record and the procedure set out in paragraph I above followed. An exception to this practice should be made where the paper has thereon the name of an examiner in the TC. In these situa- tions, a careful check of the TC records and files as well as consultation with the indicated examiner should be made to determine the correct application number. If this does not yield a new application num- ber, the paper should be sent to the PCO.

III. UNMATCHED PAPERS RELATING TO APPLICATIONS ABANDONED FROM TC

The application file should be ordered from Files Repository. If the file is not received therefrom, the paper should be forwarded to the PCO.

IV. PAPERS FOR APPLICATIONS WHICH HAVE BEEN SENT TO PUBLISHING DIVISION

All papers for applications which PALM indicates to be located in any of the locations 7400 through 7650 should be forwarded to the Publishing Division.

The instructions of this paragraph (IV) apply to all files in issue including those which have been assigned a patent number and issue date. Papers requiring examiner review and action will be returned to the TC after Publishing Division personnel have matched the paper to the appropriate file.

V. PAPERS FOR APPLICATIONS WHICH HAVE BEEN SENT TO THE FILE INFOR- MATION UNIT (RECORD ROOM)

If PALM indicates that the application to which a paper relates is in the File Information Unit (Record Room) (location code 9210), the paper should be for- warded to the PCO for response.

VI. UNMATCHED PAPERS FOR APPLICA- TIONS WHICH ARE KNOWN TO BE PENDING IN THE TC BUT CANNOT BE LOCATED

Generally, these are applications which PALM indi- cates are present in the TC, but the file is not avail- able. These papers should be retained in the TC for processing.

Each paper sent to the PCO must have a PCO Transmittal Form stapled thereto. Each form attached to a paper should be filled out as completely as possi- ble. Transmittal Forms attached to papers of the type described in paragraph I and paragraph II above must have an indication of the information obtained from both OIPE and PALM. The PALM information should be inserted in the large space at the bottom of the form. This will help eliminate duplication of effort by PCO personnel. Papers received without transmittal forms or with incompletely filled out transmittal forms may be returned to the originating TC.

508.04 Unlocatable Patent or Applica- tion Files [R-3]

37 CFR 1.251. Unlocatable file. (a) In the event that the Office cannot locate the file of an

application, patent, or other patent-related proceeding after a rea-

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sonable search, the Office will notify the applicant or patentee and set a time period within which the applicant or patentee must com- ply with the notice in accordance with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section.

(1) Applicant or patentee may comply with a notice under this section by providing:

(i) A copy of the applicant’s or patentee’s record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other pro- ceeding (except for U.S. patent documents);

(ii) A list of such correspondence; and (iii) A statement that the copy is a complete and accu-

rate copy of the applicant’s or patentee’s record of all of the corre- spondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or pat- entee for such application, patent, or other proceeding that is not among applicant’s or patentee’s records.

(2) Applicant or patentee may comply with a notice under this section by:

(i) Producing the applicant’s or patentee’s record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other pro- ceeding for the Office to copy (except for U.S. patent documents); and

(ii) Providing a statement that the papers produced by applicant or patentee are applicant’s or patentee’s complete record of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents), and whether applicant or pat- entee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other pro- ceeding that is not among applicant’s or patentee’s records.

(3) If applicant or patentee does not possess any record of the correspondence between the Office and the applicant or paten- tee for such application, patent, or other proceeding, applicant or patentee must comply with a notice under this section by provid- ing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding.

(b) With regard to a pending application, failure to comply with one of paragraphs (a)(1), (a)(2), or (a)(3) of this section within the time period set in the notice will result in abandonment of the application.

37 CFR 1.251 sets forth a procedure for the recon- struction of the file of a patent application, patent, or any other patent-related proceeding that cannot be located after a reasonable search. The phrase “an application” in 37 CFR 1.251 applies to any type of application (national or international), and regardless of the status (pending or abandoned) of the applica- tion>.<

37 CFR 1.251(a) provides that in the event the Office cannot locate the file of an application, patent,

or any other patent-related proceeding after a reason- able search, the Office will notify the applicant or pat- entee and set a time period within which the applicant or patentee must comply with the notice. The appli- cant or patentee may comply with a notice under 37 CFR 1.251 by providing: (1) a copy of his or her record (if any) of all of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (except for U.S. patent documents); (2) a list of such corre- spondence; and (3) a statement that the copy is a com- plete and accurate copy of the applicant’s or patentee’s record of all of the correspondence between the Office and the applicant or patentee for such appli- cation, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among appli- cant’s or patentee’s records (37 CFR 1.251(a)(1)). The applicant or patentee may also comply with a notice under 37 CFR 1.251 by: (1) producing his or her record (if any) of all of the correspondence between the Office and the applicant or patentee for such appli- cation, patent, or other proceeding for the Office to copy (except for U.S. patent documents); and (2) providing a statement that the papers produced by applicant or patentee are applicant’s or patentee’s complete record of all of the correspondence between the Office and the applicant or patentee for such appli- cation, patent, or other proceeding (except for U.S. patent documents), and whether applicant or patentee is aware of any correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding that is not among appli- cant’s or patentee’s records (37 CFR 1.251(a)(2)). If applicant or patentee does not possess any record of the correspondence between the Office and the appli- cant or patentee for such application, patent, or other proceeding, the applicant or patentee must comply with a notice under 37 CFR 1.251 by providing a statement that applicant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other proceeding (37 CFR 1.251(a)(3)).

According to 37 CFR 1.251(a), if the applicant or patentee possesses all or just some of the correspon- dence between the Office and the applicant or paten-

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tee for such application, patent, or other proceeding, the applicant or patentee is to reply by providing a copy of (or producing) his or her record of all of the correspondence between the Office and the appli- cant or patentee for such application, patent, or other proceeding (37 CFR 1.251(a)(1) or (a)(2)). If appli- cant or patentee does not possess any record of the correspondence between the Office and the applicant or patentee for such application, patent, or other pro- ceeding, the applicant or patentee is to reply with a statement to that effect (37 CFR 1.251(a)(3)).

If an applicant or patentee decides to produce his or her record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding for copying by the Office under 37 CFR 1.251(a)(2) (rather than provide a copy under 37 CFR 1.251(a)(1)), the record should be brought to the Customer Service Center in the Office of Initial Patent Examination**.

The Office will set a time period of three months for reply in a notice under 37 CFR 1.251 in an appli- cation. The time period will be extendable under 37 CFR 1.136(a) (unless the notice indicates other- wise) by three months up to a maximum period for reply of six months in an application. See 35 U.S.C. 133. If, however, an applicant fails to reply to a notice under 37 CFR 1.251 within three months of its mail- ing date, any patent term adjustment under 35 U.S.C. 154(b) will be reduced by a period equal to the num- ber of days (if any) beginning on the day after the date that is three months after the mailing date of the notice under 37 CFR 1.251 and ending on the date the reply to the notice under 37 CFR 1.251 was filed. See 35 U.S.C. 154(b)(2)(C)(ii) and 37 CFR 1.704(b). The Office will set a time period of six months for reply in a notice under 37 CFR 1.251 in a patent. The time period will not be extendable under 37 CFR 1.136(a) in a patent because 35 U.S.C. 41(a)(8) only authorizes the Office to charge fees for extensions of time in pro- ceedings involving an application.

37 CFR 1.251 generally applies only to situations in which the file of an application or patent (not just certain documents) is unlocatable. When a document is missing from an application, Office practice is to call the applicant’s representative and request submis- sion (generally by facsimile) of a copy of the missing document. While the Office will generally treat miss- ing documents in this relatively informal manner

(rather than issuing a notice under 37 CFR 1.251), the Office may issue a notice under 37 CFR 1.251 to obtain a copy of a missing document if the Office’s informal attempts to obtain a copy of the document are unsuccessful. The notice under 37 CFR 1.251 will include a printout of the contents entries from the Office’s PALM system.

Any appendix or information disclosure statement submitted with an application is not contained in the Office’s PACR database. Therefore, the applicant or patentee must also provide a copy of any appendix or information disclosure statement (except in the lim- ited circumstance discussed below) submitted with the application. Since the Office can obtain copies of U.S. patent documents (U.S. patent application publi- cations and patents) from its internal databases, the Office is not requiring applicants or patentees to pro- vide copies of U.S. patent application publications and patents that are among the applicant’s or paten- tee’s record of the correspondence between the Office and the applicant or patentee for the application, patent, or other proceeding.

37 CFR 1.251(b) provides that with regard to a pending application, the failure to provide a reply to such a notice within the time period set in the notice will result in abandonment of the application. While abandonment (or expiration or lapse) of a patent is not an issue if a patentee fails to timely comply with a notice under 37 CFR 1.251, in such a situation the only certified copy of the patent file that the Office will be able to produce will be a copy of the patent and a copy of the application-as-filed (which may have an adverse impact during attempts to enforce the patent). In addition, if the patent is involved in a pro- ceeding before the Office, the Office may take action under 37 CFR *>41.128< or 37 CFR 10.18.

509 Payment of Fees [R-5]

The latest fee schedule is available by contacting the USPTO at 1-800-PTO(786)-9199 or (571) 272- 1000, or on the USPTO webpage at http:// www.uspto.gov.

37 CFR 1.22. Fees payable in advance. (a) Patent fees and charges payable to the United States

Patent and Trademark Office are required to be paid in advance; that is, at the time of requesting any action by the Office for which a fee or charge is payable with the exception that under § 1.53 applications for patent may be assigned a filing date without pay- ment of the basic filing fee.

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(b) All fees paid to the United States Patent and Trade- mark Office must be itemized in each individual application, patent, or other proceeding in such a manner that it is clear for which purpose the fees are paid. The Office may return fees that are not itemized as required by this paragraph. The provisions of § 1.5(a) do not apply to the resubmission of fees returned pursuant to this paragraph.

37 CFR 1.23. Method of payment. (a) All payments of money required for United States Patent

and Trademark Office fees, including fees for the processing of international applications (§ 1.445), shall be made in U.S. dollars and in the form of a cashier’s or certified check, Treasury note, national bank notes, or United States Postal Service money order. If sent in any other form, the Office may delay or cancel the credit until collection is made. Checks and money orders must be made payable to the Director of the United States Patent and Trademark Office. (Checks made payable to the Commissioner of Patents and Trademarks will continue to be accepted.) Payments from foreign countries must be payable and immediately negotiable in the United States for the full amount of the fee required. Money sent to the Office by mail will be at the risk of the sender, and letters containing money should be registered with the United States Postal Service.

(b) Payments of money required for United States Patent and Trademark Office fees may also be made by credit card, except for replenishing a deposit account. Payment of a fee by credit card must specify the amount to be charged to the credit card and such other information as is necessary to process the charge, and is sub- ject to collection of the fee. The Office will not accept a general authorization to charge fees to a credit card. If credit card informa- tion is provided on a form or document other than a form provided by the Office for the payment of fees by credit card, the Office will not be liable if the credit card number becomes public knowl- edge.

37 CFR 1.26. Refunds. (a) The Director may refund any fee paid by mistake or in

excess of that required. A change of purpose after the payment of a fee, such as when a party desires to withdraw a patent filing for which the fee was paid, including an application, an appeal, or a request for an oral hearing, will not entitle a party to a refund of such fee. The Office will not refund amounts of twenty-five dol- lars or less unless a refund is specifically requested, and will not notify the payor of such amounts. If a party paying a fee or requesting a refund does not provide the banking information nec- essary for making refunds by electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or instruct the Office that refunds are to be credited to a deposit account, the Director may require such information, or use the banking information on the payment instrument to make a refund. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged.

(b) Any request for refund must be filed within two years from the date the fee was paid, except as otherwise provided in this paragraph or in § 1.28(a). If the Office charges a deposit account by an amount other than an amount specifically indicated

in an authorization (§ 1.25(b)), any request for refund based upon such charge must be filed within two years from the date of the deposit account statement indicating such charge, and include a copy of that deposit account statement. The time periods set forth in this paragraph are not extendable.

(c) If the Director decides not to institute a reexamination proceeding, for ex parte reexaminations filed under § 1.510, a refund of $1,690 will be made to the reexamination requester. For inter partes reexaminations filed under § 1.913, a refund of $7,970 will be made to the reexamination requester. The reexami- nation requester should indicate the form in which any refund should be made (e.g., by check, electronic funds transfer, credit to a deposit account, etc.). Generally, reexamination refunds will be issued in the form that the original payment was provided.

Where the Office has notified an applicant, in writ- ing, that a fee is due and has specified a particular dol- lar amount for that fee, if the applicant timely submits the specified fee amount in response to the notice, the applicant should be considered to have complied with the notice so as to avoid abandonment of the applica- tion. If the fee paid by the applicant is insufficient, either because the notice specified an incorrect dollar amount for the fee or because of a fee increase effec- tive after the mailing of the notice and before payment of the fee by the applicant, the applicant should be notified in writing by the Office of the fee insuffi- ciency and given a new time period in which to sub- mit the remaining balance. The written notification of the fee insufficiency should set forth the reason (i.e., the fee amount indicated by the Office in the earlier notice was incorrect or the fees have increased since the earlier notice was mailed) why applicant is being required to submit an additional fee.

37 CFR 1.22(b) sets forth that fees must be item- ized in such a manner that it is clear for which pur- pose fees are paid. The Office may return fees that are not itemized. The intent of the fee itemization require- ment is to encourage a better explanation by appli- cants of how fees being paid are to be applied by the Office. This will allow Office employees to properly account for the fees being paid by applicants. It should be noted that the language of 37 CFR 1.22 is not intended to create a problem when it is clear what fee is needed. A reference to “filing fee(s)” would be sufficient to cover filing fees (including search and examination fees) of all different types of applications and all types of claims. Further, in a paper submitted on a date later than the actual filing date, the reference to “filing fee(s)” would also be sufficient to cover the surcharge under 37 CFR 1.16, as the surcharge is also

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required to make the application complete. A refer- ence to “any corresponding fee under 37 CFR 1.16” would be sufficient to cover any fee (e.g., surcharge, application size fee, excess claims fees) under 37 CFR 1.16. In a petition for an extension of time filed with- out a specifically itemized fee, but with a general authorization to charge a deposit account, it is clear that a fee for an extension of time is needed and the deposit account should be charged the appropriate extension of time fee.

In situations in which a payment submitted for the fees due on filing in a nonprovisional application filed under 35 U.S.C. 111(a) is insufficient and the appli- cant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:

(1) the basic filing fee (37 CFR 1.16(a), (b), (c), or (e));

(2) the application size fee (37 CFR 1.16(s)); (3) the late filing surcharge (37 CFR 1.16(f)); (4) the processing fee for an application filed in a

language other than English (37 CFR 1.17(i)); (5) the search fee (37 CFR 1.16(k), (l), (m), or

(n)); (6) the examination fee (37 CFR 1.16(o), (p), (q),

or (r)); and (7) the excess claims fee (37 CFR 1.16(h), (i),

and (j)).

In situations in which a payment submitted for the fees due on filing in a provisional application filed under 35 U.S.C. 111(b) is insufficient and the appli- cant has not specified the fees to which the payment is to be applied, the Office will apply the payment in the following order until the payment is expended:

(1) the basic filing fee (37 CFR 1.16(d)); (2) the application size fee (37 CFR 1.16(s)); and (3) the late filing surcharge (37 CFR 1.16(g)).

See also MPEP § 607.

PAYMENT BY CREDIT CARD

Effective June 5, 2000, 37 CFR 1.23 was amended to permit payment of any patent process fee, trade- mark process fee, or information product fee by credit card, subject to actual collection of the fee. The Office currently accepts charges to the following credit

cards: AMERICAN EXPRESS®, DISCOVER®, MASTER CARD®, and VISA®.

Credit Card Payment Form (PTO-2038) should be used when paying a patent process or trademark pro- cess fee (or the fee for an information product) by credit card. Form PTO-2038 may be downloaded at http://www.uspto.gov/web/forms/2038.pdf. The Office will not include the Credit Card Payment Form (PTO-2038) among the records open to public inspection in the file of a patent, trademark registra- tion, or other proceeding. The Office does not require customers to use this form when paying a patent pro- cess or trademark process fee by credit card. If a cus- tomer provides a credit card charge authorization in another form or document (e.g., a communication relating to the patent or trademark), the credit card information may become part of the record of an Office file that is open to public inspection. Thus, fail- ure to use the Credit Card Payment Form (PTO-2038) when submitting a credit card payment may result in your credit card information becoming part of the record of an Office file that is open to public inspec- tion.

Credit card payments by facsimile are permitted, except in situations in which facsimile submission of correspondence is not permitted in 37 CFR 1.6(d).

35 U.S.C. 42(d) and 37 CFR 1.26 (which concern refund of patent and trademark fees) also apply to requests for refund of fees paid by credit card. Any refund of a fee paid by credit card will be by a credit to the credit card account to which the fee was charged. See 37 CFR 1.26(a).

>See MPEP § 607.02 for returnability of fees.< Any payment of a patent process or trademark pro-

cess fee by credit card must be in writing (see 37 CFR 1.2), preferably on the Credit Card Payment Form (PTO-2038). If a Credit Card Payment Form or other document authorizing the Office to charge a patent process or trademark process fee to a credit card does not contain the information necessary to charge the fee to the credit card, the customer must submit a revised Credit Card Payment Form or document con- taining the necessary information. Office employees will not accept oral (telephonic) instructions to com- plete the Credit Card Payment Form or otherwise charge a patent process or trademark process fee (as opposed to information product or service fees) to a credit card.

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>Beginning on January 28, 2006, credit card pay- ment submissions made on the USPTO web site at www.uspto.gov must include the 3-digit or 4-digit security code associated with the credit card in addi- tion to the credit card number. The security code will not be required when the paper Credit Card Payment Form (PTO-2038) or other written authorization is submitted.

The security code is part of an authentication proce- dure established by credit card companies to further efforts towards reducing fraudulent or unauthorized credit card use for Internet payment transactions. The security code must be entered at the time of the Inter- net payment transaction to verify that the physical card is in the cardholder’s possession. The security code appears on all major credit cards and is not part

of the credit card number itself. Each credit card com- pany has its own name for the security code (such as CVV, CVV2, CVC2 or CID), but it functions the same for all major card types.

On DISCOVER®, MASTERCARD®, and VISA® credit cards, the security codes is a 3-digit code that is printed on the back of the card, often following the credit card number digits. For AMERICAN EXPRESS® credit cards, the security code is a 4-digit code that is printed on the front of the cards. If you cannot read the security code, you will have to contact the financial institution that issued your credit card. Effective January 28, 2006, the USPTO Internet credit card payment screen will include a mandatory field to enter the security code along with helpful information to locate the security code on the credit card.<

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**> Form PTO-2038. Credit Card Payment Form

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<

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509.01 Deposit Accounts [R-5]

37 CFR 1.25. Deposit accounts. (a) For the convenience of attorneys, and the general public

in paying any fees due, in ordering services offered by the Office, copies of records, etc. deposit accounts may be established in the Patent and Trademark Office upon payment of the fee for estab- lishing a deposit account § 1.21(b)(1)). A minimum deposit of $1,000 is required for paying any fee due or in ordering any ser- vices offered by the Office. However, a minimum deposit of $300 may be paid to establish a restricted subscription deposit account used exclusively for subscription order of patent copies as issued. At the end of each month, a deposit account statement will be ren- dered. A remittance must be made promptly upon receipt of the statement to cover the value of items or services charged to the account and thus restore the account to its established normal deposit value. An amount sufficient to cover all fees, services, copies, etc., requested must always be on deposit. Charges to accounts with insufficient funds will not be accepted. A service charge (§ 1.21(b)(2)) will be assessed for each month that the bal- ance at the end of the month is below $1,000. For restricted sub- scription deposit accounts, a service charge (§ 1.21(b)(3)) will be assessed for each month that the balance at the end of the month is below $300.

(b) Filing, issue, appeal, international-type search report, international application processing, petition, and post-issuance fees may be charged against these accounts if sufficient funds are on deposit to cover such fees. A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account containing sufficient funds may be filed in an individual application, either for the entire pendency of the application or with a particular paper filed. An authorization to charge fees under § 1.16 in an international application entering the national stage under 35 U.S.C. 371 will be treated as an authorization to charge fees under § 1.492. An authorization to charge fees set forth in § 1.18 to a deposit account is subject to the provisions of § 1.311(b). An authorization to charge to a deposit account the fee for a request for reexamination pursuant to § 1.510 or § 1.913 and any other fees required in a reexamination proceeding in a patent may also be filed with the request for reexamination. An authori- zation to charge a fee to a deposit account will not be considered payment of the fee on the date the authorization to charge the fee is effective as to the particular fee to be charged unless sufficient funds are present in the account to cover the fee.

(c) A deposit account holder may replenish the deposit account by submitting a payment to the United States Patent and Trademark Office. A payment to replenish a deposit account must be submitted by one of the methods set forth in paragraphs (c)(1), (c)(2), (c)(3), or (c)(4) of this section.

(1) A payment to replenish a deposit account may be sub- mitted by electronic funds transfer through the Federal Reserve Fedwire System, which requires that the following information be provided to the deposit account holder’s bank or financial institu- tion:

(i) Name of the Bank, which is Treas NYC (Treasury New York City);

(ii) Bank Routing Code, which is 021030004; (iii) United States Patent and Trademark Office

account number with the Department of the Treasury, which is 13100001; and

(iv) The deposit account holder’s company name and deposit account number.

(2) A payment to replenish a deposit account may be sub- mitted by electronic funds transfer over the Office’s Internet Web site (www.uspto.gov).

(3) A payment to replenish a deposit account may be sub- mitted by mail with the USPS to: Director of the United States Patent and Trademark Office, P.O. Box 70541, Chicago, Illinois 60673.

**> (4) A payment to replenish a deposit account may be sub-

mitted by mail with a private delivery service or by hand-carrying the payment to: Director of the U.S. Patent and Trademark Office, Attn: Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alex- andria, Virginia 22314.<

An overdrawn account will be immediately sus- pended and no charges will be accepted against it until a proper balance is restored, together with a payment of $10 (37 CFR 1.21(b)(1)) to cover the work done by the U.S. Patent and Trademark Office incident to sus- pending and reinstating the account and dealing with charges which may have been made in the meantime.

If there is an authorization to charge the basic filing fee (37 CFR 1.16(a), (b), (c), (d), or (e)) to a deposit account which is overdrawn or has insufficient funds, a surcharge (37 CFR 1.16(f)) is required in addition to payment of the basic filing fee (37 CFR 1.16(a), (b), (c), (d), or (e)). For applications filed on or after July 1, 2005, which have been accorded a filing date under 37 CFR 1.53(b) or (d), if there is an authorization to charge any of the basic filing fee, the search fee, or the examination fee to a deposit account which is over- drawn or has insufficient funds, a surcharge under 37 CFR 1.16(f) is required in addition to payment of the required fee(s). Failure to timely pay the filing fee and surcharge will result in abandonment of the applica- tion.

It is expected, however, that reasonable precautions will be taken in all cases to avoid overdrafts, and if an account is suspended repeatedly it will be closed.

Similarly, because of the burden placed on the U.S. Patent and Trademark Office incident to the operation of deposit accounts, a charge of $10 (37 CFR 1.21(b)(1)) will be made for opening each new account.

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I. DEPOSIT ACCOUNT AUTHORIZATIONS

37 CFR 1.25(b) states that:

A general authorization to charge all fees, or only certain fees, set forth in §§ 1.16 to 1.18 to a deposit account con- taining sufficient funds may be filed in an individual application, either for the entire pendency of the applica- tion or with respect to a particular paper filed.

As provided in 37 CFR 1.311(b), an authorization to charge the issue fee (37 CFR 1.18) to a deposit account may be filed in an individual application only after the mailing of the notice of allowance. 37 CFR 1.25(b) also makes clear that a general authorization made prior to the mailing of a notice of allowance does not apply to issue fees under 37 CFR 1.18.

In addition, a general authorization does not apply to document supply fees under 37 CFR 1.19, such as those required for certified copies, to post issuance fees under 37 CFR 1.20, such as those required for maintenance fees, or to miscellaneous fees and charges under 37 CFR 1.21, such as assignment recording fees.

Many applications contain broad language autho- rizing any additional fees which might have been due to be charged to a deposit account. The U.S. Patent and Trademark Office will interpret such broad autho- rizations to include authorization to charge to a deposit account fees set forth in 37 CFR 1.16, and 1.17. Fees under 37 CFR 1.19, 1.20, and 1.21 will not be charged as a result of a general authorization under 37 CFR 1.25 >except to cover the processing fee under 37 CFR 1.21(m) in the event a check or credit card payment is refused or charged back by a financial institution<. Effective November 7, 2000, fees under 37 CFR 1.18 will not be charged as a result of a preau- thorization of issue fee payment.

*>An authorization< to charge fees relating only to a specific paper, ** could read “The Director is hereby authorized to charge any fees under 37 CFR 1.16 and 1.17 which may be required by this paper to Deposit Account No.———.” Such *>an authoriza- tion< would cover situations in which a check to cover a filing and/or a processing fee under 37 CFR 1.16 and 1.17 was omitted or was for an amount less than the amount required. >An authorization covering any omission or deficiency in a check or credit card payment applies to the processing fee under 37 CFR 1.21(m) in the event a check or credit card payment is refused or charged back by a financial institution,

regardless of whether such deposit account authoriza- tion is limited to other fees (e.g., fees under 37 CFR 1.16 and 1.17). If a check or credit card payment for the issue fee is refused or charged back by a financial institution, the application may be held abandoned for failure to pay the issue fee within the statutory period for reply. See MPEP § 1306.<

It is extremely important that the authorization be clear and unambiguous. If applicants file authoriza- tions which are ambiguous and deviate from the usual forms of authorizations, the Office may not interpret the authorizations in the manner applicants intend and may return the fees. As a result, applicants could be subject to further expenses, petitions, etc. in order to have a particular fee charged to a deposit account (which was not charged as intended) or to resubmit a fee(s) due to an ambiguous authorization.

When statutory fees are to be charged to a deposit account, the processing of the application can be facil- itated by submitting the applicant’s transmittal letter or other correspondence specifying the account to be charged in duplicate. Submission of these documents in duplicate will eliminate the need for the Mail Cen- ter to photocopy the document and will thereby reduce the processing time of incoming mail.

The Office will treat a deposit account authoriza- tion to charge “the filing fee” as an authorization to charge the following applicable fees under 37 CFR 1.16: basic filing fee; search fee; examination fee; any excess claims fees; and any application size fee. The Office will treat a deposit account authorization to charge “the basic filing fee” as an authorization to charge the following applicable fees under 37 CFR 1.16: basic filing fee; search fee; and examination fee. Any deposit account authorization to charge the filing fee but not the search fee or examination fee must specifically limit the authorization by reference to one or more paragraphs (a)-(e) of 37 CFR 1.16.

37 CFR 1.25(b) further provides that an authoriza- tion to charge fees under 37 CFR 1.16 (which relates to national application filing fees) in an application filed under 35 U.S.C. 371 will be treated as an autho- rization to charge fees under 37 CFR 1.492 (which relates to national stage fees). Papers filed for the pur- pose of entering the national stage under 35 U.S.C. 371 and 37 CFR 1.495 that include an authorization to charge fees under 37 CFR 1.16 are treated by the Office as an authorization to charge fees under

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37 CFR 1.492 since: (1) timely payment of the appro- priate national fee under 37 CFR 1.492 is necessary to avoid abandonment of the application as to the United States; and (2) the basic filing fee under 37 CFR 1.16 is not applicable to such papers or applications.

II. DEPOSIT ACCOUNT REPLENISH- MENTS

37 CFR 1.25(c) specifies how a deposit account holder may submit a payment to the Office to replen- ish the deposit account. A payment to replenish a deposit account may be submitted by:

(A) making the payment by electronic funds transfer through the Federal Reserve Fedwire System. Deposit account holders who use the Federal Reserve Fedwire System must provide the following informa- tion to their bank or financial institution: (1) Name of the Bank, which is Treas NYC (Treasury New York City); (2) Bank Routing Code, which is 021030004; (3) United States Patent and Trademark Office account number with the Department of Treasury, which is 13100001; and (4) the deposit account holder’s company name and deposit account number. The deposit account holder should inform his or her bank or financial institution to use due care to ensure that all pertinent account numbers are listed on the transaction because the failure to include the proper deposit account number will delay the processing of the replenishment;

(B) electronic funds transfer over the Office’s Internet web site (www.uspto.gov);

(C) mailing the payment with the United States Postal Service (USPS) to: Director of the United States Patent and Trademark Office, P.O. Box **>371279, Pittsburgh, PA 15251-7279<; or

(D) mailing the payment with a private delivery service or hand-carrying the payment to: Director of the United States Patent and Trademark Office, >Attn:< Deposit Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, VA 22314.

>In the event a payment to replenish a deposit account is refused (e.g., for insufficient funds or due to a stop payment order), the fee under 37 CFR 1.21(m) for processing the payment refusal will be charged to the deposit account.< Further information on deposit account replenishment may be obtained

from the Office’s Internet web site or by contacting the Deposit Account Division at (571) 272-6500.

509.02 Small Entity Status — Definitions [R-3]

Under 35 U.S.C. 41(h)(1), fees charged under 35 U.S.C. 41(a)*>,< (b) >and (d)(1)< shall be reduced by 50 percent with respect to their application to any small business concern as defined under section 3 of the Small Business Act, and to any independent inventor or nonprofit organization as defined in regu- lations issued by the Director.

The fees which are reduced include patent applica- tion filing fees >including the basic filing fee, search fee, examination fee, application size fee, and excess claims fees< (37 CFR 1.16), extension of time, revival, and appeal fees (37 CFR 1.17), patent issue fees (37 CFR 1.18), statutory disclaimer fee (37 CFR 1.20(d)), and maintenance fees on patents (37 CFR 1.20). Other fees, established under section 41 (c) or *>(d)(2)< of Title 35, United States Code, are not reduced for small entities since such a reduction is not permitted or authorized by 35 U.S.C. 41(h)(1).

Fees which are not reduced include petition and processing fees (other than revival), 37 CFR 1.17(*>f<)-(k), document supply fees, 37 CFR 1.19, certificate of correction fees, 37 CFR 1.20(a), request for reexamination fees, 37 CFR 1.20(c), miscella- neous fees and charges, 37 CFR 1.21, and interna- tional application fees, 37 CFR 1.445.

>The Consolidated Appropriations Act, 2005, pro- vides that the filing fee charged under 35 U.S.C. 41(a)(1)(A) shall be reduced by 75 percent with respect to its application to any small entity “if the application is filed by electronic means as prescribed by the Director” (35 U.S.C. 41(h)(3)). Therefore, the filing fee for a nonprovisional original utility applica- tion filed on or after December 8, 2004 by a small entity in compliance with the Office electronic filing system is reduced by 75 percent. See 37 CFR 1.16(a)(1). The 75 percent reduction set forth in 35 U.S.C. 41(h)(3) does not apply to design applica- tions, plant applications, reissue applications, or pro- visional applications.<

35 U.S.C. 41(h)(1) gives the Director the authority to establish regulations defining independent inven- tors and nonprofit organizations. The Small Business Administration was given authority to establish the

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definition of a small business concern. A small entity for purposes of paying reduced fees is defined in 37 CFR 1.27(a) as a person, a small business concern, or a nonprofit organization. The term “person” rather than “independent inventor” is used since individuals who are not inventors but who have received some rights in the invention are intended to be covered by 37 CFR 1.27.

37 CFR 1.27. Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

**> (a) Definition of small entities. A small entity as used in this

chapter means any party (person, small business concern, or non- profit organization) under paragraphs (a)(1) through (a)(3) of this section.

(1) Person. A person, as used in paragraph (c) of this sec- tion, means any inventor or other individual (e.g., an individual to whom an inventor has transferred some rights in the invention) who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individ- ual who has transferred some rights in the invention to one or more parties, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention transferred to them also qualify for small entity status either as a person, small business concern, or nonprofit organization under this section.

(2) Small business concern. A small business concern, as used in paragraph (c) of this section, means any business concern that:

(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, con- cern, or organization which would not qualify for small entity sta- tus as a person, small business concern, or nonprofit organization; and

(ii) Meets the size standards set forth in 13 CFR 121.801 through 121.805 to be eligible for reduced patent fees. Questions related to standards for a small business concern may be directed to: Small Business Administration, Size Standards Staff, 409 Third Street, SW., Washington, DC 20416.

(3) Nonprofit Organization. A nonprofit organization, as used in paragraph (c) of this section, means any nonprofit organi- zation that:

(i) Has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention to any person, con- cern, or organization which would not qualify as a person, small business concern, or a nonprofit organization; and

(ii) Is either: (A) A university or other institution of higher edu-

cation located in any country; (B) An organization of the type described in section

501(c)(3) of the Internal Revenue Code of 19 86 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a));

(C) Any nonprofit scientific or educational organi- zation qualified under a nonprofit organization statute of a state of this country (35 U.S.C. 201 (i)); or

(D) Any nonprofit organization located in a foreign country which would qualify as a nonprofit organization under paragraphs (a)(3)(ii)(B) of this section or (a)(3)(ii)(C) of this sec- tion if it were located in this country.

(4) License to a Federal agency. (i) For persons under paragraph (a)(1) of this section, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming small entity status.

(ii) For small business concerns and nonprofit organi- zations under paragraphs (a)(2) and (a)(3) of this section, a license to a Federal agency resulting from a funding agreement with that agency pursuant to 35 U.S.C. 202 (c)(4) does not constitute a license for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) of this section.

(5) Security Interest. A security interest does not involve an obligation to transfer rights in the invention for the purposes of paragraphs (a)(1) through (a)(3) of this section unless the security interest is defaulted upon.

*****

<

I. PERSON

37 CFR 1.27(a)(1) defines a person as any inventor or other individual (e.g., an individual to whom an inventor has transferred some rights in the invention), who has not assigned, granted, conveyed, or licensed, and is under no obligation under contract or law to assign, grant, convey, or license, any rights in the invention. An inventor or other individual who has transferred some rights, or is under an obligation to transfer some rights in the invention to one or more parties, can also qualify for small entity status if all the parties who have had rights in the invention trans- ferred to them also qualify for small entity status either as a person, small business concern, or non- profit organization.

II. SMALL BUSINESS CONCERN

In order to be eligible for reduced patent fees as a “small business concern” under 37 CFR 1.27(a)(2), a business concern must meet the standards set forth in

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13 CFR **>121.801 through 121.805<. Questions relating to standards for a small business concern may be directed to:

Small Business Administration Office of Size Standards 409 Third Street, S.W. Washington, DC 20416 (202)205-6618 E-mail: sizestandards@sba.gov

III. NONPROFIT ORGANIZATIONS

37 CFR 1.27(a)(3) defines a nonprofit organization by utilizing and interpreting the definition contained in 35 U.S.C. 201(i). The term “university or other institution of higher education” as used in 37 CFR 1.27(a)(3)(ii)(A) means an educational institution which

(A) admits as regular students only persons hav- ing a certificate of graduation from a school providing secondary education, or the recognized equivalent of such a certificate,

(B) is legally authorized within the jurisdiction in which it operates to provide a program of education beyond secondary education,

(C) provides an educational program for which it awards a bachelor’s degree or provides not less than a 2-year program which is acceptable for full credit toward such a degree,

(D) is a public or other nonprofit institution, and (E) is accredited by a nationally recognized

accrediting agency or association, or if not so accred- ited, is an institution that has been granted preaccredi- tation status by such agency or association that has been recognized by the Secretary for the granting of preaccreditation status, and the Secretary has deter- mined that there is satisfactory assurance that the institution will meet the accreditation standards of such an agency or association within a reasonable time.

The definition of “university or other institution of higher education” as set forth herein essentially fol- lows the definition of “institution of higher educa- tion” contained in 20 U.S.C. 1000. Institutions which are strictly research facilities, manufacturing facili- ties, service organizations, etc., are not intended to be included within the term “other institution of higher

education” even though such institutions may perform an educational function or publish the results of their work.

Nonprofit organizations also include organizations of the type described in section 501(c)(3) of the Inter- nal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and which are exempt from taxation under 26 U.S.C. 501(a). Organizations described in 26 U.S.C. 501(c)(3) include corporations, and any community chest, fund, or foundation, organized and operated exclusively for religious, charitable, scientific, testing for public safety, literary, or educational purposes, or to foster national or international amateur sports com- petition (but only if no part of its activities involve the provision of athletic facilities or equipment), or for the prevention of cruelty to children or animals, no part of the net earnings of which inures to the benefit of any private shareholder or individual, no substan- tial part of the activities of which is carrying on pro- paganda, or otherwise attempting to influence legislation (limited exceptions may apply under 26 U.S.C. 501(h)) and which does not participate in, or intervene in (including the publishing or distribut- ing of statements), any political campaign on behalf of (or in opposition to) any candidate for public office.

IV. LOCATION OF SMALL ENTITY

Small entities may claim reduced fees regardless of the country in which they are located. There is no restriction requiring that the person, small business concern, or nonprofit organization be located in the United States. The same definitions apply to all appli- cants equally in accordance with the Paris Convention for the Protection of Industrial Property.

V. RIGHTS IN THE INVENTION AND TRANSFER OF RIGHTS

The “rights in the invention” under 37 CFR 1.27(a)(1), (a)(2)(i), and (a)(3)(i) are the rights in the United States. Rights in the invention include the right to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States. Therefore, for example, status as a small entity is lost by an inventor who has transferred or has an obligation to transfer a shop right to an employer who could not qualify as a small entity.

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Individual inventors (37 CFR 1.27(a)(1)), small business concerns (37 CFR 1.27(a)(2)), and nonprofit organizations (37 CFR 1.27(a)(3)) can make an assignment, grant, conveyance, or license of partial rights in the invention to another individual(s), small business concern, or nonprofit organization who could qualify as a person (37 CFR 1.27(a)(1)), small business concern, or nonprofit organization. Under the circumstances described, the individual inventor, small business concern, or nonprofit organization could still qualify for small entity status. However, if the individual inventor, small business concern, or nonprofit organization assigned, granted, conveyed, or licensed, or came under an obligation to assign, grant, convey, or license, any rights to the invention to any individual, small business concern, or nonprofit organization which would not qualify as a small entity (37 CFR 1.27(a)), then the inventor, small business concern, or nonprofit organization would no longer qualify for small entity status.

With regard to transfer of rights in the invention, the rights in question are those in the United States to be covered by an application or patent. Transfer of rights to a Japanese patent, for example, would not affect small entity status if no rights in the United States to a corresponding patent were likewise trans- ferred.

The payment of reduced fees under 35 U.S.C. 41 is limited to those situations in which all of the rights in the invention are owned by small entities, i.e., per- sons, small business concerns, or nonprofit organiza- tions. To do otherwise would be clearly contrary to the intended purpose of the legislation which contains no indication that fees are to be reduced in circum- stances where rights are owned by non-small entities. For example, a non-small entity is not permitted to transfer patent rights to a small business concern which would pay the reduced fees and grant a license to the entity.

If rights transferred to a non-small entity are later returned to a small entity so that all rights are held by small entities, reduced fees may be claimed.

The term “license” in the definitions includes non- exclusive as well as exclusive licenses and royalty free as well as royalty generating licenses. Implied licenses to use and resell patented articles purchased from a small entity, however, will not preclude the proper claiming of small entity status. Likewise, an

order by an applicant to a firm to build a prototype machine or product for the applicant’s own use is not considered to constitute a license for purposes of the definitions. A grant of a non-exclusive license to a *>non-small< entity will disqualify applicant from claiming small entity status. See Ulead Systems, Inc. v. Lex Computer & Management Corp., 351 F.3d 1139, 1142, 69 USPQ2d 1097, 1099 (Fed. Cir. 2003).

>A security interest does not involve an obligation to transfer rights in the invention for the purposes of 37 CFR 1.27(a)(1) through (a)(3) unless the security interest is defaulted upon. See 37 CFR 1.27(a)(5). For example, an applicant or patentee may take out a loan from a large entity banking institution and the loan may be secured with rights in a patent application or patent of the applicant or patentee, respectively. The granting of such a security interest to the banking institution is not a currently enforceable obligation to assign, grant, convey, or license any rights in the invention to the banking institution. Only if the loan is defaulted upon will the security interest permit a transfer of rights in the application or patent to the banking institution. Thus, where the banking institu- tion is a large entity, the applicant or patentee would not be prohibited from claiming small entity status merely because the banking institution has been granted a security interest, but if the loan is defaulted upon, there would be a loss of entitlement to small entity status. Pursuant to 37 CFR 1.27(g), notification of the loss of entitlement due to default on the terms of the security interest would need to be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any mainte- nance fee due after the date on which small entity sta- tus is no longer appropriate. See MPEP § 509.03, subsection VII. Removal of Status.<

VI. RIGHTS HELD BY GOVERNMENT ORGANIZATIONS

Also, although the Federal government agencies do not qualify as nonprofit organizations for paying reduced fees under the rules, a license to a Federal agency resulting from a funding agreement with the agency pursuant to 35 U.S.C. 202(c)(4) will not pre- clude the proper claiming of small entity status. Fur- thermore, a license to the Government resulting from a rights determination under Executive Order 10096 does not constitute a license so as to prohibit claiming

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small entity status by a person under 37 CFR 1.27(a)(1).

Public Law 96-517 added a new chapter 18 of Title 35 of the United States Code entitled “Patent Rights in Inventions Made With Federal Assistance.” Under the provisions of the statute, each funding agreement between a Federal agency and an individual, small business firm, or nonprofit organization must pro- vide, inter alia, that “. . . the Federal agency shall have a nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced for or on behalf of the United States any subject invention . . .” See 35 U.S.C. 202(c)(4). The Federal agencies do not qualify as nonprofit organizations for paying reduced patent fees under the rules. Applying this construction to the licensing of an invention to a Federal agency by a person, small business concern, or nonprofit organi- zation pursuant to a funding agreement under 35 U.S.C. 202(c)(4) would preclude their qualifying for paying reduced fees. This, however, would frus- trate the intent of Public Law 97-247 and Public Law 96-517 when taken together.

Government organizations as such, whether domes- tic or foreign, cannot qualify as nonprofit organiza- tions as defined in 37 CFR 1.27(a)(3). Thus, for example, a government research facility or other gov- ernment-owned corporation could not qualify. 37 CFR 1.27(a)(3) was based upon 35 U.S.C. 201(i), as established by Public Law 96-517. The limitation to “an organization of the type described in section 501(c)(3) of the Internal Revenue Code of 1986 (26 U.S.C. 501(c)(3)) and exempt from taxation under section 501(a) of the Internal Revenue Code (26 U.S.C. 501(a))” would by its nature exclude the U.S. government and its agencies and facilities, including research facilities and government corpora- tions. State and foreign governments and governmen- tal agencies and facilities would be similarly excluded. 37 CFR 1.27(a)(3) is not intended to include within the definition of a nonprofit organiza- tion government organizations of any kind located in any country. A university or other institution of higher education located in any country would qual- ify, however, as a “nonprofit organization” under 37 CFR 1.27(a)(3) even though it has some govern- ment affiliation since such institutions are specifically included.

A wholly owned subsidiary of a nonprofit organiza- tion or of a university is considered a part of the non- profit organization or university and is not precluded from qualifying for small entity status.

509.03 Claiming Small Entity Status [R-3]

37 CFR 1.27. Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office.

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**> (b) Establishment of small entity status permits payment of

reduced fees. (1) A small entity, as defined in paragraph (a) of this sec-

tion, who has properly asserted entitlement to small entity status pursuant to paragraph (c) of this section will be accorded small entity status by the Office in the particular application or patent in which entitlement to small entity status was asserted. Establish- ment of small entity status allows the payment of certain reduced patent fees pursuant to 35 U.S.C. 41(h)(1).

(2) Submission of an original utility application in com- pliance with the Office electronic filing system by an applicant who has properly asserted entitlement to small entity status pursu- ant to paragraph (c) of this section in that application allows the payment of a reduced filing fee pursuant to 35 U.S.C. 41(h)(3).<

(c) Assertion of small entity status. Any party (person, small business concern or nonprofit organization) should make a deter- mination, pursuant to paragraph (f) of this section, of entitlement to be accorded small entity status based on the definitions set forth in paragraph (a) of this section, and must, in order to establish small entity status for the purpose of paying small entity fees, actually make an assertion of entitlement to small entity status, in the manner set forth in paragraphs (c)(1) or (c)(3) of this section, in the application or patent in which such small entity fees are to be paid.

(1) Assertion by writing. Small entity status may be estab- lished by a written assertion of entitlement to small entity status. A written assertion must:

(i) Be clearly identifiable; (ii) Be signed (see paragraph (c)(2) of this section);

and (iii) Convey the concept of entitlement to small entity

status, such as by stating that applicant is a small entity, or that small entity status is entitled to be asserted for the application or patent. While no specific words or wording are required to assert small entity status, the intent to assert small entity status must be clearly indicated in order to comply with the assertion require- ment.

(2) Parties who can sign and file the written assertion. The written assertion can be signed by:

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(i) One of the parties identified in § 1.33(b) (e.g., an attorney or agent registered with the Office), § 3.73(b) of this chapter notwithstanding, who can also file the written assertion;

(ii) At least one of the individuals identified as an inventor (even though a § 1.63 executed oath or declaration has not been submitted), notwithstanding § 1.33(b)(4), who can also file the written assertion pursuant to the exception under § 1.33(b) of this part; or

(iii) An assignee of an undivided part interest, notwith- standing §§ 1.33(b)(3) and 3.73(b) of this chapter, but the partial assignee cannot file the assertion without resort to a party identi- fied under § 1.33(b) of this part.

**> (3) Assertion by payment of the small entity basic filing

or basic national fee. The payment, by any party, of the exact amount of one of the small entity basic filing fees set forth in §§ 1.16(a), 1.16(b), 1.16(c), 1.16(d), 1.16(e), or the small entity basic national fee set forth in § 1.492(a), will be treated as a written assertion of entitlement to small entity status even if the type of basic filing or basic national fee is inadvertently selected in error.

(i) If the Office accords small entity status based on payment of a small entity basic filing or basic national fee under paragraph (c)(3) of this section that is not applicable to that appli- cation, any balance of the small entity fee that is applicable to that application will be due along with the appropriate surcharge set forth in § 1.16(f), or § 1.16(g).

(ii) The payment of any small entity fee other than those set forth in paragraph (c)(3) of this section (whether in the exact fee amount or not) will not be treated as a written assertion of entitlement to small entity status and will not be sufficient to establish small entity status in an application or a patent.<

(4) Assertion required in related, continuing, and reissue applications. Status as a small entity must be specifically estab- lished by an assertion in each related, continuing and reissue application in which status is appropriate and desired. Status as a small entity in one application or patent does not affect the status of any other application or patent, regardless of the relationship of the applications or patents. The refiling of an application under § 1.53 as a continuation, divisional, or continuation-in-part appli- cation (including a continued prosecution application under § 1.53(d)), or the filing of a reissue application, requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application.

(d) When small entity fees can be paid. Any fee, other than the small entity basic filing fees and the small entity national fees of paragraph (c)(3) of this section, can be paid in the small entity amount only if it is submitted with, or subsequent to, the submis- sion of a written assertion of entitlement to small entity status, except when refunds are permitted by § 1.28(a).

(e) Only one assertion required. (1) An assertion of small entity status need only be filed

once in an application or patent. Small entity status, once estab- lished, remains in effect until changed pursuant to paragraph (g)(1) of this section. Where an assignment of rights or an obliga- tion to assign rights to other parties who are small entities occurs subsequent to an assertion of small entity status, a second asser- tion is not required.

(2) Once small entity status is withdrawn pursuant to paragraph (g)(2) of this section, a new written assertion is required to again obtain small entity status.

(f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an assertion of entitlement to small entity status in an application, including a related, continu- ing, or reissue application, a determination of such entitlement should be made pursuant to the requirements of paragraph (a) of this section. It should be determined that all parties holding rights in the invention qualify for small entity status. The Office will generally not question any assertion of small entity status that is made in accordance with the requirements of this section, but note paragraph (h) of this section.

(g)(1) New determination of entitlement to small entity status is needed when issue and maintenance fees are due. Once status as a small entity has been established in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due.

(2) Notification of loss of entitlement to small entity sta- tus is required when issue and maintenance fees are due. Notifica- tion of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity as defined in paragraph (a) of this section is no longer appropriate. The notification that small entity status is no longer appropriate must be signed by a party identified in § 1.33(b). Payment of a fee in other than the small entity amount is not sufficient notification that small entity status is no longer appropriate.

(h) Fraud attempted or practiced on the Office. (1) Any attempt to fraudulently establish status as a small

entity, or pay fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.

(2) Improperly, and with intent to deceive, establishing status as a small entity, or paying fees as a small entity, shall be considered as a fraud practiced or attempted on the Office.

37 CFR 1.4. Nature of correspondence and signature requirements.

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**> (d)(4) Certifications. (i) Section 10.18 certifications: The

presentation to the Office (whether by signing, filing, submitting, or later advocating) of any paper by a party, whether a practitioner or non-practitioner, constitutes a certification under § 10.18(b) of this chapter. Violations of § 10.18(b)(2) of this chapter by a party, whether a practitioner or non-practitioner, may result in the impo- sition of sanctions under § 10.18(c) of this chapter. Any practitio- ner violating § 10.18(b) of this chapter may also be subject to disciplinary action. See §§ 10.18(d) and 10.23(c)(15) of this chap- ter.

(ii) Certifications as to the signature: (A) Of another: A person submitting a document signed by another under para- graphs (d)(2) or (d)(3) of this section is obligated to have a reason- able basis to believe that the person whose signature is present on

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the document was actually inserted by that person, and should retain evidence of authenticity of the signature.

(B) Self certification: The person inserting a signa- ture under paragraphs (d)(2) or (d)(3) of this section in a docu- ment submitted to the Office certifies that the inserted signature appearing in the document is his or her own signature.

(C) Sanctions: Violations of the certifications as to the signature of another or a person’s own signature, set forth in paragraphs (d)(4)(ii)(A) and (B) of this section, may result in the imposition of sanctions under § 10.18(c) and (d) of this chapter.<

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37 CFR 10.18. Signature and certificate for correspondence filed in the Patent and Trademark Office.

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(b) By presenting to the Office (whether by signing, filing, submitting, or later advocating) any paper, the party presenting such paper, whether a practitioner or non-practitioner, is certifying that—

(1) All statements made therein of the party’s own knowl- edge are true, all statements made therein on information and belief are believed to be true, and all statements made therein are made with the knowledge that whoever, in any matter within the jurisdiction of the Patent and Trademark Office, knowingly and willfully falsifies, conceals, or covers up by any trick, scheme, or device a material fact, or makes any false, fictitious or fraudulent statements or representations, or makes or uses any false writing or document knowing the same to contain any false, fictitious or fraudulent statement or entry, shall be subject to the penalties set forth under 18 U.S.C. 1001, and that violations of this paragraph may jeopardize the validity of the application or document, or the validity or enforceability of any patent, trademark registration, or certificate resulting therefrom; and

(2) To the best of the party’s knowledge, information and belief, formed after an inquiry reasonable under the circum- stances, that —

(i) The paper is not being presented for any improper purpose, such as to harass someone or to cause unnecessary delay or needless increase in the cost of prosecution before the Office;

(ii) The claims and other legal contentions therein are warranted by existing law or by a nonfrivolous argument for the extension, modification, or reversal of existing law or the estab- lishment of new law;

(iii) The allegations and other factual contentions have evidentiary support or, if specifically so identified, are likely to have evidentiary support after a reasonable opportunity for further investigation or discovery; and

(iv) The denials of factual contentions are warranted on the evidence, or if specifically so identified, are reasonably based on a lack of information or belief.

*****

In order to establish small entity status for the pur- pose of paying small entity fees, any party (person, small business concern or nonprofit organization)

must make an assertion of entitlement to small entity status in the manner set forth in 37 CFR 1.27(c)(1) or (c)(3), in the application or patent in which such small entity fees are to be paid. Under 37 CFR 1.27, as long as all of the rights remain in small entities, the fees established for a small entity can be paid. This includes circumstances where the rights were divided between a person, a small business concern, and a nonprofit organization, or any combination thereof.

Under 37 CFR 1.4(d)(*>4<), an assertion of entitle- ment to small entity status, including the mere pay- ment of an exact small entity basic filing fee, inherently contains a certification under 37 CFR 10.18(b). It is not required that an assertion of entitle- ment to small entity status be filed with each fee paid. Rather, once status as a small entity has been estab- lished in an application or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due. 37 CFR 1.27(g)(1). Notification of a loss of entitlement to small entity status must be filed in the application or patent prior to paying, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. 37 CFR 1.27(g)(2).

Status as a small entity may be established in a pro- visional application by complying with 37 CFR 1.27.

Status as a small entity must be specifically estab- lished in each application or patent in which the status is available and desired. Status as a small entity in one application or patent does not affect any other applica- tion or patent, including applications or patents which are directly or indirectly dependent upon the applica- tion or patent in which the status has been established. The filing of an application under 37 CFR 1.53 as a continuation-in-part, continuation or division (includ- ing a continued prosecution application under 37 CFR 1.53(d)), or the filing of a reissue application requires a new assertion as to continued entitlement to small entity status for the continuing or reissue application. Submission of a request for continued examination (RCE) under 37 CFR 1.114 does not require a new determination or assertion of entitlement to small entity status since it is not a new application.

Examiners may use the following form paragraph to notify applicant that he or she may qualify for small entity status.

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¶ 5.05 Small Entity Status This application may qualify for “Small Entity Status” and,

therefore, applicant may be entitled to the payment of reduced fees. In order to establish small entity status for the purpose of paying small entity fees, applicant must make a determination of entitlement to small entity status under 37 CFR 1.27(f) and make an assertion of entitlement to small entity status in the manner set forth in 37 CFR 1.27(c)(1) or 37 CFR 1.27(c)(3). Accordingly, if applicant meets the requirements of 37 CFR 1.27(a), applicant must submit a written assertion of entitlement to small entity sta- tus under 37 CFR 1.27(c) before fees can be paid in the small entity amount. See 37 CFR 1.27(d). The assertion must be signed, clearly identifiable, and convey the concept of entitlement to small entity status. See 37 CFR 1.27(c)(1). No particular form is required.

I. ASSERTION BY WRITING

Small entity status may be established by the sub- mission of a simple written assertion of entitlement to small entity status. The assertion must be signed, clearly identifiable, and convey the concept of entitlement to small entity status. 37 CFR 1.27(c)(1). The written assertion is not required to be presented in any particular form. Written assertions of small entity status or references to small entity fees will be liber- ally interpreted to represent the required assertion. The written assertion can be made in any paper filed in or with the application and need be no more than a simple sentence or a box checked on an application transmittal letter.

Practitioners may continue to use former USPTO forms or similar forms if they believe such small entity forms serve an educational purpose for their cli- ents.

II. PARTIES WHO CAN ASSERT AND SIGN AN ENTITLEMENT TO SMALL ENTITY STATUS BY WRITING

The parties who can assert entitlement to small entity status by writing include all parties permitted by 37 CFR 1.33(b) to file a paper in an application, including a registered practitioner. 37 CFR 1.27(c)(2)(i). Additionally, one of the individuals identified as an inventor, or a partial assignee, can also sign the written assertion. 37 CFR 1.27(c)(2)(ii) and (iii). By way of example, in the case of three pro se inventors for a particular application, one of the three inventors upon filing the application can submit a written assertion of entitlement to small entity status

and thereby establish small entity status for the appli- cation, (but see paragraph VI. below). Where rights are divided between a person, small business concern, and nonprofit organization, or any combination thereof, only one party is required to assert small entity status. For example, where one of two inventors has assigned his or her rights in the invention, it is suf- ficient if either of the two inventors or the assignee asserts entitlement to small entity status.

Any inventor is permitted to submit a written asser- tion of small entity status, including individuals iden- tified as inventors but who are not officially named of record as an executed oath or declaration under 37 CFR 1.63 has not yet been submitted. See 37 CFR 1.41(a)(1). Where an application is filed without an executed oath or declaration pursuant to 37 CFR 1.53(f), the Office will accept the written assertion of an individual who has merely been identi- fied as an inventor on filing of the application (e.g., application transmittal letter) as opposed to having to be named as an inventor by the filing of an executed oath or declaration under 37 CFR 1.63 (37 CFR 1.41(a)(1)). 37 CFR 1.4(d)(*>4<) and 37 CFR 10.18(b) are seen as sufficient basis to permit any individual to provide a written assertion so long as the individual identifies himself or herself as an inventor. An actual inventor who has not been identified as an inventor (e.g., by way of application transmittal letter) or named as an inventor (i.e., executed 37 CFR 1.63 oath or declaration) in the file record may not file a written assertion as to small entity entitlement.

Where an oath or declaration under 37 CFR 1.63 is later filed, any original written assertion as to small entity status (which has been previously appropriately submitted to the Office) will remain unless changed by an appropriate party under 37 CFR 1.27(g)(2). Where a later-filed oath or declaration under 37 CFR 1.63 sets forth an inventive entity that does not include the person who initially was identified as an inventor and who asserted small entity status, small entity status will also remain.

An assignee asserting small entity status is not required to submit a 37 CFR 3.73(b) certification whether the assignee is a partial assignee or an assignee of the entire right, title, and interest, (but see paragraph III. below).

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III. PARTIES WHO CAN FILE THE WRITTEN ASSERTION ONCE SIGNED

A distinction exists as to who can file a written assertion of entitlement to small entity status once the written assertion is signed. 37 CFR 1.27(c)(2)(ii) and 37 CFR 1.33(b) permit one of several inventors to file as well as to sign a written assertion. The same is not true for a partial assignee. 37 CFR 1.27(c)(2)(iii). While a partial assignee may sign a written assertion, the written assertion must be filed by an appropriate party under 37 CFR 1.33(b).

IV. ASSERTION BY PAYMENT OF SMALL ENTITY BASIC FILING OR BASIC NATIONAL FEE

The payment of an exact small entity basic filing (37 CFR 1.16(a), (*>b<), (*>c<), (*>d<), or (*>e<)) or basic national fee (37 CFR 1.492(a)**) is also con- sidered to be a sufficient assertion of entitlement to small entity status. 37 CFR 1.27(c)(3). An applicant filing a patent application and paying an exact small entity basic filing or basic national fee automatically establishes small entity status for the application even without any other assertion of small entity status. This is so even if an applicant inadvertently selects the wrong type of small entity basic filing or basic national fee for the application being filed (e.g., the exact small entity basic filing fee for a design applica- tion is selected but the application is a utility applica- tion). If small entity status was not established when the basic filing or basic national fee was paid, such as by payment of a *>non-small< entity basic filing or basic national fee, a later claim to small entity status requires a written assertion under 37 CFR 1.27(c)(1). Payment of a small entity fee other than a small entity basic filing or basic national fee (e.g., extension of time fee, or issue fee) without inclusion of a written assertion is not sufficient.

Even though applicants can assert small entity sta- tus only by payment of an exact small entity basic fil- ing or basic national fee, the Office encourages applicants to also file a written assertion of small entity status as well as to pay the exact amount of the small entity basic filing or basic national fee. The Office’s application transmittal forms include a check box that can be used to submit a written assertion of small entity status. A written assertion will provide small entity status should applicant fail to pay the

exact small entity basic filing or basic national fee. The provision providing for small entity status by payment of an exact small entity basic filing or basic national fee is intended to act as a safety net to avoid possible financial loss to inventors or small busi- nesses that qualify for small entity status.

Even though small entity status is accorded where the wrong type of small entity basic filing fee or basic national fee is selected but the exact amount of the fee is paid, applicant still needs to pay the correct small entity amount for the basic filing or basic national fee where selection of the wrong type of fee results in a deficiency. While an accompanying general authori- zation to charge any additional fees suffices to pay the balance due of the proper small entity basic filing or basic national fee, specific authorizations to charge fees under 37 CFR 1.17 or extension of time fees do not suffice to pay any balance due of the proper small entity basic filing or basic national fee because they do not actually authorize payment of small entity amounts. If payment is attempted of the proper type of basic filing or basic national fee (applicant correctly identifies the type of fee for the type of application being filed), but the amount of the fee paid is not the exact small entity fee required (an incorrect fee amount is supplied) and a written assertion of small entity status is not present, small entity status will not be accorded. The Office will mail a notice of insuffi- cient basic filing or basic national fee with a surcharge due if an authorization to charge the basic filing or basic national fee is not present. The Office does not consider a basic filing or basic national fee submitted in an amount above the correct fee amount, but below the non-small entity fee amount, as a request to estab- lish small entity status unless an additional written assertion is also present. The submission of a basic fil- ing or basic national fee below the correct fee amount also does not serve to establish small entity status.

Where an application is originally filed by a party, who is in fact a small entity, with an authorization to charge fees (including basic filing or national fees) and there is no indication (assertion) of entitlement to small entity status present, that authorization is not sufficient to establish small entity status unless the authorization is specifically directed to small entity basic filing or basic national fees. The general autho- rization to charge fees will continue to be acted upon immediately and the full (not small entity) basic filing

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or basic national fees will be charged. Applicant will have three months under 37 CFR 1.28 to request a refund by asserting entitlement to small entity status. This is so even if the application is a continuing appli- cation where small entity status had been established in the prior application.

V. PARTIES WHO CAN ASSERT AND FILE SMALL ENTITY STATUS BY PAYMENT

Where small entity status is sought by way of pay- ment of the basic filing or basic national fee, any party (including a third party), may submit payment, such as by check, and small entity status will be accorded.

VI. CONTINUED OBLIGATIONS FOR THOROUGH INVESTIGATION OF SMALL ENTITY STATUS

While small entity status is not difficult to obtain, it should be clearly understood that applicants need to do a complete and thorough investigation of all facts and circumstances before making a determination of actual entitlement to small entity status. 37 CFR 1.27(f). Where entitlement to small entity status is uncertain, it should not be claimed.

The assertion of small entity status (even by mere payment of the exact small entity basic filing fee) is not appropriate until such an investigation has been completed. For example, where there are three pro se inventors, before one of the inventors pays the small entity basic filing or basic national fee to estab- lish small entity status, the single inventor asserting entitlement to small entity status should check with the other two inventors to determine whether small entity status is appropriate.

If small entity status is desired on the basis that the entity is a small business concern, the investigation should include a review of whether the business is a small business concern as defined by section 3 of the Small Business Act (Public Law 85-536 as amended by Public Law 106-50). Review of whether the busi- ness concern meets the >size< standards set forth in 13 CFR **>121.801 through 121.805< to be eligible for reduced patent fees is also appropriate. Addition- ally, if the business has assigned, granted, conveyed or licensed (or is under an obligation to do so) any rights in the invention to others directly or indirectly, the same review for each other entity would also be appropriate.

Furthermore, once status as a small entity has been established in an application, a new determination of entitlement to small entity status is needed (1) when the issue fee is due and (2) when any maintenance fee is due. It should be appreciated that the costs incurred in appropriately conducting the initial and subsequent investigations may outweigh the benefit of claiming small entity status. For some applicants it may be desirable to file as a *>non-small< entity (by not fil- ing a written assertion of small entity status and by submitting *>non-small< entity fees) rather than undertaking the appropriate investigations which may be both difficult and time-consuming and which may be cost effective only where several applications are involved.

The intent of 37 CFR 1.27 is that the person making the assertion of entitlement to small entity status is the person in a position to know the facts about whether or not status as a small entity can be properly estab- lished. That person, thus, has a duty to investigate the circumstances surrounding entitlement to small entity status to the fullest extent. It is important to note that small entity status must not be claimed unless the per- son or persons can unequivocally make the required self-certification.

The U.S. Patent and Trademark Office does not give advisory opinions as to whether or not a specific individual or organization qualifies as a small entity. In establishing reduced fees for persons, small busi- ness concerns, and nonprofit organizations, the Con- gressional consideration of the legislation which became Public Law 97-247 indicated an intent that the U.S. Patent and Trademark Office rely exclusively on a self-certification that a patent applicant qualifies as an independent inventor (now person), small busi- ness concern, or nonprofit organization. In addition, it was also stated during Congressional consideration of the legislation that no additional resources would be required to administer the system whereby fees would be reduced for small entities.

In view of the intent expressed during Congres- sional consideration of the legislation, it would be inappropriate for the U.S. Patent and Trademark Office to give advisory opinions as to entitlement to small entity status. Accordingly, any individual seek- ing to establish status as a small entity for purposes of paying the fee in an application or patent must file the

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assertion required by 37 CFR 1.27 and in so doing is self-certifying entitlement to small entity status.

Consistent with 37 CFR 1.4(d)(*>4<), the payment of a small entity basic filing or national fee constitutes a certification under 37 CFR 10.18(b). Thus, a simple payment of the small entity basic filing or basic national fee, without a specific written assertion, acti- vates the provisions of 37 CFR 1.4(d)(*>4<) and, by that, invokes the self-certification requirement set forth in 37 CFR 10.18(b), regardless of whether the party is a practitioner or non-practitioner.

VII. REMOVAL OF STATUS

Once small entity status is established in an appli- cation or patent, fees as a small entity may thereafter be paid in that application or patent without regard to a change in status until the issue fee is due or any maintenance fee is due. 37 CFR 1.27(g)(1). 37 CFR 1.27(g)(2) requires that notification of any change in status resulting in loss of entitlement to small entity status be filed in the application or patent prior to pay- ing, or at the time of paying, the earliest of the issue fee or any maintenance fee due after the date on which status as a small entity is no longer appropriate. 37 CFR 1.27(g)(2) also requires that the notification of loss of entitlement to small entity status be in the form of a specific written assertion to that extent, rather than only payment of a *>non-small< entity fee. For example, when paying the issue fee in an application that has previously been accorded small entity status and the required new determination of continued entitlement to small entity status reveals that status has been lost, applicant should not just sim- ply pay the *>non-small entity< issue fee or cross out the recitation of small entity status on Part B of the Notice of Allowance and Fee(s) Due (PTOL-85), but should **>(A) check the appropriate box on Part B of the PTOL-85 form to indicate that there has been a change in entity status and applicant is no longer claiming small entity status, and (B) pay the fee amount for a non-small entity.<

For correcting errors in small entity status, see paragraph X below.

VIII. IMPROPERLY ESTABLISHING SMALL ENTITY STATUS

37 CFR 1.27(h) indicates that any attempt to fraud- ulently establish status as a small entity or pay fees as

a small entity will be considered as a fraud practiced or attempted on the Office. Applicants should not rely on any oral advice inadvertently given by an Office employee as to entitlement to small entity status. In addition, improperly and with intent to deceive estab- lishing status as a small entity or paying fees as a small entity will be considered as a fraud practiced or attempted on the Office. Normally, the Office will not question a claim to status as a small entity.

IX. REFUNDS BASED ON LATER ESTAB- LISHMENT OF SMALL ENTITY STATUS

37 CFR 1.28. Refunds when small entity status is later established; how errors in small entity status are excused.

(a) Refunds based on later establishment of small entity sta- tus. A refund pursuant to § 1.26, based on establishment of small entity status, of a portion of fees timely paid in full prior to estab- lishing status as a small entity may only be obtained if an assertion under § 1.27(c) and a request for a refund of the excess amount are filed within three months of the date of the timely payment of the full fee. The three-month time period is not extendable under § 1.136. Status as a small entity is waived for any fee by the failure to establish the status prior to paying, at the time of paying, or within three months of the date of payment of, the full fee.

(b) Date of payment. (1) The three-month period for requesting a refund, pur-

suant to paragraph (a) of this section, starts on the date that a full fee has been paid;

(2) The date when a deficiency payment is paid in full determines the amount of deficiency that is due, pursuant to para- graph (c) of this section.

*****

37 CFR 1.28(a) provides a three-month time period for requesting a refund of a portion of a *>non-small< entity fee based on later establishment of small entity status. The start date of the three-month refund period of 37 CFR 1.28(a) is the date the full fee has been paid. See 37 CFR 1.28(b)(1). Payment by authoriza- tion to charge a deposit account is treated for refund purposes the same as payments by other means (e.g., check or credit card authorizations), with each being treated as paid (for refund purposes) on the date of receipt in the Office as defined by 37 CFR 1.6. Thus, the date of receipt of an authorization to charge fees starts the three-month period for refunds under 37 CFR 1.28(a), not the date of debit of the fee to a deposit account. If a payment is mailed with a Certifi- cate of Mailing under 37 CFR 1.8, the three month period for requesting a refund will start on the actual date of receipt of the payment in the Office, and not

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the Certificate of Mailing date. If a payment is filed by Express Mail under 37 CFR 1.10, the date of deposit with the United States Postal Service (shown by the “date-in” on the Express Mail mailing label or other official USPS notation) is the date of receipt of the payment by the Office under 37 CFR 1.10(a) and the three month period for requesting a refund starts on the date shown by the “date-in” on the Express Mail mailing label rather than the date when the pay- ment actually reaches the Office.

Request for refunds, along with the assertions under 37 CFR 1.27(c), should be addressed to Mail Stop 16, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.

X. CORRECTING ERRORS IN SMALL ENTITY STATUS

37 CFR 1.28. Refunds when small entity status is later established; how errors in small entity status are excused.

*****

(c) How errors in small entity status are excused. If status as a small entity is established in good faith, and fees as a small entity are paid in good faith, in any application or patent, and it is later discovered that such status as a small entity was established in error, or that through error the Office was not notified of a loss of entitlement to small entity status as required by § 1.27(g)(2), the error will be excused upon: compliance with the separate sub- mission and itemization requirements of paragraphs (c)(1) and (c)(2) of this section, and the deficiency payment requirement of paragraph (c)(2) of this section:

(1) Separate submission required for each application or patent. Any paper submitted under this paragraph must be limited to the deficiency payment (all fees paid in error), required by paragraph (c)(2) of this section, for one application or one patent. Where more than one application or patent is involved, separate submissions of deficiency payments (e.g., checks) and itemiza- tions are required for each application or patent. See § 1.4(b).

(2) Payment of deficiency owed. The deficiency owed, resulting from the previous erroneous payment of small entity fees, must be paid.

(i) Calculation of the deficiency owed. The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. The total deficiency payment owed is the sum of the individual defi- ciency owed amounts for each fee amount previously erroneously paid as a small entity. Where a fee paid in error as a small entity was subject to a fee decrease between the time the fee was paid in error and the time the deficiency is paid in full, the deficiency owed is equal to the amount (previously) paid in error;

(ii) Itemization of the deficiency payment. An itemiza- tion of the total deficiency payment is required. The itemization must include the following information:

(A) Each particular type of fee that was erroneously paid as a small entity, (e.g., basic statutory filing fee, two-month extension of time fee) along with the current fee amount for a non- small entity;

(B) The small entity fee actually paid, and when. This will permit the Office to differentiate, for example, between two one-month extension of time fees erroneously paid as a small entity but on different dates;

(C) The deficiency owed amount (for each fee erro- neously paid); and

(D) The total deficiency payment owed, which is the sum or total of the individual deficiency owed amounts set forth in paragraph (c)(2)(ii)(C) of this section.

(3) Failure to comply with requirements. If the require- ments of paragraphs (c)(1) and (c)(2) of this section are not com- plied with, such failure will either: be treated as an authorization for the Office to process the deficiency payment and charge the processing fee set forth in § 1.17(i), or result in a requirement for compliance within a one-month non-extendable time period under § 1.136(a) to avoid the return of the fee deficiency paper, at the option of the Office.

(d) Payment of deficiency operates as notification of loss of status. Any deficiency payment (based on a previous erroneous payment of a small entity fee) submitted under paragraph (c) of this section will be treated under § 1.27(g)(2) as a notification of a loss of entitlement to small entity status.

*****

37 CFR 1.28(c) provides that if small entity status is established in good faith and the small entity fees are paid in good faith, and it is later discovered that such status as a small entity was established in error or through error the Office was not notified of a change of status, the error will be excused upon com- pliance with the separate submission and itemization requirements of 37 CFR 1.28(c)(1) and (c)(2), and the deficiency payment requirement of 37 CFR 1.28(c)(2). The deficiency amount owed under 37 CFR 1.28(c) is calculated using the date on which the deficiency was paid in full. See 37 CFR 1.28(b)(2).

37 CFR 1.28(c)(1) requires that a deficiency paper be limited to one application or patent file. Where, for example, the same set of facts has caused errors in payment in more than one application and/or patent file, a separate paper must be submitted in each file for which an error is to be excused.

37 CFR 1.28(c)(2) requires that for each fee that was erroneously paid as a small entity, the deficien- cies owed must be paid, and the payment of the defi-

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ciencies must be itemized. The deficiency owed for each previous fee erroneously paid as a small entity is the difference between the current fee amount (for other than a small entity) on the date the deficiency is paid in full and the amount of the previous erroneous (small entity) fee payment. Where there has been a fee decrease, the deficiency owed is equal to the amount (previously) paid in error, not the difference between the amount (previously) paid in error and the new lower *>non-small< entity fee. 37 CFR 1.28(c)(2)(ii) requires the following itemizations: (A) the particular fee involved (e.g., basic filing fee, extension of time fee); (B) the small entity fee amount actually paid and when (for example, distinguishing between two one- month extension of time fees erroneously paid on two different dates); (C) the actual deficiency owed for each fee previously paid in error; and (D) the total deficiency owed (i.e., the sum of the individual defi- ciencies owed).

Under 37 CFR 1.28(c)(3), the failure to comply with the requirements of 37 CFR 1.28(c)(1) and (c)(2) permits the Office at its option to either charge a pro- cessing fee (37 CFR 1.17(i)) to process the paper or require compliance within a one-month non-extend- able time period to avoid return of the paper.

Any paper submitted under 37 CFR 1.28(c) is treated as a notification of loss of small entity status under 37 CFR 1.27(g)(2). See 37 CFR 1.28(d).

A maintenance fee improperly paid as a small entity where small entity status has been established but is no longer appropriate will be treated as a matter under 37 CFR 1.28(c) and will not be considered to involve expiration of the patent under 37 CFR 1.378. On the other hand, payment of a maintenance fee in the small entity amount where small entity status has not been established would result in the expiration of the patent under 37 CFR 1.378 unless the full mainte- nance fee due or a written assertion of small entity status is timely filed.

510 U.S. Patent and Trademark Office Business Hours [R-3]

The U.S. Patent and Trademark Office >(USPTO or Office)< working hours are 8:30 a.m. to 5:00 p.m., Monday through Friday, excluding Federal holidays in the District of Columbia. Outside these hours, only **>USPTO< employees are authorized to be in areas

of the **>USPTO< other than the Public Search Rooms.

The hours for the **>Public Search Facility in Alexandria< are 8:00 a.m. to 8:00 p.m., and the hours for the Trademark **>Paper Facility in Arlington< are 8:00 a.m. to *>5:00< p.m., Monday through Fri- day, excluding Federal holidays in the District of Columbia.

During working hours, all applicants, attorneys, and other members of the public should announce their presence to the Office personnel in the area of their visit. In the Technology Centers (TCs), visitors should inform the TC receptionist of their presence before visiting other areas of the TC. >

I. < FILING OF PAPERS DURING UN- SCHEDULED CLOSINGS OF THE U.S. PATENT AND TRADEMARK OFFICE

37 CFR 1.9(h) provides that the definition of “Fed- eral holiday within the District of Columbia” includes an official closing of the Office. When the entire **>USPTO< is officially closed for business for an entire day, for reasons due to adverse weather or other causes, the Office will consider each such day a “Fed- eral holiday within the District of Columbia” under 35 U.S.C. 21. Any action or fee due on such a day may be taken, or fee paid, on the next succeeding business day the Office is open. In addition, 37 CFR 1.6(a)(1) provides “[t]he Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the District of Columbia” to clarify that any day that is a Saturday, Sunday or Federal holiday within the District of Columbia is a day that the **>USPTO< is not open for the filing of applications within the meaning of Article 4(C)(3) of the Paris Convention. Note further that in accordance with 37 CFR 1.6(a)(2), even when the Office is not open for the filing of correspondence on any day that is a Saturday, Sunday or Federal holiday within the Dis- trict of Columbia, correspondence deposited as Express Mail with the United States Postal Service in accordance with 37 CFR 1.10 will be considered filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or Federal holiday within the District of Columbia (under 35 U.S.C. 21(b) or 37 CFR 1.7).

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When the **>USPTO< is open for business during any part of a business day between 8:30 a.m. and 5:00 p.m., papers are due on that day even though the Office may be officially closed for some period of time during the business day because of an unsched- uled event. The procedures of 37 CFR 1.10 may be used for filing applications.

Information regarding whether or not the Office is officially closed on any particular day may be obtained by calling **>1-800-PTO(786)-9199 or (571) 272-1000<.

Effective November 29, 1999, Public Law 106-113 amended 35 U.S.C. 119(e)(3) to extend the period of pendency of a provisional application to the next suc- ceeding business day if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the Dis- trict of Columbia. 35 U.S.C. 119(e)(3) as amended by Public Law 106-113 applies to any provisional appli- cations filed on or after June 8, 1995 but has no effect on any patent which is the subject of litigation in an action commenced before November 29, 1999. See also 37 CFR 1.7(b).

New patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as “Express Mail” with the United States Postal Service. For example, if a new patent application is deposited in “Express Mail” in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the cor- respondence with the Saturday date. 37 CFR 1.6(a)(2). >

II. < REGULATIONS FOR THE PUBLIC USE OF RECORDS IN THE PATENT SEARCH ROOM OF THE **>USPTO<

The **>USPTO< has established procedures and regulations for using the facilities of the Patent Search Room. The procedures for the Search Room include the requirement that users obtain and show, prior to entering the Search Room facilities, a User Pass. This pass can be obtained **>from the Office of Security next door to the Public Search Facility located on the first floor of the Madison East Building, 600 Dulany Street, Alexandria, VA 22314.< User Passes will be issued to persons not under prohibition from using the

search facilities who sign an application form and acknowledge receipt of a copy of the noted regula- tions. User Passes are nontransferable and are valid until reissue or revocation for cause. Office employ- ees must show their building pass in order to enter the Patent Search Room. >An On-line Service Card is required for access to all Public Search Facilities and on-line systems. On-line Service Cards are obtained at the Public Search Facility Receptionist Desk on a user’s first visit.<

Persons exiting the Search Room will automatically pass electronic sensing equipment designed to detect any marked documents or materials being removed from the Search Room. The sensing equipment is capable of detecting marked documents and materials in briefcases and parcels and under clothing. The equipment does not use X-ray or other high energy radiation and is, therefore, completely safe and harm- less to persons, photographic film, magnetic tape, and electronic or mechanical devices such as wrist watches.

Whenever a marked document is transported past the sensing equipment, U.S. Patent and Trademark Office officials and the security guards will be alerted to the removal of the document. Persons triggering the alarm will be asked to cooperate in identifying the source for the alarm. Failure to cooperate when the alarm is triggered could result in detention of the per- son, seizure of any briefcase or the like, or other legal measures deemed necessary and appropriate in the specific case.

The regulations for the Search Room are reprinted in a regulation brochure. It is available in the Search Room. In order to maintain an environment conducive to search, the regulations will be strictly enforced.

Although these procedures and regulations may cause some inconvenience, it is hoped that with understanding and cooperation they will result in improvement in search facilities which will benefit all participants in the U.S. patent system.

Persons violating the regulations may be denied the use of the facilities in the Patent Search Room, and may further be subjected to prosecution under the Criminal Code. Additionally, the name of any person violating these regulations who is registered to prac- tice before the ** Office may be forwarded to the Office of Enrollment and Discipline for appropriate action under 37 CFR Part 10.

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>

III. < USE OF TECHNOLOGY CENTER FA- CILITIES

**Regulations appearing below were established for those authorized members of the public using the facilities of the TCs. **>

IV. < REGULATIONS FOR USERS OF THE TECHNOLOGY CENTER * FACILITIES

(A) TC facilities are defined as those areas in **>Carlyle (Alexandria, VA)< where the TCs are located.

(B) The use of the TC facilities ** is strictly lim- ited to ** the regular business >hours< of **>the USPTO,< between the hours of 8:45 a.m. and 4:45 p.m. on regular business days.

(C) Authorized Officials, under these regulations, include Supervisory Patent Examiners and TC Direc- tors.

(D) Under applicable statutes and regulations, including 40 U.S.C. 486(c); 41 CFR Subpart 101- 20.3; and appropriate Sections of Department Organi- zation Orders 30-3A and 30-3B of the Department of Commerce, the regulations appearing below are established for those members of the public using the TC Facilities.

(1) All persons using these facilities are sub- ject to the Regulations Governing Conduct on Federal Property, as specified in 41 CFR Subpart 101-20.3.

(2) All posted Official Notices are to be com- plied with.

(3) A valid User Pass must be prominently dis- played when * in the TC Facilities. User Passes are nontransferable and must be surrendered upon request to authorized officials.

(4) All persons holding User Passes must reg- ister with the TC Receptionist, unless otherwise directed, in each TC **.

(5) No * records, or other documents of the **>USPTO< shall be removed from the TC Facilities except by express written authorization by an autho- rized official in the TC where the material resides. **

(6) Smoking is not permitted except in desig- nated areas.

(7) No food or beverages in any form are to be consumed except in designated areas.

(8) Loud talking, use of radios, and any other form of activity which may disturb other members of the public or **>Office< personnel are forbidden.

(9) Children brought into the TC Facilities must not be allowed to disturb others.

(10) The presence or use of equipment such as dictation equipment, reproducing machines, typewrit- ers, and photographic equipment is prohibited without prior permission from an authorized official in the TC where the use is intended and then is permitted where its use does not conflict with regulation (8) above.

(11) **All packages, briefcases, or other per- sonal effects brought into the TC Facilities are subject to search by authorized officials upon request and must be removed when leaving the TC Facilities.

*> (12)< All verbal requests for compliance with

these regulations or other posted **>USPTO< Notices pertaining to activity in the TC Facilities, when made by authorized officials, must be promptly complied with.

(E) Persons violating these regulations may be denied the use of the facilities in the TC and Patent Search Room, and may further be subject to prosecu- tion under the Criminal Code. Additionally, the name of any person violating these regulations who is regis- tered to practice before the **>USPTO< may be for- warded to the Office of Enrollment and Discipline for appropriate action under 37 CFR Part 10.

If any individual is observed in violation of any of the regulations, immediate compliance should be courteously requested. If a verbal request is not com- plied with, a note should be made of the individual’s name and User’s Pass number, if possible (the User’s Pass is required to be prominently displayed) and a report of the incident should be made to the Supervi- sory Patent Examiner, Supervisory Applications Examiner, or other appropriate supervisor who will take further action.

In addition, if any individual in **>TC Facilities< appears to be a stranger and is not wearing a User’s Pass, some identification, such as a Building or User’s Pass, should be requested. If the individual refuses, notify a supervisor. Consequently, all Office employ- ees are expected to carry their Building Pass with them at all times**.

Supervisors, when aware of violations of the posted regulations, should prepare a memorandum detailing

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the facts of the incident and forward this memoran- dum to the Deputy Commissioner for Patent Opera- tions via their TC Director. Supervisory Patent Examiners and TC Directors are authorized to demand surrender of User Passes on-the-spot. If the Supervisory Patent Examiner exercises this function, the TC Director should be immediately notified, fol- lowed up by a memorandum as previously set forth.

511 Postal Service Interruptions and Emergencies [R-3]

35 U.S.C. 21. Filing date and day for taking action. (a) The Director may by rule prescribe that any paper or fee

required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was depos- ited with the United States Postal Service or would have been deposited with the United States Postal Service but for postal ser- vice interruptions or emergencies designated by the Director.

*****

**>

37 CFR 1.10. Filing of correspondence by “Express Mail.”

*****

(g) Any person who mails correspondence addressed as set out in § 1.1 (a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS, but has the correspondence returned by the USPS due to an interrup- tion or emergency in “Express Mail” service, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:

(1) The petition is filed promptly after the person becomes aware of the return of the correspondence;

(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”;

(3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon and a copy of the “Express Mail” mailing label showing the “date-in”; and

(4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the corre- spondence and that the correspondence or copy of the correspon- dence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in “Express Mail” service.

(h) Any person who attempts to mail correspondence addressed asset out in § 1.1 (a) to the Office with sufficient post- age utilizing the “Express Mail Post Office to Addressee” service of the USPS, but has the correspondence refused by an employee

of the USPS due to an interruption or emergency in “Express Mail” service, may petition the Director to consider such corre- spondence as filed on a particular date in the Office, provided that:

(1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;

(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by “Express Mail”;

(3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon; and

(4) The petition includes a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be depos- ited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emergency in “Express Mail” service.

(i) Any person attempting to file correspondence under this section that was unable to be deposited with the USPS due to an interruption or emergency in “Express Mail” service which has been so designated by the Director, may petition the Director to consider such correspondence as filed on a particular date in the Office, provided that:

(1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the desig- nated interruption or emergency in “Express Mail” service;

(2) The petition includes the original correspondence or a copy of the original correspondence; and

(3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated inter- ruption or emergency in “Express Mail” service, and that the cor- respondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.<

*****

In the event of a postal interruption or emergency, an announcement will be placed on the USPTO web site at www.uspto.gov >and a notice will be published in the Official Gazette<, providing instructions about the filing of patent applications, and other papers related to patent applications and patents.

37 CFR *>1.10(i)< provides a procedure under which **>applicant may petition the Director to have correspondence (papers and fees) which was unable to be deposited with the United States Postal Service (USPS) because of an interruption or emergency in “Express Mail” service which is so designated by the Director considered as having been filed on a par-

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ticular date in the Office. Authority for such a practice is found in 35 U.S.C. 21(a), as amended by Public Law 97-247. In addition, the Director has des- ignated certain events as a postal service interruption or emergency by rule (37 CFR 1.10(g) and (h)). 37 CFR 1.10(g) provides a procedure under which applicant may petition the Director to have correspon- dence that was returned by the USPS due to an inter- ruption or emergency in “Express Mail” service considered as filed on a particular date in the Office. 37 CFR 1.10(h) provides a procedure under which applicant may petition the Director to have correspon- dence that was refused by an employee of the USPS due to an interruption or emergency in “Express Mail” service considered as filed on a particular date in the Office. For more information on filing a petition under 37 CFR 1.10(g), (h), or (i), see MPEP § 513.<

Applicants are cautioned that the provisions of 35 U.S.C. 21(a) and 37 CFR *>1.10(g) to (i)< only apply to postal interruptions and emergencies. The provisions of 35 U.S.C. 21(a) and 37 CFR *>1.10(g) to (i)< do not provide for granting of a filing date to correspondence as of the date on which it would have been filed but for other exigencies, such as the unavailability of a computer or word processing equipment, or the inaccessibility of an office or build- ing other than a USPS facility. 35 U.S.C. 21(a) requires, in part, that “any paper or fee required to be filed in the Patent and Trademark Office…would have been deposited with the United States Postal Ser- vice but for postal service interruptions or emergen- cies designated by the Director.” The statute requires that the correspondence was complete and ready to be deposited with the USPS on the filing date requested (e.g., complete application papers have been prepared and printed) and that the correspondence could not have been deposited with the USPS on the requested filing date for the sole reason that the postal service was not available due to the interruption or emergency designated by the Office.

In general, applicants should consider filing corre- spondence by facsimile when permitted. See 37 CFR 1.6(d) and MPEP § 502.01. Applicants should also consider filing correspondence with a Certificate of Mailing or a Certificate of Transmission under 37 CFR 1.8 when permitted. See MPEP § 512. Even if the post office is closed due to an emergency, appli- cants should ordinarily be able to deposit correspon-

dence in a mailbox for first class mail. New applications cannot be transmitted by facsimile and are not entitled to the benefit of a Certificate of Trans- mission under 37 CFR 1.8. A request for a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (available only for design applications) may be transmitted to the Office by facsimile (37 CFR 1.6(d)(3)); however, it is not entitled to the benefit of a Certificate of Transmission (see 37 CFR 1.8(a)(2)(i)(A)). The Office strongly recommends that applicants file new applications by “Express Mail” in accordance with 37 CFR 1.10 since such correspon- dence will be accorded the date of deposit in “Express Mail” with the USPS as the filing date. See 37 CFR 1.6(a) and MPEP § 513. Applications that are not filed by “Express Mail” can only be accorded the date of receipt in the Office as the filing date (unless there is a postal interruption or emergency designated by the Office and applicants are instructed to file their applications in a manner other than by “Express Mail”). Any applicant who files an application by first class mail bears the risk of any delay in the delivery of the application to the Office, even if the delay is unusually significant due to some unforeseen event. New patent applications, computer readable format (CRF) biosequence listings, pre-grant publication submissions, and electronic information disclosure statements (e-IDS) may also be submitted to the USPTO via the Internet by using the Electronic Filing System (EFS). Information regarding EFS may be obtained via the USPTO web site at www.uspto.gov/ ebc/efs/index.html.

512 Certificate of Mailing or Transmis- sion [R-3]

37 CFR 1.8. Certificate of mailing or transmission. **> (a) Except in the situations enumerated in paragraph (a)(2)

of this section or as otherwise expressly excluded in this chapter, correspondence required to be filed in the U.S. Patent and Trade- mark Office within a set period of time will be considered as being timely filed if the procedure described in this section is fol- lowed. The actual date of receipt will be used for all other pur- poses.

(1) Correspondence will be considered as being timely filed if:

(i) The correspondence is mailed or transmitted prior to expiration of the set period of time by being:

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(A) Addressed as set out in § 1.1(a) and deposited with the U.S. Postal Service with sufficient postage as first class mail; or

(B) Transmitted by facsimile to the Patent and Trademark Office in accordance with § 1.6(d); and

(ii) The correspondence includes a certificate for each piece of correspondence stating the date of deposit or transmis- sion. The person signing the certificate should have reasonable basis to expect that the correspondence would be mailed or trans- mitted on or before the date indicated.

(2) The procedure described in paragraph (a)(1) of this section does not apply to, and no benefit will be given to a Certifi- cate of Mailing or Transmission on, the following:

(i) Relative to Patents and Patent Applications— (A) The filing of a national patent application spec-

ification and drawing or other correspondence for the purpose of obtaining an application filing date, including a request for a con- tinued prosecution application under § 1.53(d);

(B) [Reserved] (C) Papers filed in contested cases before the Board

of Patent Appeals and Interferences, which are governed by § 41.106 (f) of this title;

(D) The filing of an international application for patent;

(E) The filing of correspondence in an international application before the U.S. Receiving Office, the U.S. Interna- tional Searching Authority, or the U.S. International Preliminary Examining Authority;

(F) The filing of a copy of the international appli- cation and the basic national fee necessary to enter the national stage, as specified in § 1.495(b).

(ii) [Reserved] (iii) Relative to Disciplinary Proceedings—

(A) Correspondence filed in connection with a dis- ciplinary proceeding under part 10 of this chapter.

(B) [Reserved] (b) In the event that correspondence is considered timely

filed by being mailed or transmitted in accordance with paragraph (a) of this section, but not received in the U.S. Patent and Trade- mark Office after a reasonable amount of time has elapsed from the time of mailing or transmitting of the correspondence, or after the application is held to be abandoned, or after the proceeding is dismissed, terminated, or decided with prejudice, the correspon- dence will be considered timely if the party who forwarded such correspondence:

(1) Informs the Office of the previous mailing or trans- mission of the correspondence promptly after becoming aware that the Office has no evidence of receipt of the correspondence;

(2) Supplies an additional copy of the previously mailed or transmitted correspondence and certificate; and

(3) Includes a statement which attests on a personal knowledge basis or to the satisfaction of the Director to the previ- ous timely mailing or transmission. If the correspondence was sent by facsimile transmission, a copy of the sending unit’s report confirming transmission may be used to support this statement.<

(c) The Office may require additional evidence to determine if the correspondence was timely filed.

A suggested format for a Certificate of Mailing and a Certificate of Transmission under 37 CFR 1.8 to be included with the correspondence is reproduced below.

Certificate of Mailing

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:

Commissioner for Patents P.O. Box 1450 Alexandria, Virginia 22313-1450

on ___________. (Date)

Typed or printed name of person signing this certificate

___________________________________________

Signature________________________________________

Certificate of Transmission

I hereby certify that this correspondence is being facsimile trans- mitted to the U.S. Patent and Trademark Office (Fax No. (*>___<)___-____)

on____________. (Date)

Typed or printed name of person signing this certificate

___________________________________________

Signature________________________________________

**>

¶ 5.02 Format of Certificate of Mailing or Transmission The following are suggested formats for either a Certificate of

Mailing or Certificate of Transmission under 37 CFR 1.8(a). The certification may be included with all correspondence concerning this application or proceeding to establish a date of mailing or transmission under 37 CFR 1.8(a). Proper use of this procedure will result in such communication being considered as timely if the established date is within the required period for reply. The Certificate should be signed by the individual actually depositing or transmitting the correspondence or by an individual who, upon information and belief, expects the correspondence to be mailed or transmitted in the normal course of business by another no later than the date indicated.

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Certificate of Mailing

I hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient postage as first class mail in an envelope addressed to:

Commissioner for Patents P.O. Box 1450 Alexandria, VA 22313-1450

on ___________.

(Date)

Typed or printed name of person signing this certificate:

_____________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Certificate of Transmission

I hereby certify that this correspondence is being facsimile transmitted to the United States Patent and Trademark Office, Fax No. (___)_____ -_________ on _____________. (Date)

Typed or printed name of person signing this certificate:

_________________________________________

Signature: ________________________________________

Registration Number: ______________________________

Please refer to 37 CFR 1.6(d) and 1.8(a)(2) for filing limita- tions concerning facsimile transmissions and mailing, respec- tively.

< Under 37 CFR 1.8, a person may state on certain

papers directed to the Office (>some< exceptions are stated in 37 CFR 1.8), the date on which the paper will be deposited in the United States Postal Service or transmitted by facsimile. If the date stated is within the period for reply, the reply in most instances will be considered to be timely. This is true even if the paper does not actually reach the Office until after the end of the period for reply. The Certificate of Mailing proce- dure does not apply to papers mailed in a foreign country.

The Certificate of Transmission procedure, how- ever, also applies to papers transmitted to the Office from a foreign country provided that the correspon-

dence being transmitted is not prohibited from being transmitted by facsimile and is not otherwise pre- cluded from receiving the benefits under 37 CFR 1.8.

It should be noted, however, that the Office will continue its normal practice of stamping the date of receipt (“Office Date” Stamp) on all papers received through the mail or by facsimile except those filed under 37 CFR 1.10 (See MPEP § 513). The date stamped will also be the date which is entered on Office records and from which any subsequent peri- ods are calculated. For example, 37 CFR *>41.37< gives an appellant 2 months from the date of the appeal to file an appeal brief. For example, if the last day to reply to a final rejection was November 10, 1997, and applicant deposited a Notice of Appeal with fee in the U.S. mail on November 10, 1997, and so certified, that appeal is timely even if it was not received in the U.S. Patent and Trademark Office until November 16, 1997. Since the date of receipt will be used to calculate the time at which the brief is due, the brief was due on January 16, 1998. This is 2 months after the Mail Center date.

37 CFR 1.8(a)(2)(i)(A) specifically refers to a request for a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (available only for design applications) as a correspondence filed for the pur- poses of obtaining an application filing date and the procedures and benefit set forth in 37 CFR 1.8(a)(1) are not applicable to a request for a CPA. The date on a certificate of mailing or transmission (37 CFR 1.8(a)) of a CPA is not controlling or even relevant. A CPA filed by facsimile transmission will not be accorded a filing date as of the date on the certificate of transmission unless Office records indicate, or applicant otherwise establishes pursuant to 37 CFR 1.6(f), receipt in the Office of the complete CPA on the date on the certificate of transmission and that date is not a Saturday, Sunday, or Federal holiday within the District of Columbia.

I. PROCEDURE BY APPLICANT

(A) The certification requires a signature. Specifi- cally, if the certification appears on a paper that requires a signature, two signatures are required, one for the paper and one for the certification. Although not specifically required by 37 CFR 1.8, it is preferred that the certificate be signed by the applicant, assignee, or registered practitioner.

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(B) When possible, the certification should appear on a portion of the paper being submitted. However, if there is insufficient space to make the certification on the same paper, the certification should be on a separate sheet securely attached to the paper.

(C) When the certification is presented on a sepa- rate sheet, that sheet must (1) be signed and (2) fully identify and be securely attached to the paper it accompanies. The required identification should include the application number and filing date of the application as well as the type of paper being filed, e.g., reply to rejection or refusal, Notice of Appeal, etc. An unsigned certification will not be considered acceptable.

Moreover, without the proper identifying data, a certification presented on a separate sheet will not be considered acceptable if there is any question or doubt concerning the connection between the sheet and the paper filed.

If the sheet should become detached from the paper and thereafter not associated with the appropri- ate file, evidence that this sheet was received in the Office can be supported by submitting a copy of a postcard receipt specifically identifying this sheet and the paper and by submitting a copy of the sheet as originally mailed. Attention is directed to MPEP § 503 relative to the use of postcards as receipts.

(D) In situations wherein the correspondence includes papers for more than one application (e.g., a single envelope containing separate papers respond- ing to Office actions in different applications) or papers for various parts of the Office (e.g., a patent issue fee transmittal form PTOL-85B and an assign- ment), each paper must have its own certification as a part thereof or attached thereto.

Although Part B of Form PTOL-85, Notice of Allowance and Fee(s) Due, may contain a Certificate of Mailing thereon, a separate Certificate of Mailing is required for all papers included with this form, including *>replacement< drawings. Checks submit- ted with the papers do not require certification.

(E) In situations wherein the correspondence includes several papers directed to the same area of the Office for the same application (for example, a proposed reply under 37 CFR 1.116 and a Notice of Appeal), each paper should have its own certification as a part thereof or attached thereto.

(F) For the purposes of 37 CFR 1.8(a)(1)(i)(A), first class mail is interpreted as including “Express Mail” and “Priority Mail” deposited with the U.S. Postal Service.

Alternatively, the correspondence may be submit- ted with a cover or transmittal letter which itemizes the papers and on which is placed the certificate under 37 CFR 1.8.

II. USE OF STAMPED CERTIFICATION

Some practitioners place the certification language on the first page of a paper with an inked stamp. Such a practice is encouraged because the certification is not only readily visible but also forms an integral part of the paper.

III. OFFICE PROCEDURE

A. Mail Center of the Office of Initial Patent Examination

The Mail Center of the Office of Initial Patent Examination will continue to date stamp the actual date of receipt of all papers received by mail in the Office. No attempt will be made to retain the enve- lopes in which the papers are received or to indicate on the papers the postal cancellation date (postmark).

However, the benefits of 37 CFR 1.8 or 37 CFR 1.10 apply only to documents delivered to the Office by the U.S. Postal Service. A number of instances have been uncovered where individuals are certifying that documents were deposited with the U.S. Postal Service when, in fact, the documents were hand-car- ried or delivered to the Office via commercial couri- ers, e.g., “Federal Express,” “DHL,” “Purolator,” “Air Borne,” “UPS.” In those instances where documents include a Certificate of Mailing under 37 CFR 1.8 or “Express Mail” mailing label (commonly used to comply with 37 CFR 1.10) but were delivered to the Office by other than the U.S. Postal Service, Mail Center personnel are placing a notice indicating that fact on the correspondence involved to alert Office personnel that the benefits of 37 CFR 1.8 or 37 CFR 1.10 do not apply.

B. Processing Areas

When papers are received in a specific location of the Office (e.g., Pre-Grant Publication Division,

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Office of Patent Publication, Office of Petitions - see MPEP § 502 and § 502.01), the date of receipt in the Office is stamped on the papers in accordance with 37 CFR 1.6(a).

The date indicated on the Certificate of Mailing or of Transmission will be used by the Office only to determine if the paper was deposited in the United States Postal Service or transmitted by facsimile within the period for reply. If the paper was actually received in the Office within the period for reply, there is no need to refer to the Certificate. Note how- ever, that 37 CFR 1.6(a)(3) provides that “[c]orre- spondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Sat- urday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sun- day, or Federal holiday within the District of Colum- bia.”

If, however, the paper was received in the U.S. Patent and Trademark Office after the end of the period for reply, the paper should be inspected to determine if a Certificate of Mailing or of Transmis- sion has been included. Where no such Certificate is found, the paper is untimely since applicant did not reply within the period for reply. This may result in abandonment of the application or other loss of rights.

In those instances where a Certificate of Mailing or of Transmission does appear in the paper or a cover letter thereto, a check should be made to determine whether the indicated date of deposit or transmission is within the period for reply. If the date indicated in the Certificate is after the end of the period for reply, the paper is untimely and no notation of the date need be made. Where the date indicated on the Certificate is within the period for reply, the paper should be con- sidered to be timely filed. A notation should be made adjacent to the Office stamp indicating the date of receipt (“Office Date” Stamp) which notes the date stated on the Certificate. This notation should be “C of Mail” or “C of Fax” followed by the date. A paper with a certificate dated November 10, 1997, would be noted next to the “Office Date” Stamp “(C of Mail. 11/10/97).” This notation should also appear on the “Contents” portion of the file wrapper. For Image File Wrapper (IFW) processing, see IFW Manual.

If the period set for taking an action in the U.S. Patent and Trademark Office ends on a Saturday, Sun- day, or Federal holiday within the District of Colum- bia (37 CFR 1.7), the action will be considered to be timely if deposited in the United States mail or trans- mitted by facsimile and certified under 37 CFR 1.8(a) on the next succeeding day which is not a Saturday, Sunday, or a Federal holiday.

It should be noted that the filing of a paper for the purpose of obtaining a continuation or division appli- cation under 37 CFR 1.53(d) (available only for design applications) ** is excluded from the Certifi- cate practice under 37 CFR 1.8(a)(2)(i)(A) since it is considered to be the filing of a national patent appli- cation.

Effective November 29, 1999, Public Law 106-113 amended 35 U.S.C. 119(e)(3) to extend the period of pendency of a provisional application to the next suc- ceeding business day if the day that is 12 months after the filing date of a provisional application falls on a Saturday, Sunday, or Federal holiday within the Dis- trict of Columbia. See also 37 CFR 1.7(b). 35 U.S.C. 119(e)(3) as amended by Public Law 106-113 applies to any provisional applications filed on or after June 8, 1995 but has no effect on any patent which is the subject of litigation in an action commenced before November 29, 1999.

No benefit will be given to a Certificate of Mailing or Transmission relative to the filing of a national patent application specification and drawing or other correspondence for the purpose of obtaining an appli- cation filing date. However, note that new patent applications filed in accordance with 37 CFR 1.10 will be stamped by the Office with the date of deposit as “Express Mail” with the United States Postal Ser- vice. For example, if a new patent application is deposited as “Express Mail” in accordance with 37 CFR 1.10 on a Saturday and the United States Postal Service gives it a date of deposit of Saturday, the Office will accord and stamp the correspondence with the Saturday date. 37 CFR 1.6(a)(2).

All Certificates of Mailing or Transmission filed in applications should be placed in the file wrappers directly below the papers to which they refer. For Image File Wrapper (IFW) processing, see IFW Man- ual.

Office personnel receiving a hand-delivered paper from other than U.S. Postal Service personnel

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should inspect the paper to ensure that the benefits of 37 CFR 1.8 or “Express Mail” benefits under 37 CFR 1.10 are not accorded in error. If the paper contains a certificate of mailing under 37 CFR 1.8 or “Express Mail” mailing label (commonly used to comply with 37 CFR 1.10), the words “HAND DELIVERED” should be written adjacent to the date stamp.

Applicant should be notified in the next Office action when a paper containing a Certificate of Mail- ing has been denied the benefits under 37 CFR 1.8 or a paper containing an “Express Mail” mailing label (commonly used to comply with 37 CFR 1.10) is denied benefits under 37 CFR 1.10 by including, for example, form paragraph 5.04.

¶ 5.04 Benefit of Certificate of Mailing Denied The [1] filed [2] is not entitled to the benefits of 37 CFR 1.[3]

since it was not deposited with the U. S. Postal Service for deliv- ery to the U.S. Patent and Trademark Office. Therefore, the date of receipt in the U.S. Patent and Trademark Office has been used to determine the timeliness of the paper.

Examiner Note: 1. This form paragraph is to be used in those situations where correspondence contains a Certificate of Mailing under 37 CFR 1.8 or requests the benefit of “Express Mail” under 37 CFR 1.10, but the correspondence was not actually deposited with the U. S. Postal Service. 2. In bracket 3, insert --8-- or --10--, as appropriate.

Misuse of a Certificate of Mailing under 37 CFR 1.8 or improperly claiming the benefit of 37 CFR 1.10 which appears to be more than a one-time, inadvertent error should be brought to the attention of the Office of Enrollment and Discipline.

IV. ORIGINAL MAILED PAPER NOT DELIV- ERED

Paragraphs (b) and (c) of 37 CFR 1.8 concern the situation where a paper containing a Certificate was timely deposited in the U.S. mail or transmitted by facsimile, but never received by the U.S. Patent and Trademark Office. In the TCs, all submissions under these paragraphs should be considered and the suffi- ciency thereof determined by the TC Director. The statement required by 37 CFR 1.8(b)(3) is no longer required to be verified.

>37 CFR 1.8(b) permits a party to notify the Office of a previous mailing, or transmitting, of correspon- dence when a reasonable amount of time has elapsed from the time of mailing or transmitting of the corre-

spondence. In the event that correspondence may be considered timely filed because it was mailed or transmitted in accordance with 37 CFR 1.8(a), but was not received in the Office after a reasonable amount of time has elapsed, (e.g., more than one month from the time the correspondence was mailed), applicant is not required to wait until the end of the maximum extendable period for reply set in a prior Office action (for the Office to hold the application abandoned) before informing the Office of the previ- ously submitted correspondence. Applicant may notify the Office of the previous mailing or transmis- sion and supply a duplicate copy of the previously mailed or transmitted correspondence and a statement attesting on a personal knowledge basis or to the satis- faction of the Director to the previous timely mailing or transmission. If the person signing the statement did not sign the certificate of mailing, then the person signing the statement should explain how they have firsthand knowledge of the previous timely mailing or transmission. Such a statement should be filed promptly after the person becomes aware that the Office has not received the correspondence.

Before notifying the Office of a previously submit- ted correspondence that appears not to have been received by the Office, applicants are encouraged to check the private Patent Application Information Retrieval (PAIR) System to see if the correspondence has been entered into the application file.<

513 Deposit as Express Mail with U.S. Postal Service [R-3]

35 U.S.C. 21. Filing date and day for taking action. (a) The Director may by rule prescribe that any paper or fee

required to be filed in the Patent and Trademark Office will be considered filed in the Office on the date on which it was depos- ited with the United States Postal Service or would have been deposited with the United States Postal Service but for postal ser- vice interruptions or emergencies designated by the Director.

*****

37 CFR 1.6. Receipt of correspondence. (a) Date of receipt and Express Mail date of deposit. Corre-

spondence received in the Patent and Trademark Office is stamped with the date of receipt except as follows:

(1) The Patent and Trademark Office is not open for the filing of correspondence on any day that is a Saturday, Sunday, or Federal holiday within the District of Columbia. Except for correspondence transmitted by facsimile under paragraph (a)(3) of this section, or filed electronically under paragraph (a)(4) of this

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section, no correspondence is received in the Office on Saturdays, Sundays, or Federal holidays within the District of Columbia.

(2) Correspondence filed in accordance with § 1.10 will be stamped with the date of deposit as “Express Mail” with the United States Postal Service.

(3) Correspondence transmitted by facsimile to the Patent and Trademark Office will be stamped with the date on which the complete transmission is received in the Patent and Trademark Office unless that date is a Saturday, Sunday, or Federal holiday within the District of Columbia, in which case the date stamped will be the next succeeding day which is not a Saturday, Sunday, or Federal holiday within the District of Columbia.

(4) [Reserved]

*****

37 CFR 1.10. Filing of correspondence by “Express Mail”.

(a)(1)Any correspondence received by the U.S. Patent and Trademark Office (USPTO) that was delivered by the “Express Mail Post Office to Addressee” service of the United States Postal Service (USPS) will be considered filed with the USPTO on the date of deposit with the USPS.

(2) The date of deposit with USPS is shown by the “date in” on the “Express Mail” label or other official USPS notation. If the USPS deposit date cannot be determined, the correspondence will be accorded the USPTO receipt date as the filing date. See § 1.6(a).

(b) Correspondence should be deposited directly with an employee of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked. Persons dealing indirectly with the employees of the USPS (such as by deposit in an “Express Mail” drop box) do so at the risk of not receiving a copy of the “Express Mail” mailing label with the desired “date- in” clearly marked. The paper(s) or fee(s) that constitute the corre- spondence should also include the “Express Mail” mailing label number thereon. See paragraphs (c), (d) and (e) of this section.

(c) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that there is a discrepancy between the filing date accorded by the Office to the correspondence and the date of deposit as shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation, may petition the Director to accord the correspon- dence a filing date as of the “date-in” on the “Express Mail” mail- ing label or other official USPS notation, provided that:

(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a fil- ing date other than the USPS deposit date;

(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail;” and

(3) The petition includes a true copy of the “Express Mail” mailing label showing the “date-in,” and of any other offi- cial notation by the USPS relied upon to show the date of deposit.

(d) Any person filing correspondence under this section that was received by the Office and delivered by the “Express Mail Post Office to Addressee” service of the USPS, who can show that the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS was incorrectly entered or omitted by the USPS, may petition the Director to accord the correspon- dence a filing date as of the date the correspondence is shown to have been deposited with the USPS, provided that:<

(1) The petition is filed promptly after the person becomes aware that the Office has accorded, or will accord, a fil- ing date based upon an incorrect entry by the USPS;

(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”; and

(3) The petition includes a showing which establishes, to the satisfaction of the Director, that the requested filing date was the date the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup for that day. Any showing pursuant to this paragraph must be corroborated by evidence from the USPS or that came into being after deposit and within one business day of the deposit of the correspondence in the “Express Mail Post Office to Addressee” service of the USPS.

(e) Any person mailing correspondence addressed as set out in § 1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS but not received by the Office, may petition the Director to consider such correspondence filed in the Office on the USPS deposit date, provided that:

(1) The petition is filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;

(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by ”Express Mail”;

(3) The petition includes a copy of the originally depos- ited paper(s) or fee(s) that constitute the correspondence showing the number of the “Express Mail” mailing label thereon, a copy of any returned postcard receipt, a copy of the “Express Mail” mail- ing label showing the “date-in,” a copy of any other official nota- tion by the USPS relied upon to show the date of deposit, and, if the requested filing date is a date other than the “date-in” on the “Express Mail” mailing label or other official notation entered by the USPS, a showing pursuant to paragraph (d)(3) of this section that the requested filing date was the date the correspondence was deposited in the “Express Mail Post Office to Addressee” service prior to the last scheduled pickup for that day; and

(4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the corre- spondence and that the copies of the correspondence, the copy of the “Express Mail” mailing label, the copy of any returned postcard receipt, and any official notation entered by the USPS are true copies of the originally mailed correspondence, original “Express Mail” mailing label, returned postcard receipt, and offi- cial notation entered by the USPS.

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(f) The Office may require additional evidence to determine if the correspondence was deposited as “Express Mail” with the USPS on the date in question.

> (g) Any person who mails correspondence addressed as set

out in § 1.1 (a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in “Express Mail” service, may petition the Director to consider such correspondence as filed on a particu- lar date in the Office, provided that:

(1) The petition is filed promptly after the person becomes aware of the return of the correspondence;

(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail”;

(3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon and a copy of the “Express Mail” mailing label showing the “date-in”; and

(4) The petition includes a statement which establishes, to the satisfaction of the Director, the original deposit of the corre- spondence and that the correspondence or copy of the correspon- dence is the original correspondence or a true copy of the correspondence originally deposited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in “Express Mail” service.

(h) Any person who attempts to mail correspondence addressed as set out in § 1.1 (a) to the Office with sufficient post- age utilizing the “Express Mail Post Office to Addressee” service of the USPS, but has the correspondence refused by an employee of the USPS due to an interruption or emergency in “Express Mail” service, may petition the Director to consider such corre- spondence as filed on a particular date in the Office, provided that:

(1) The petition is filed promptly after the person becomes aware of the refusal of the correspondence;

(2) The number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by “Express Mail”;

(3) The petition includes the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon; and

(4) The petition includes a statement by the person who originally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspondence and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be depos- ited with the USPS on the requested filing date. The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emergency in “Express Mail” service.

(i) Any person attempting to file correspondence under this sect ion that was unable to be deposited with the USPS due to an interruption or emergency in “Express Mail” service which has been so designated by the Director, may petition the Director to

consider such correspondence as filed on a particular date in the Office, provided that:

(1) The petition is filed in a manner designated by the Director promptly after the person becomes aware of the desig- nated interruption or emergency in “Express Mail” service;

(2) The petition includes the original correspondence or a copy of the original correspondence; and

(3) The petition includes a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated inter- ruption or emergency in “Express Mail” service, and that the cor- respondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.<

The statutory authority for the granting of a filing date based on the date of deposit for correspondence sent by “Express Mail” and received by the Office is found in section 21(a) of Title 35 of the United States Code.

The specific rule for obtaining a filing date as of the date of deposit in “Express Mail” (rather than the date of receipt at the Office) is 37 CFR 1.10.

35 U.S.C. 21(a) is limited to correspondence depos- ited with the United States Postal Service (USPS). The procedure in 37 CFR 1.10 is limited to correspon- dence deposited in the “Express Mail Post Office to Addressee” service of the USPS. There are no similar provisions and no similar benefit can be obtained for correspondence deposited in International Express Mail.

I. EFFECTIVE DATE, WEEKENDS & HOLI- DAYS

Effective December 2, 1996, 37 CFR 1.6(a)(2) pro- vides that correspondence deposited as “Express Mail” in accordance with 37 CFR 1.10 will be stamped, and, therefore, considered as filed on the date of its deposit, regardless of whether that date is a Saturday, Sunday or Federal holiday within the Dis- trict of Columbia. 37 CFR 1.10 provides a procedure for assigning the date on which any paper or fee is deposited as “Express Mail” with the USPS as the fil- ing date of the paper or fee in the U.S. Patent and Trademark Office (Office). The date of deposit with the USPS is shown by the “date-in” on the “Express Mail” mailing label or other official USPS notation. This holds true for any day that the correspondence may be accepted as “Express Mail” by the USPS, even when the paper or fee is deposited and accepted

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on a Saturday, Sunday or Federal holiday within the District of Columbia. For example, if a person files a patent application by “Express Mail” with the USPS on a Saturday in compliance with 37 CFR 1.10, he or she will receive the benefit of the Saturday date, even though the Office is closed on Saturdays and, therefore, the person could not have filed the applica- tion by depositing it directly at the Office on that Sat- urday. See 37 CFR 1.6(a)(1). In those cases where the procedure of 37 CFR 1.10(a) has not been properly followed, e.g., the “date-in” is illegible, the filing date of the correspondence will be the date of actual receipt in the Office. An applicant may file a petition under the conditions specified in 37 CFR 1.10(c), (d) or (e) (discussed below) presenting whatever argu- ments and evidence that the paper or fee is entitled to a filing date other than the filing date accorded by the Office.

II. DATE-IN, DIRECT DEPOSIT, “EXPRESS MAIL” BOX RECEPTACLES & LOG BOOKS

The procedure in 37 CFR 1.10(a) requires the use of the “Express Mail Post Office to Addressee” ser- vice of the USPS. This service provides for the use of a mailing label on which the USPS clearly indicates the date on which it was deposited. Correspondence sent by the “Express Mail Post Office to Addressee” service is considered filed in the Office on the “date- in” entered by the USPS. The “date-in” on the “Express Mail” mailing label must be completed by the USPS, not by the applicant. For correspondence filed in accordance with 37 CFR 1.10, Office person- nel will routinely look to the “Express Mail” mailing label, and stamp the “date-in” or other official USPS notation as the filing date of the correspondence. Accordingly, if the USPS enters the deposit date as its “date-in,” the correspondence will receive the deposit date as its filing date. If the USPS deposit date cannot be determined, the correspondence will be accorded the date of receipt in the Office as the filing date. An applicant may file a petition under the conditions specified in 37 CFR 1.10(c), (d), * (e)>, (g), (h), or (i)< (discussed below) presenting whatever arguments and evidence that the paper or fee is entitled to a filing date other than the filing date accorded by the Office.

37 CFR 1.10(b) further provides that correspon- dence should be deposited directly with an employee

of the USPS to ensure that the person depositing the correspondence receives a legible copy of the “Express Mail” mailing label with the “date-in” clearly marked, and that persons dealing indirectly with the employees of the USPS (such as by deposit- ing correspondence in an “Express Mail” drop box) do so at the risk of not receiving a copy of the “Express Mail” mailing label with the desired “date- in” clearly marked. On petition, the failure to obtain an “Express Mail” receipt with the “date-in” clearly marked may be considered an omission that could have been avoided by the exercise of due care, as dis- cussed below. While the Office strongly urges direct deposit of “Express Mail” correspondence in order to obtain a legible copy of the “Express Mail” mailing label, parties are not precluded from using “Express Mail” drop boxes, but do so at their own risk.

A paper or fee placed in an “Express Mail” box receptacle after the box has been cleared for the last time on a given day will be considered to be deposited as of the date of receipt (“date-in”) indicated on the “Express Mail” mailing label by the Postal Service “Express Mail” acceptance clerk. 37 CFR 1.10(d) per- mits the Office to correct a USPS “date-in” error when the correspondence is deposited in an “Express Mail” drop box prior to last scheduled pick up of the day, that is, the time clearly marked on the “Express Mail” drop box indicating when the box will be cleared for the last time on the date of deposit. 37 CFR 1.10(d) sets forth the procedures to be fol- lowed to be entitled to such a correction.

Parties who do use drop boxes can protect them- selves from uncertainty due to illegible mailing labels by routinely maintaining a log of “Express Mail” deposits in which notations are entered by the person who deposited the correspondence as “Express Mail” within one business day after deposit with the USPS. Such evidence could be useful to later support a peti- tion filed under 37 CFR 1.10(c), (d) * (e)>, or (g)<. Evidence that came into being after deposit and within one day after the deposit of the correspondence as “Express Mail” may be in the form of a log book which contains information such as the “Express Mail” number; the application number, attorney docket number or other such file identification num- ber; the place, date and time of deposit; the time of the last scheduled pick-up for that date and place of

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deposit; the depositor’s initials or signature; and the date and time of entry in the log.

III. “EXPRESS MAIL” MAILING LABEL NUMBER

Effective December 2, 1996, 37 CFR 1.10(b) no longer requires a certificate of mailing by “Express Mail” or that the “Express Mail” mailing label num- ber be placed on the correspondence prior to mailing. Correspondence deposited with the USPS on or after December 2, 1996, and which is actually received by the Office will not be denied a filing date as of the “date-in” appearing on the “Express Mail” mailing label because the number of the “Express Mail” mail- ing label was not placed on the correspondence prior to the original mailing. However, if the number of the mailing label did not appear on the correspondence as originally filed, relief will not be granted on petition under 37 CFR 1.10(c) **>, (d), (e), (g) or (h)<, even if the party who filed the correspondence satisfies the other requirements of 37 CFR 1.10(c), 1.10(d) * 1.10(e)>, 1.10(g), or 1.10(h)<. To be effective, the number must be placed on each separate paper and each fee transmittal either directly on the document or by a separate paper firmly and securely attached thereto. In situations wherein the correspondence includes several papers directed to the same applica- tion (for example, the specification, drawings, and declaration for a new application), the correspondence may be submitted with a cover or transmittal letter which should itemize the papers. It is not necessary that the number be placed on each page of a particular paper or fee transmittal. Merely placing the number in one prominent location on each separate paper or fee transmittal (or cover sheet or transmittal letter which should itemize the separate papers and fees) will be sufficient.

Since the filing of correspondence under 37 CFR 1.10 without the number of the “Express Mail” mail- ing label thereon is an oversight that can be avoided by the exercise of reasonable care, requests for waiver of this requirement will not be granted on petition. A party’s inadvertent failure to comply with the require- ments of a rule is not deemed to be an extraordinary situation that would warrant waiver of a rule under 37 CFR 1.183, 2.146(a)(5) or 2.148, nor is such an inadvertent omission considered “unavoidable,” within the meaning of 15 U.S.C. 1062(b), 35 U.S.C.

133, 37 CFR 1.137(a) or 37 CFR 2.66(a). See Honigs- baum v. Lehman, 903 F. Supp. 8, 37 USPQ2d 1799 (D.D.C. 1995) (Commissioner did not abuse his dis- cretion in refusing to waive requirements of 37 CFR 1.10(c) in order to grant filing date to patent applica- tion, where applicant failed to produce “Express Mail” customer receipt or any other evidence that application was actually deposited with USPS as “Express Mail.”), aff’d without opinion, 95 F.3d 1166 (Fed. Cir. 1996); Nitto Chemical Industry. Co., Ltd. v. Comer, 39 USPQ2d 1778, 1782 (D.D.C. 1994) (Com- missioner’s refusal to waive requirements of 37 CFR 1.10 in order to grant priority filing date to patent application not arbitrary and capricious, because fail- ure to comply with the requirements of 37 CFR 1.10 is an “avoidable” oversight that could have been pre- vented by the exercise of ordinary care or diligence, and thus not an extraordinary situation under 37 CFR 1.183.); Vincent v. Mossinghoff, 230 USPQ 621 (D.D.C. 1985) (misunderstanding of 37 CFR 1.8 not unavoidable delay in responding to Office Action); Gustafson v. Strange, 227 USPQ 174 (Comm’r Pat. 1985) (counsel’s unawareness of 37 CFR 1.8 not extraordinary situation warranting waiver of a rule); In re Chicago Historical Antique Automobile Museum, Inc., 197 USPQ 289 (Comm’r Pat. 1978) (since certificate of mailing procedure under 37 CFR 1.8 was available to petitioner, lateness due to mail delay not deemed to be extraordinary situation).

IV. PETITIONS

37 CFR 1.10(c) through 1.10(e) >and 1.10(g)< set forth procedures for petitioning the Director to accord a filing date as of the date of deposit as “Express Mail.” Briefly, 37 CFR 1.10(c) applies where there is a discrepancy between the filing date accorded by the Office and the “date-in” entered by the USPS on the “Express Mail” mailing label or other official USPS notation; 37 CFR 1.10(d) applies where the “date-in” is incorrectly entered by the USPS; * 37 CFR 1.10(e) applies where correspondence deposited with the USPS as “Express Mail” is not received by the Office>; and 37 CFR 1.10(g) applies where corre- spondence deposited with the USPS as “Express Mail” was returned by the USPS due to an interrup- tion or emergency in “Express Mail” service.

37 CFR 1.10(h) and 1.10(i) set forth procedures for petitioning the Director when correspondence was

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attempted to be deposited as “Express Mail.” 37 CFR 1.10(h) applies where correspondence was refused by an employee of the USPS due to an interruption or emergency in “Express Mail” service; and 37 CFR 1.10(i) applies where correspondence was unable to be deposited with the USPS due to an interruption or emergency in “Express Mail” service which has been so designated by the Director.<

V. PETITION TO CORRECT FILING DATE AND DATE-IN DISCREPANCY

37 CFR 1.10(c) sets forth procedures for filing a petition to the Director for a filing date as of the date of deposit with the USPS, where there is a discrep- ancy between the filing date initially accorded by the Office and the “date-in” entered by the USPS or other official USPS notation. Such a petition should:

(A) be filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date other than the USPS deposit date;

(B) include a showing that the number of the “Express Mail” mailing label was placed on each piece of correspondence prior to the original mailing; and

(C) include a true copy of the “Express Mail” mailing label showing the “date-in” or other official notation by the USPS.

VI. PETITION TO CORRECT INCORRECT- LY ENTERED DATE-IN

37 CFR 1.10(d) sets forth procedures for filing a petition to the Director to accord a filing date as of the actual date of deposit with the USPS, where the “date- in” or other official notation is incorrectly entered by the USPS. Such a petition should:

(A) be filed promptly after the person becomes aware that the Office has accorded, or will accord, a filing date based upon an incorrect entry by the USPS;

(B) include a showing that the number of the “Express Mail” mailing label was placed on each piece of correspondence prior to the original mailing; and

(C) include a showing that the correspondence was deposited as “Express Mail” prior to the last scheduled pickup on the requested filing date.

The showing under 37 CFR 1.10(d) must be corrobo- rated by (1) evidence from the USPS, or (2) evidence that came into being after deposit and within one busi- ness day of the deposit of the correspondence as “Express Mail.” Evidence from the USPS may be the “Express Mail” Corporate Account Mailing State- ment. Evidence that came into being within one day after the deposit of the correspondence as “Express Mail” may be in the form of a log book which con- tains information such as the “Express Mail” number; the application number, attorney docket number or other such file identification number; the place, date and time of deposit; the time of the last scheduled pick-up for that date and place of deposit; the deposi- tor’s initials or signature; and the date and time of entry in the log.

The reason the Office considers correspondence to have been filed as of the date of deposit as “Express Mail” is that this date has been verified by a disinter- ested USPS employee, through the insertion of a “date-in,” or other official USPS notation, on the “Express Mail” mailing label. Due to the questionable reliability of evidence from a party other than the USPS that did not come into being contemporane- ously with the deposit of the correspondence with the USPS, 37 CFR 1.10(d) specifically requires that any petition under 37 CFR 1.10(d) be corroborated either by evidence from the USPS, or by evidence that came into being after deposit and within one business day after the deposit of the correspondence as “Express Mail.”

A petition alleging that the USPS erred in entering the “date-in” will be denied if it is supported only by evidence (other than from the USPS) which was:

(A) created prior to the deposit of the correspon- dence as “Express Mail” with the USPS (e.g., an application transmittal cover letter, or a client letter prepared prior to the deposit of the correspondence); or

(B) created more than one business day after the deposit of the correspondence as “Express Mail” (e.g., an affidavit or declaration prepared more than one business day after the correspondence was deposited with the USPS as “Express Mail”).

On the other hand, a notation in a log book, entered after deposit by the person who deposited the corre- spondence as “Express Mail” within one business day

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of such deposit, setting forth the items indicated above, would be deemed on petition to be an adequate showing of the date of deposit under 37 CFR 1.10(d)(3).

37 CFR 1.10(d)(3) further provides that a party must show that correspondence was deposited as “Express Mail” before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date.

VII. PETITION FOR CORRESPONDENCE NEVER RECEIVED

37 CFR 1.10(e) sets forth procedures for filing a petition to the Director to accord a filing date as of the date of deposit with the USPS, where correspondence deposited as “Express Mail” is never received by the Office. Such a petition should:

(A) be filed promptly after the person becomes aware that the Office has no evidence of receipt of the correspondence;

(B) include a showing that the number of the “Express Mail” mailing label was placed on each piece of correspondence prior to the original mailing;

(C) include a true copy of the originally deposited correspondence showing the number of the “Express Mail” mailing label thereon, a copy of any returned postcard receipt, a copy of the “Express Mail” mailing label showing the “date-in” or other official notation entered by the USPS; and

(D) include a statement, signed by the person who deposited the documents as “Express Mail” with the USPS, setting forth the date and time of deposit, and declaring that the copies of the correspondence, “Express Mail” mailing label, and returned postcard receipt accompanying the petition are true copies of the correspondence, mailing label and returned post- card receipt originally mailed or received.

37 CFR 1.10(e) provides for the filing of a petition to accord correspondence a filing date as of the date of deposit with the USPS as “Express Mail” only where the correspondence was mailed with sufficient postage and addressed as set out in 37 CFR 1.1(a). There is no corresponding provision that correspon- dence be properly addressed and mailed with suffi- cient postage in 37 CFR 1.10(a), (c) and (d), because

these sections apply only to correspondence that is actually received by the Office. Correspondence mailed by “Express Mail” that is actually received by the Office will not be denied a filing date as of the date of deposit as “Express Mail” simply because the correspondence was not mailed with sufficient post- age or not addressed as set out in 37 CFR 1.1(a). 37 CFR 1.10(e)(3) provides that if the requested filing date is a date other than the “date-in” on the “Express Mail” mailing label, the petition should include a showing under 37 CFR 1.10(d)(3), as discussed above, that the correspondence was deposited as “Express Mail” before the last scheduled pickup on the requested filing date in order to obtain a filing date as of that date. 37 CFR 1.10(e) applies only in those situations in which the correspondence at issue was lost in toto (i.e., the entire correspondence was not delivered to the Office). Where there is a dispute as to the contents of correspondence submitted to the Office (e.g., an applicant asserts that three sheets of drawings were submitted under 37 CFR 1.10 with an application, but the Office records indicate receipt of only two sheets of drawings with the application), an applicant may not rely upon the provisions of 37 CFR 1.10(e) to establish what document(s) and/or fee(s) were filed in the Office with such correspondence. Rather, where the records of the Office (e.g., the file of the application) contain any document(s) or fee(s) corresponding to the contents of the correspondence at issue, the Office will rely upon its official record of the contents of such correspondence in absence of convincing evidence (e.g., a postcard receipt under MPEP § 503 containing specific itemization of the document(s) or fee(s) purported to have been filed with the correspondence at issue) that the Office received and misplaced any document(s) or fee(s) that is not among the official records of the Office.

VIII. ADDITIONAL EVIDENCE MAY BE RE- QUIRED

37 CFR 1.10(f) provides that the Office may require additional evidence to determine whether the correspondence was deposited as “Express Mail” with the USPS on the date in question.

>

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IX. PETITION FOR CORRESPONDENCE RETURNED DUE TO POSTAL INTER- RUPTION OR EMERGENCY

37 CFR 1.10(g) provides that any person who mails correspondence addressed as set out in 37 CFR 1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS, but has the correspondence returned by the USPS due to an interruption or emergency in “Express Mail” service, may petition the Director to consider the correspondence as filed on a particular date in the Office. Such a petition must:

(A) be filed promptly after the person becomes aware of the return of the correspondence;

(B) include a showing that the number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the original mailing by “Express Mail;”

(C) include the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon and a copy of the “Express Mail” mailing label showing the “date-in;” and

(D) include a statement which establishes, to the satisfaction of the Director, the original deposit of the correspondence and that the correspondence or the copy of the correspondence is the original correspon- dence or a true copy of the correspondence originally deposited with the USPS on the requested filing date.

The Office may require additional evidence to determine if the correspondence was returned by the USPS due to an interruption or emergency in “Express Mail” service. For example, the Office may require a letter from the USPS confirming that the return was due to an interruption or emergency in the “Express Mail” service.

This procedure does not apply where the USPS returned the “Express Mail” for a reason other than an interruption or emergency in “Express Mail” service such as the address was incomplete or the correspon- dence included insufficient payment for the “Express Mail” service.

X. PETITION FOR CORRESPONDENCE REFUSED DUE TO POSTAL INTERRUP- TION OR EMERGENCY

37 CFR 1.10(h) provides that any person who attempts to mail correspondence addressed as set out in 37 CFR 1.1(a) to the Office with sufficient postage utilizing the “Express Mail Post Office to Addressee” service of the USPS, but has the correspondence refused by an employee of the USPS due to an inter- ruption or emergency in “Express Mail” service, may petition the Director to consider the correspondence as filed on a particular date in the Office. Such a peti- tion must:

(A) be filed promptly after the person becomes aware of the refusal of the correspondence;

(B) include a showing that the number of the “Express Mail” mailing label was placed on the paper(s) or fee(s) that constitute the correspondence prior to the attempted mailing by “Express Mail;”

(C) include the original correspondence or a copy of the original correspondence showing the number of the “Express Mail” mailing label thereon; and

(D) include a statement by the person who origi- nally attempted to deposit the correspondence with the USPS which establishes, to the satisfaction of the Director, the original attempt to deposit the correspon- dence and that the correspondence or copy of the cor- respondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

The Office may require additional evidence to determine if the correspondence was refused by an employee of the USPS due to an interruption or emer- gency in “Express Mail” service. For example, the Office may require a letter from the USPS confirming that the refusal was due to an interruption or emer- gency in the “Express Mail” service.

This procedure does not apply where the USPS refused the “Express Mail” for a reason other than an interruption or emergency in “Express Mail” service such as the address was incomplete or the correspon- dence included insufficient payment for the “Express Mail” service. In addition, this procedure does not apply because an “Express Mail” drop box is unavail- able or a Post Office facility is closed.

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XI. PETITION FOR CORRESPONDENCE UNABLE TO BE DEPOSITED DUE TO A DIRECTOR-DESIGNATED POSTAL IN- TERRUPTION OR EMERGENCY

37 CFR 1.10(i) provides that any person attempting to file correspondence by “Express Mail” that was unable to be deposited with the USPS due to an inter- ruption or emergency in “Express Mail” service which has been so designated by the Director may petition the Director to consider such correspondence as filed on a particular date in the Office. Such a peti- tion must:

(A) be filed in a manner designated by the Direc- tor promptly after the person becomes aware of the designated interruption or emergency in “Express Mail” service;

(B) include the original correspondence or a copy of the original correspondence; and

(C) include a statement which establishes, to the satisfaction of the Director, that the correspondence would have been deposited with the USPS but for the designated interruption or emergency in “Express Mail” service, and that the correspondence or copy of the correspondence is the original correspondence or a true copy of the correspondence originally attempted to be deposited with the USPS on the requested filing date.

This procedure applies only when the Director des- ignates an interruption or emergency in “Express Mail” service. In the notice designating the interrup- tion or emergency the Director will provide guidance on the manner in which petitions under 37 CFR 1.10(i) should be filed. The notice will be placed on the USPTO web site at www.uspto.gov and published in the Official Gazette.<

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Chapter 600 Parts, Form, and Content of Application

600-1 Rev. 7, July 2008

601 Content of Provisional and Nonprovisional Applications

601.01 Complete Application 601.01(a) Nonprovisional Applications Filed Under

35 U.S.C. 111(a) 601.01(b) Provisional Applications Filed Under

35 U.S.C. 111(b) 601.01(c) Conversion to or from a Provisional

Application 601.01(d) Application Filed Without All Pages of

Specification 601.01(e) Nonprovisional Application Filed Without

at Least One Claim 601.01(f) Applications Filed Without Drawings 601.01(g) Applications Filed Without All Figures of

Drawings 601.01(h) Forms 601.02 Power of Attorney 601.03 Change of Correspondence Address 601.04 National Stage Requirements of the United

States as a Designated Office 601.05 Bibliographic Information — Application Data

Sheet (ADS) 602 Original Oath or Declaration 602.01 Oath Cannot Be Amended 602.02 New Oath or Substitute for Original 602.03 Defective Oath or Declaration 602.04 Foreign Executed Oath 602.04(a) Foreign Executed Oath Is Ribboned to

Other Application Papers 602.05 Oath or Declaration — Date of Execution 602.05(a) Oath or Declaration in Continuation and

Divisional Applications 602.06 Non-English Oath or Declaration 602.07 Oath or Declaration Filed in United States

as a Designated Office 603 Supplemental Oath or Declaration 603.01 Supplemental Oath or Declaration Filed

After Allowance 604 Administration or Execution of Oath 604.01 Seal 604.02 Venue 604.03(a) Notarial Powers of Some Military Officers 604.04 Consul 604.04(a) Consul – Omission of Certificate 604.06 By Attorney in Application 605 Applicant 605.01 Applicant’s Citizenship 605.02 Applicant’s Residence 605.03 Applicant’s Mailing or Post Office Address 605.04(a) Applicant’s Signature and Name

605.04(b) One Full Given Name Required 605.04(c) Inventor Changes Name 605.04(d) Applicant Unable to Write 605.04(e) May Use Title With Signature 605.04(f) Signature on Joint Applications - Order

of Names 605.04(g) Correction of Inventorship 605.05 Administrator, Executor, or Other Legal

Representative 605.07 Joint Inventors 606 Title of Invention 606.01 Examiner May Require Change in Title 607 Filing Fee 607.02 Returnability of Fees 608 Disclosure 608.01 Specification 608.01(a) Arrangement of Application 608.01(b) Abstract of the Disclosure 608.01(c) Background of the Invention 608.01(d) Brief Summary of Invention 608.01(e) Reservation Clauses Not Permitted 608.01(f) Brief Description of Drawings 608.01(g) Detailed Description of Invention 608.01(h) Mode of Operation of Invention 608.01(i) Claims 608.01(j) Numbering of Claims 608.01(k) Statutory Requirement of Claims 608.01(l) Original Claims 608.01(m) Form of Claims 608.01(n) Dependent Claims 608.01(o) Basis for Claim Terminology in Description 608.01(p) Completeness 608.01(q) Substitute or Rewritten Specification 608.01(r) Derogatory Remarks About Prior Art

in Specification 608.01(s) Restoration of Canceled Matter 608.01(t) Use in Subsequent Application 608.01(u) Use of Formerly Filed Incomplete Application 608.01(v) Trademarks and Names Used in Trade 608.02 Drawing 608.02(a) New Drawing — When Replacement is

Required Before Examination 608.02(b) Informal Drawings 608.02(c) Drawing Print Kept in File Wrapper 608.02(d) Complete Illustration in Drawings 608.02(e) Examiner Determines Completeness and

Consistency of Drawings 608.02(f) Modifications in Drawings 608.02(g) Illustration of Prior Art 608.02(h) Replacement Drawings 608.02(i) Transfer of Drawings From Prior Applications

601 MANUAL OF PATENT EXAMINING PROCEDURE

Rev. 7, July 2008 600-2

608.02(m) Drawing Prints 608.02(n) Duplicate Prints in Patentability Report

Applications 608.02(o) Notations Entered on Drawing 608.02(p) Correction of Drawings 608.02(q) Conditions Precedent to Amendment of

Drawing 608.02(t) Cancelation of Figures 608.02(v) Drawing Changes Which Require Annotated

Sheets 608.02(w) Drawing Changes Which May Be Made

Without Applicant’s Annotated Sheets 608.02(x) Drawing Corrections or Changes Accepted

Unless Notified Otherwise 608.02(y) Return of Drawing 608.02(z) Allowable Applications Needing Drawing

Corrections or Corrected Drawings 608.03 Models, Exhibits, Specimens 608.03(a) Handling of Models, Exhibits, and Specimens 608.04 New Matter 608.04(a) Matter Not in Original Specification, Claims,

or Drawings 608.04(b) New Matter by Preliminary Amendment 608.04(c) Review of Examiner’s Holding of New Matter 608.05 Sequence Listing Table, or Computer Program

Listing Appendix Submitted on a Compact Disc

608.05(a) Deposit of Computer Program Listings 608.05(b) Compact Disc Submissions of Large Tables 608.05(c) Compact Disc Submissions of Biosequences 609 Information Disclosure Statement 609.01 Examiner Checklist for Information Disclosure

Statements 609.02 Information Disclosure Statements in

Continued Examinations or Continuing Applications

609.03 Information Disclosure Statements in National Stage Applications

609.04(a) Content Requirements for an Information Disclosure Statement

609.04(b) Timing Requirements for an Information Disclosure Statement

609.05 Examiner Handling of Information Disclosure Statements

609.05(a) Noncomplying Information Disclosure Statements

609.05(b) Complying Information Disclosure Statements 609.05(c) Documents Submitted as Part of Applicant’s

Reply to Office Action 609.06 Information Printed on Patent

609.07 IDSs Electronically Submitted (e-IDS) Using EFS

609.08 Electronic Processing of Information Disclosure Statement

601 Content of Provisional and Non- provisional Applications [R-7]