U.S. DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office
P.O. Box 1450 Alexandria, Virginia 22313-1450
MANUAL OF PATENT EXAMINING PROCEDURE
Ninth Edition, Latest Revision November 2015
Executive Summary
Chapters and Appendices
November 2015 Publication of Revision 07.2015
The November 2015 publication of Revision 07.2015 substantively revises MPEP §§ 2131.03, 2144.05, 2161, 2161.01, 2163, and 2181, and Appendix II. The PDF copies of MPEP Chapters 600, 700, 800, 1200, and FPC have also been re-dated to “November 2015” due to minor form paragraph revisions in these documents.
October 2015 Publication of Revision 07.2015
The October 2015 publication of Revision 07.2015 includes the following changes:
Substantive revisions to all Chapters of the MPEP except Chapters 1200, 1400, 1600, 1900, 2000, and 2300 (see the Summary of Changes Editor Note below for minor changes made to Chapters 1200, 1400, and 2300); the addition of Chapter 2900 entitled "International Design Applications" and Chapter FPC entitled "Form Paragraphs Consolidated"; and updates to the Table of Contents, Introduction, Subject Matter Index, and all Appendices except Appendix I and Appendix P.
The revised chapters and appendices incorporate changes to the laws, rules, and practice necessitated by, or made as a result of, the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012). The Hague Agreement Concerning International Registration of Industrial Designs (Hague Agreement) as set forth in Title I of the PLTIA is effective as of May 13, 2015; the Patent Law Treaty (PLT) Implementation as set forth in Title II of the PLTIA is effective as of December 18, 2013. Editor Notes have been added to or revised in sections having limited applicability as a result of such changes.
Significant changes resulting from implementation of the Hague Agreement include the addition of Chapter 2900 (International Design Applications) and the revision of Chapter 1500 (Design Patents). In addition, Chapter 200 was revised to incorporate changes to priority and benefit claims made in the Hague Agreement implementation rulemaking. Conforming revisions were made in additional chapters.
Significant changes resulting from implementation of the PLT include revision of Chapter 600 to reflect changes to requirements for an application filing date (including filings without drawings or claims (for non-design applications)) and to provide for reference filings; and the addition in Chapter 200 of information relating to the provisions for the restoration of priority to foreign applications and domestic benefit of provisional applications where the later-filed application is filed more than 12 months after the relied upon application but within the 2 month grace period. Conforming revisions were made in additional chapters. Throughout the MPEP, revisions were also made to eliminate material pertaining to an "unavoidable delay"
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basis for revival, and to indicate a two month period for reply will be set in most instances where the Office previously set a one month or 30 day period for reply.
Chapters 800, 900, 1000, 1300, 1700, 1800, 2400, and 2500, which were not revised in the original Ninth Edition, 11.2013 (March 2014), also incorporate changes to the laws, rules, and practice necessitated by, or made as a result of, the Leahy-Smith America Invents Act (AIA), Public Law 112-29, 125 Stat. 284.
Chapters 500, 600, 1800, and 2400 were revised to reflect current practices pertaining to EFS-Web filings. Conforming revisions were made in additional chapters.
Chapter 900 was revised for changes necessitated by the Cooperative Patent Classification (CPC) system, a bilateral classification system jointly developed by the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). Conforming revisions were made in additional chapters.
Chapter 2700 was revised to update the discussion of patent term adjustment (PTA) provisions in view of recent rules changes and court decisions.
All revised chapters and Appendix R incorporate any changes necessitated by the nine patent-related final rule notices published between October 21, 2013 and May 19, 2015.
Summary of Effective Dates
MPEP Chapters
Sections that have been substantively revised in this revision (published October 2015 and November 2015) have a revision indicator of [R-07.2015] meaning that the section has been updated as of July 2015.
MPEP Appendices
App II (List of Decisions Cited) includes the decisions cited in this Revision of the Manual.
Appendix L (Patent Laws) and Appendix R (Patent Rules) include the laws and rules as in force effective May 19, 2015.
Appendix T is as in force effective July 1, 2015.
Appendix AI is as in force effective July 1, 2015.
Robert A. Clarke, Editor Manual of Patent Examining Procedure
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Summary of Changes to MPEP Chapters
[Editor Note: For MPEP chapters 1200, 1400, and 2300 (which are not substantively revised in the Ninth Edition, Revision 07.2015 of the MPEP), as a result of the publication process, the form paragraphs reproduced in these chapters have been updated and may include substantive changes. A future revision will revise sections of these chapters as necessary for consistency with the form paragraph changes.
In addition, in MPEP § 1202, corrected "September 16, 2102" to "September 16, 2012" following the reproduction of 35 U.S.C. 6, and in MPEP § 1214.06, corrected spelling of "Notice of Abandonment." In chapter 1400, added missing title text to prior versions of 37 CFR 1.175, 1.324, and 1.78 in MPEP §§ 1414.02, 1481.02, subsection II, and 1481.03, subsection II.C, respectively, inserted inadvertently omitted form paragraph in MPEP § 1401, and deleted form paragraph 14.29.01 from MPEP § 1490.]
For the substantively revised chapters, particular attention is called to the changes in the following sections:
ALL REVISED CHAPTERS:
—PLTIA: The Patent Law Treaties Implementation Act of 2012, Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012)
Editor Note: Acronyms and
—Hague Agreement: The Hague Agreement Concerning the International Registration of Industrial Designs (see also 37 CFR 1.9(l))
Short Form References
—Hague Article: An Article under the Hague Agreement (see also 37 CFR 1.9(l)) —Hague implementation rule: Changes to Implement the Hague Agreement Concerning International Registration of Industrial Designs, 80 FR 17918 (April 2, 2015) —Hague Rule: A Regulation set forth in the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement (see also 37 CFR 1.9(m)) —PLT: Patent Law Treaty —PLT Article: An Article under the PLT —PLT implementation rule: Changes to Implement the Patent Law Treaty, 78 FR 62368 (October 21, 2013) —PLT Rule: A Regulation under the Patent Law Treaty —For most time periods for reply previously set at one month, the time periods for reply have been revised to two months as a result of policy changes in the implementation of
Passim
the PLT. See the discussions in the PLT implementation rule regarding PLT Article 11 (78 FR at 62371) and various PLT Rules concerning noncompliance notifications ( id. at 62373). —Replaced "Express Mail" with "Priority Mail Express®" and "date in" with "date accepted" in light of the United States Postal Service (USPS) renaming Express Mail®
Passim
to Priority Mail Express® on July 28, 2013 and the final rule Renaming of Express Mail® to Priority Mail Express®, 79 FR 63036 (Oct. 22, 2014) to make corresponding nomenclature changes in the patent regulations. —Made minor nonsubstantive changes for consistency in style (e.g., "website" rather than "web site," "email" rather than "e-mail," removing "http://" from website addresses
Passim
that include "www."), and capitalization (e.g., "Internet," "intranet," "Web," "federal") unless otherwise used in treaty, statutory, or regulatory text. —Website addresses have been updated as necessary.Passim —Updated the following business unit names where necessary: Board of Patent Appeals and Interferences to Patent Trial and Appeal Board; Office of Initial Patent Examination
Passim
to Office of Patent Application Processing; Office of PCT Legal Administration to
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International Patent Legal Administration; and Office of Patent Publication to Office of Data Management. —Corrected or updated cross-references to sections within the MPEP chapters as necessary.
Passim
—Deleted as unnecessary Editor Notes concerning previously unrevised chapters. Revised section Editor Notes as necessary to account for the ability to file applications under 35 U.S.C. 385 (international design applications).
Passim
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CHAPTER 100:
—Updated 35 U.S.C. 122(b)(2)(B)(iii) and 37 CFR 1.14 to reflect changes resulting from the PTLIA and its implementation. Clarified that official papers are accepted only at the Customer Service Window, except for certain papers that have been specifically exempted from the central delivery policy.
101
—Revised to update 37 CFR 1.14. Added information pertaining to access to an international design application maintained by the Office in its capacity as a designated office (37 CFR 1.1003) or as an office of indirect filing (37 CFR 1.1002).
102
—Revised to update 37 CFR 1.14 throughout the section.103 —In subsection I, clarified that all patent applications filed after June 30, 2003, are available in public PAIR upon publishing or patenting. —In subsection II, deleted "U.S. Patent" from the subsection title and added explanation that pursuant to 35 U.S.C. 390, the publication by the International Bureau of an international design application designating the United States under the Hague Agreement is deemed to be a publication under 35 U.S.C. 122(b). —In subsection III, added cross-reference to 37 CFR 1.14(j) for access to international design applications. Added explanation that if an abandoned application is identified in a publication of an international registration under Hague Agreement Article 10(3), access to the abandoned application is available under 37 CFR 1.14(a)(1)(iv). Also added explanation that if a publication of an international registration under Hague Agreement Article 10(3) claims the benefit of, or incorporates by reference, an unpublished pending application, a copy of the application may be provided in accordance with 37 CFR 1.14(a)(1)(v) or (vi). Form PTO/SB/68 updated. —In subsection V, added reference to petitions for access in derivation proceedings. —In subsection VI, added references to benefit claims under 35 U.S.C. 386(c) and to publication of an international registration under Hague Agreement Article 10(3). Revised to limited "35 U.S.C. 365" to "35 U.S.C. 365(c)" in the context of benefit claims. —In subsection VIII, added references to access to applications involved in derivation proceedings and 37 CFR 42.3. Also added cross-reference to MPEP Chapter 2300. —Subsection III revised to indicate that petitions for access in special circumstances are filed under 37 CFR 1.14(i).
104
—Updated the name of the International Patent Legal Administration.110 —Added explanation that international design applications filed under the Hague Agreement in the U.S. Patent and Trademark Office (USPTO) are reviewed for the purposes of issuance of a foreign filing license.
115
—Updated 37 CFR 5.1 and 5.3. Revised the title of subsection IV to include international design applications, and added reference to a Secrecy Order applied to an international design application.
120
—Updated 37 CFR 5.11, 5.12, 5.13, 5.14, and 5.15. Added references to registrations of industrial designs in the context of foreign filing licenses. Revised to indicate that either the filing receipt or other official notice will indicate if a foreign filing license is granted.
140
—In subsection II, added a cross-reference to MPEP § 1002.02(b).
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CHAPTER 200:
Updated cross-references to paragraphs of 37 CFR 1.55 and 1.78 for consistency with the reorganization of these rules resulting from the PLTIA and its implementation.
Passim
—Updated 35 U.S.C. 171 in accordance with the PLTIA.201 —Updated 35 U.S.C. 111 in accordance with the provisions of the PLTIA. Corrected the text of pre-PLT (AIA) 35 U.S.C. 111 and added explanation that pre-AIA 35 U.S.C. 111 requirements
201.01
substantially correspond to those of pre-PLT (AIA) 35 U.S.C. 111, but do not include conforming amendments with regard to the oath or declaration provisions and other miscellaneous provisions of the AIA. Updated 37 CFR 1.9 to revise paragraph (a) and add paragraphs (l)-(n) for consistency with the Hague implementation rule. —Subsection I revised to provide an explanation of notable changes to the filing date requirements of nonprovisional applications filed under 35 U.S.C. 111(a) as a result of the PLTIA. Subsection I also revised to indicate that for applications not filed under 35 U.S.C. 111, MPEP Chapters 1800 and 2900 provide details regarding international applications (PCT) and international design applications, respectively. Deleted paragraph directed to domestic national applications as redundant to information in the first paragraph of the subsection. —In subsection II, updated definition of "national application" in accordance with 37 CFR 1.9(a)(1). Deleted references to applications filed before September 16, 2012 and pre-AIA 37 CFR 1.9 because 37 CFR 1.9 as revised in the Hague implementation rule is applicable to all applications irrespective of filing date. Subsection II further revised to specify that utility and plant patent applications filed on or after December 18, 2013, without a claim, are governed by the notification practice set forth in 37 CFR 1.53(f). —New subsection III added to discuss international design applications designating the United States. Subsection III includes the text of 35 U.S.C. 385 and 37 CFR 1.9(a) and (l)-(n), provides an overview of Title I of the PLTIA, which implemented the Hague Agreement Concerning International Registration of Industrial Designs (HagueAgreement), and provides a cross-reference to new MPEP Chapter 2900 for information regarding international design applications. —Revised text for consistency with 37 CFR 1.9 as amended in the Hague implementation rule.201.02 —Subsection I title revised to "Provisional Application Filed On or After December 18, 2013." Subsection I revised to update 35 U.S.C. 111 and provide an Editor Note as to its applicability,
201.04
to limit reproduction of 37 CFR 1.9 to paragraph (b), and to update 37 CFR 1.53 and provide an Editor Note as to its applicability. Subsection I further revised to provide a discussion of requisite parts of a provisional application in order to be accorded a filing date for applications filed on or after December 18, 2013. —Subsection II title revised to "Provisional Application Filed Before December 18, 2013." Subsection II revised to reflect that 35 U.S.C. 111 and 37 CFR 1.53 as set forth therein are the (pre-PLT) versions and to add Editor Notes as to their applicability. —Subsection III revised to add discussion regarding the possibility of restoring a provisional application for purposes of supporting the benefit claim of a subsequent nonprovisional application or international application designating the United States in accordance with 37 CFR 1.78. —Subsection III further revised to provide that a request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in 37 CFR 1.17(i); the filing fee, search fee, and examination fee for a nonprovisional application and the surcharge under 37 CFR 1.16(f), if appropriate, are also required. For provisional applications filed before December 18, 2013, if the inventor's oath or declaration was not filed with the provisional application, it must be submitted with the request for conversion. —Added 37 CFR 1.78(d)(2) and revised section text for consistency with the rule. Added discussion of Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001
201.06
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(Fed. Cir. 2008) which held that the protection afforded by 35 U.S.C. 121 only applies to divisional applications, and does not apply to continuation-in-part applications. —Revised to specify that divisional applications must be filed under 37 CFR 1.53(b), with the exception of design applications (but not international design applications) which may also be filed under 37 CFR 1.53(d). Further revised to indicate that a divisional application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), and added a cross-references to 37 CFR 1.78 and MPEP § 211 et seq. for the conditions for receiving the benefit of the filing date of a prior application. —Updated form paragraph 2.01 to clarify information pertaining to divisional applications. Pertaining to introductory text and subsection I. In General:201.06(c) —Preceding subsection I, inserted 37 CFR 1.53(b) as revised in the Hague implementation rule, and provided Editor Notes as to the applicability of the current and pre-PLT versions of that rule. Moved reproduction of 37 CFR 1.63(b) to subsection II. —Subsection I revised to add that a nonprovisional international design application is not an application filed under 37 CFR 1.53(b). —Subsection I revised to add text explaining that the filing date for applications (excluding design applications) filed on or after December 18, 2013, is the date on which a specification, with or without claims, is received in the Office. Also added explanation that an application filed under 35 U.S.C. 111(a) after December 18, 2013, may be filed by reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and drawings of the application are replaced by the reference to the previously filed application. Added cross-reference to MPEP § 601.01(a), subsection III for additional information. —Deleted text pertaining to applications filed under former 37 CFR 1.60, and moved to subsection II information pertaining to applications containing a copy of an oath or declaration from a prior application. —For consistency with current 37 CFR 1.78, revised text to explain that a petition to accept an unintentionally delayed benefit claim under 37 CFR 1.78(e) must be accompanied by the petition fee set forth in 37 CFR 1.17(m). Pertaining to subsection II. Oath/Declaration:201.06(c) —In subsection II, inserted 37 CFR 1.63(b) as revised in the Hague implementation rule, and provided Editor Notes as to the applicability of the current and pre-AIA versions of that rule. —Subsection II substantially rewritten to clarify the conditions under which a copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012. Information related to the content of an oath or declaration deleted and replaced with cross-references to MPEP §§ 602.05(a) and 602.05(b); information pertaining to paper processing was also deleted. —Added explanation that a new inventor's oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, because the inventor's oath or declaration submitted in any application filed on or after September 16, 2012, must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for such applications. Pertaining to subsection III. Specification and Drawings:201.06(c) —Subsection III updated to include 35 U.S.C. 386(c) among the list of ways to claim the benefit of a prior application. —Subsection III revised to specify that if a continuation or divisional application as filed contains subject matter that would have been new matter in the prior application, the applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part. Text further revised to limit the discussion pertaining to newly executed or supplemental oaths or declarations in continuation-in-part applications to those applications filed
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before September 16, 2012. Information pertaining to oaths or declarations in applications filed on or after September 16, 2012, moved to subsection II. —Subsection III revised to specify that any utility or plant patent application, including any continuing application, that will be published pursuant to 35 U.S.C. 122(b) should be filed under 37 CFR 1.53(b) with a specification that includes any claim(s) and drawings that the applicant would like to have published. Further revised text to clarify that the only format for a preliminary amendment to the specification (other than claims) that is usable for publication is a substitute specification. Pertaining to subsection IV. Incorporation by Reference:201.06(c) —In subsection IV, revised to replace instances of "continuation or divisional" with "continuing." Updated cross-references to paragraphs of 37 CFR 1.57 because the former provisions of paragraphs (a)-(f) were moved to paragraphs (b)-(h) in the PLT implementation rule. —Subsection IV updated to specify that for applications filed on or after September 21, 2004, a claim under 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design application designating the United States 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 inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b). Moreover, pursuant to 37 CFR 1.57(b)(4), any amendment to an international design application pursuant to 37 CFR 1.57(b)(1) is effective only as to the United States and will only be acted upon after the international design application becomes a nonprovisional application. Added cross-reference to MPEP § 217 for more detailed information pertaining to incorporation by reference pursuant to 37 CFR 1.57(b). —Subsection IV.A revised to indicate that pursuant to 37 CFR 1.57(b)(3), an amendment to add inadvertently omitted material must be by way of a petition pursuant to 37 CFR 1.53(e). (Prior to the PLT implementation rule, such a petition was to be submitted under 37 CFR 1.57.) —Subsection IV.B revised to indicate that if an application is entitled to a filing but the Office identified omitted item(s) in a Notice of Omitted Item(s), applicant must respond to the notice by filing an appropriate amendment. Pertaining to subsections V - XII:201.06(c) —Subsection V title renamed to "Inventorship in a Continuing Application." Revised to replace instances of "continuation or divisional" with "continuing." —Subsection V.B revised to indicate that reflect "pre-AIA" 37 CFR 1.63 is applicable to applications filed prior to September 16, 2012. —Subsection VI.A (formerly subsection VI.1) updated to add references to 37 CFR 1.1021(d) and 35 U.S.C. 386(c). —Subsection VI.B (formerly subsection VI.2) renamed "Pre-AIA 37 CFR 1.47 Issues." —Subsection IX revised to delete reference to 37 CFR 1.171. —Subsection XI revised to delete reference to 37 CFR 1.63(d). —Subsection XII revised to specify that if the examiner determines that a continuation or divisional application as filed contains subject matter that would have been new matter in the prior application, the applicant is required to delete the benefit claim or redesignate the application as a continuation-in-part. Pertaining to introductory text and subsections I. CPA Practice has been Eliminated as to Utility and Plant Applications and V. Forms:
201.06(d)
Updated 37 CFR 1.53(d). —In subsection I, replaced the reference to form paragraph 8.27 with a reference to form paragraph 8.04.
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—Subsection V revised to delete reference to Form PTO/SB/29A, "For Design Applications Only: Receipt For Facsimile Transmitted CPA" and update the website address for accessing the CPA Form. Pertaining to subsection II. Filing and Initial Processing of CPAs for Design Applications201.06(d) —Revised to update 37 CFR 1.53(d)(1)(ii) and text throughout the subsection for consistency with the Hague implementation rule. Specifically, 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, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor's oath or declaration if the CPA is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in 37 CFR 1.53(f)(3)(i) (i.e., an application data sheet indicating the name, residence, and mailing address of each inventor). —Subsection II.A further revised to explain that although the previously filed oath or declaration (if any) will be considered to be the oath or declaration of the CPA, for continuing applications (including CPAs) filed on or after September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. —Subsection II.E further revised to clarify that pre-AIA 37 CFR 3.73(b) is applicable to a CPA filed prior to September 16, 2012, governing the filing of assignment papers. —Subsection II.F revised to provide information pertaining to filing CPA requests via EFS-Web. —Subsection II.G revised to indicate that for CPAs filed on or after September 16, 2012, if the prior application does not contain the inventor's oath or declaration, the surcharge under 37 CFR 1.16(f) is required (unless the inventor's oath or declaration is being filed with the CPA). —Subsection II.K revised to delete reference to the handling of paper application files. Pertaining to subsection III. Examination of CPAs:201.06(d) —Subsection III.A revised to indicate that where the non-continued prosecution application originally assigned an application number itself claims the benefit of a prior application or applications under 35 U.S.C. 120, 121, or 386(c), 37 CFR 1.78(d)(2) continues to require that the non-continued prosecution application originally assigned the application number contain a reference to any such prior application(s). —Subsection III.A revised to indicate that 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, divisional, or continuation-in-part), 37 CFR 1.78(d)(2) requires a reference to the CPA by application number in an application data sheet or, for applications filed before September 16, 2012, in the first sentence of the specification. Revised to clarify that 37 CFR 1.78(d)(4) provides that "[t]he identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number." —Subsection III.C revised to clarify that an election in reply to a restriction requirement made in the prior application carries over to the CPA under certain conditions. —Added 37 CFR 1.78(d)(2) and revised section text for consistency with the rule.201.07 —Revised to specify that continuation applications must be filed under 37 CFR 1.53(b), with the exception of design applications (but not international design applications) which may also be filed under 37 CFR 1.53(d). Further revised to indicate that a divisional application must claim the benefit of the prior nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), and added a cross-references to 37 CFR 1.78 and MPEP § 211 et seq. for the conditions for receiving the benefit of the filing date of a prior application. —Revised to replace reference to the "applicant" with "inventorship" consistent with the AIA. Revised to emphasize that a continuation must not include anything that would constitute new matter if inserted in the original application.
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—Revised to clarify that the Office, not the primary examiner, will establish the right to further examination when new claim sets are filed in a continuation before the termination of proceedings in an earlier nonprovisional application. —Revised to indicate that a continuation or divisional application may only be filed under 37 CFR 1.53(d) if the prior nonprovisional application is a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor's oath or declaration if the CPA is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. —Revised to indicate that benefit may additionally be claimed under 35 U.S.C. 386(c), and to delete parenthetical reference to pre-AIA 35 U.S.C. 112, first paragraph.
201.08
—Subsection I revised to delete "substitute" from the list of applications that may claim benefit to a prior application. Revised to clarify that the identifying data of all prior applications for
202
which benefits are claimed should be reviewed by the examiner to ensure that the data is accurate and provided in an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012. —Subsection I revised to indicate that if benefit claim information is incorrect due to applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate. Further revised to indicate that a petition for an unintentionally delayed benefit claim may also be required. —Subsection II revised to add that a petition for an unintentionally delayed claim for priority may also be required in instances where the oath or declaration or the application data sheet is erroneous with regard to foreign priority claims. —Deleted.202.01 -
202.04 —Revised to indicate that an application's status as an "allowed" application continues from the date of the notice of allowance until it issues as a patent, is withdrawn from issue in accordance
203.04
with 37 CFR 1.313, or becomes abandoned for failure to pay the issue fee and any required publication fee. —Subsection I revised to update website address for the Patent Application Information Retrieval (PAIR) system.
203.08
—Revised to add reference to benefit and priority claims under 35 U.S.C. 386. Revised to indicate that title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules.
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—Subsection I revised to indicate that it presents an overview of the substantive changes to 37 CFR 1.78 resulting from implementation of the AIA and the PLTIA. Revised to reflect that benefit of an earlier-filed application may be under 35 U.S.C. 365(c), or 386(c). Subsection I title and text revised to replace "domestic" with "national." —Subsection I updated to explain that in implementing the PLTIA, the Office reorganized and revised 37 CFR 1.78 effective May 13, 2015. All versions of 37 CFR 1.78 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.78, for which a summary of the provisions is provided. Updated to reflect that 37 CFR 1.78(a)(6) and (d)(6) set forth provisions that are only applicable to nonprovisional applications filed on or after March 16, 2013 that claim the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013. —Subsection II updated to explain that implementation of the PLTIA impacted priority claims and 37 CFR 1.55.
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—Subsection II revised to delete the limited applicability of 35 U.S.C. 365(a) and (b) based on filing date. Revised to indicate that for all applications filed on or after September 16, 2012, a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) to the prior application must be presented in the application data sheet. Revised to explain that in implementing the PLTIA, the Office reorganized and revised 37 CFR 1.55 effective May 13, 2015. All versions of 37 CFR 1.55 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.55, for which a summary of the provisions is provided. —Subsection III revised to indicate that Title I of the PLTIA amended the definition of effective filing date in 35 U.S.C. 100(i) to provide for priority claims under 35 U.S.C. 386(a) or (b) and benefit claims under 35 U.S.C. 386(c). Further revised to indicate that in implementing the first inventor to file provision of the AIA, the Office added a statement requirement to 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6) for transition applications. The requirement for a statement under these provisions does not apply to nonprovisional international design applications. —Revised to update 35 U.S.C. 119(e) and 120 for consistency with the PLTIA. Updated 37 CFR 1.78 in accordance with the Hague implementation rule and added references to benefit claims
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under 35 U.S.C. 386(c). Revised to note that nonprovisional international design applications are excluded from the statement requirement under 37 CFR 1.78(a)(6) and (d)(6). —Subsection I revised to note that if the prior-filed application is an international design application designating the United States, the prior-filed application must be entitled to a filing date in accordance with 37 CFR 1.1023.
211.01
—Subsection I further revised to delete the parenthetical regarding the time period under 37 CFR 1.53(g) and to add a cross-reference to 37 CFR 1.78(a)(2). Updated form paragraph 2.40. —Subsection III revised to indicate that nonprovisional international design applications are excluded from the transition provisions of 37 CFR 1.78(a)(6) and (d)(6). —Revised to add new subsection heading "I. In General" to previous text. Subsection I revised to include discussion of restoration of benefits in accordance with the PLTIA and to add applicable cross-references for additional information.
211.01(a)
—Subsection I further revised to explain that as an alternative to claiming benefit to a provisional application that was filed in a language other than English, applicant may delete the benefit claim to the provisional application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification, as appropriate. —Added to subsection I a discussion of restoration of priority benefit when a later-filed application is claiming the benefit of a provisional application via an intermediate copending application, and an indication that design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e). —Added new subsection "II. Restoring the Benefit of a Provisional Application." Subsection II explains that effective December 18, 2013, title II of the PLTIA provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). —Subsection II further explains that as a result of the implementation of title I of the PLTIA, 37 CFR 1.78(a) and (b) were amended effective May 13, 2015, to provide that a petition to restore the right of priority filed on or after May 13, 2015, must be filed in the subsequent application and that the subsequent application is the application required to be filed within the period set forth in 37 CFR 1.78(a)(1)(i). —Subsection II discusses the requirements for filing a petition under 37 CFR 1.78(b). Added form paragraph 2.11.01, relocated from MPEP § 211.01(b), subsection I. —Subsection I revised to add 35 U.S.C. 386(c) among the laws under which a later-filed application may claim the benefit of a prior-filed nonprovisional application.
211.01(b)
Rev. 07.2015, November 201511
CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Subsection I revised to add reference to MOAEC, Inc. v. MusicIP Corp., 568 F. Supp. 2d 978 (W.D. Wis. 2008) wherein the district court interpreted "before" to mean "not later than" and allowed a continuation application filed the same day that the parent patent issued to have the benefit of the filing date of the parent application, followed by "But see Immersion Corp. v. HTC Corp.,Civil Action No. 12-259-RGA (D.Del. Feb. 11, 2015)." —In subsection I, updated form paragraph 2.11; form paragraph 2.11.01 deleted and relocated to MPEP § 211.01(a), subsection II. —Subsection II revised to indicate that 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, unless the benefit of the provisional application has been restored (in which case the nonprovisional application must be filed within 14 months). Added cross-references to 37 CFR 1.78(b) and MPEP § 211.01(a), subsection II. —Revised quotation of 35 U.S.C. 371(d) in accordance with amendments made in the PLTIA.211.01(c) —New section added directed to claiming the benefit of an international design application designating the United States.
211.01(d)
—Subsection I revised to indicate Office preference for the use of an application data sheet, rather than making specific reference to a prior application in the first sentence(s) of the specification for applications filed prior to September 16, 2012.
211.02
—Subsection I revised to incorporate discussion of international design applications designating the United States. Revised to update cross-references to paragraphs of 37 CFR 1.57. —Subsection I revised to replace instances of "surcharge" with "petition fee," and to replace 37 CFR 1.17(t) with 37 CFR 1.17(m). Updated form paragraph 2.15. —Subsection II revised to indicate that except for benefit claims to the prior application in a continued prosecution application (CPA), benefit claims under 35 U.S.C. 120, 121, 365(c), and 386(c) must identify the prior application by application number, by international application number and international filing date, or by international registration number and international filing date under 37 CFR 1.1023, and indicate the relationship between the applications. Further revised to add specific instructions for international design applications regarding reference to prior nonprovisional applications, and to indicate that a request for a CPA is not available for international design applications. —Subsection III revised to add cross-reference to MPEP § 2920.05(e) for benefit information specific to international design applications. —Revised to replace instances of "surcharge" with "petition fee" and to delete a reference to printing the PALM bib-data sheet.
211.02(a)
—Revised to update description of 37 CFR 1.78 to include international applications and international design applications.
211.03
—Updated to state that if the application is a utility or plant application filed under 35 U.S.C. 111(a), the benefit claim of the prior application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(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 filing date of the prior-filed application. Updated the guidance regarding making a benefit claim for nonprovisional application entering the national stage from an international application under 35 U.S.C. 371. —Revised to add that if the application is a design application, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be submitted during the pendency of the later-filed application. —Revised to replace "surcharge" with "petition fee" and to replace 37 CFR 1.17(t) with 37 CFR 1.17(m). —Updated form paragraph 2.39.
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—Revised to replace of "surcharge" with "petition fee" and to replace 37 CFR 1.17(t) with 37 CFR 1.17(m). Revised to update all cross-references to 37 CFR 1.78 in accordance with the Hague implementation rule.
211.04
—Revised to add that effective May 13, 2015, 37 CFR 1.78(d)(3) was amended to make the procedures under 37 CFR 1.78(e) to accept an unintentionally delayed benefit claim applicable to design applications where the benefit claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for certificate of correction after patent grant. —Revised to delete that the petition for an unintentionally delayed benefit claim must be submitted during the pendency of the nonprovisional application. Revised to add that if a petition under 37 CFR 1.78(c) or (e) is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then the petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application. Revised to add cross-reference to 37 CFR 1.78(i). —Revised to emphasize that a continuation application must not include anything which would constitute new matter if inserted in the original application. Updated form paragraphs.
211.05
—Updated 35 U.S.C. 119 and 37 CFR 1.55 in accordance with the PLTIA and the Hague implementation rule, and revised text for consistency therewith. Revised to add references to
213
restoration of the right of priority and to priority claims in nonprovisional international design applications. —Updated form paragraph 2.18, and deleted final paragraph of section as no longer necessary. —In the introductory text, deleted reference to "another treaty between the United States and some Latin American countries" and deleted paragraphs specific to Taiwan and Thailand.
213.01
—In subsection I, updated the table of states with respect to which the right of priority under 35 U.S.C. 119(a)-(d) has been recognized based on their status as party to the PCT or Paris Convention or as members of the WTO. Added website address for accessing the most current version of the table. —Subsection II revised to update 35 U.S.C. 365 in accordance with PLTIA. —Added new subsection III. Right of Priority Based Upon an International Design Application to provide an overview of the subject and a cross-reference to newly-added MPEP § 2920.05(d) for additional information. Former subsection III redesignated as subsection IV. —Subsection IV (formerly subsection III) revised to explain that under the Paris Convention, the right of priority may be based on an application for a patent or for the registration of a utility model or an industrial design. Corrected title of "The Hague Agreement Concerning the International Registration of Industrial Designs." —Subsection I revised to add discussion of formal requirements relating to claiming foreign priority in international applications entering the national stage under 35 U.S.C. 371 and international design applications designating the United States.
213.02
—Subsection I revised to specify that for applications filed under 35 U.S.C. 111(a) on or after September 16, 2012, the claim for priority must be presented in an application data sheet, and that for applications filed prior to September 16, 2012, the claim for priority must appear in the oath or declaration under 37 CFR 1.63. —Subsection I further revised to add a cross-reference to 37 CFR 1.57(a) and MPEP § 601.01(a), subsection III, regarding filing by reference to a previously filed application. Updated cross-references to paragraphs of 37 CFR 1.57. —Subsection III revised to change cross-reference of 37 CFR 1.55(j) to 37 CFR 1.55(k) and to explain that nonprovisional international design applications are excluded from the transition provision of 37 CFR 1.55(k), as such applications can only be filed on or after May 13, 2015.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Introductory text revised to include a discussion of restoration of priority and to include a discussion of Hague Agreement Rule 4(4) relating to the last day for taking an action or paying a fee.
213.03
—In subsection II, revised the date in provided example so that it would not be impacted by restoration of the right of priority. —Add new subsection III. Restoring the Right of Priority to explain that the PLTIA provides for restoration of the right of priority under certain conditions, and to explain the requirements of a petition 37 CFR 1.55(c) for such restoration. —Section rewritten in its entirety to update 37 CFR 1.55(g) and the requirements for filing a proper priority claim and certified copy of the foreign application.
213.04
—Revised to update cross-references to paragraphs of 37 CFR 1.55.213.05 —Revised to update 37 CFR 1.55 and cross-references to paragraphs of 37 CFR 1.55, and to add PCT Rule 4.10 Priority Claim. Further revised to indicate that there are limited exceptions to the
213.06
time limits set forth in the PCT and the Regulations under the PCT regarding priority claims and filing the certified copy of the foreign application, and added cross-references to MPEP §§ 214.02 and 215.02. —New section added to discuss of provisions for claiming priority and filing a certified copy in a nonprovisional international design application in accordance with the Hague Agreement.
213.07
—Updated to indicate that implementation of the PLTIA resulted in changes to the procedural requirements relating to claims for priority to an earlier-filed foreign application and to the submission of a certified copy of the priority document as set forth in 37 CFR 1.55.
214
—Revised to add a parenthetical distinguishing between the time period for filing a claim for foreign priority in design patents from utility patents. —Revised to indicate that where the requirements for perfecting priority under 35 U.S.C. 119(a)-(d) or (f) have not been met before the issuance of patent, 37 CFR 1.55(g) and MPEP § 216.01 should be consulted for an explanation of when the deficiencies are correctable by a certificate of correction or reissue. Deleted discussion of Brenner v. State of Israel. —Revised to delete 37 CFR 1.55(c). Updated 37 CFR 1.55(d) and added discussion of its provisions. Updated cross-references to paragraphs of 37 CFR 1.55.
214.01
—Revised to add discussion of priority claims in design applications, and to explain that a claim for priority may be made at any time during the pendency of the application. Added cross-reference to MPEP §§ 1504.10 and 2920.05(d) added for additional information pertaining to priority claims in design applications. —Revised to limit discussion of priority claims in an application data sheet to applications filed under 35 U.S.C. 111(a). —Updated 37 CFR 1.55(e) and related discussion with respect to unintentionally delayed priority claims in accordance with the Hague implementation rule. Added explanation that 37 CFR 1.55(g)
214.02
allows the priority claim and the certified copy required under 37 CFR 1.55 to be filed pursuant to a petition under 37 CFR 1.55(e) even if the application is not pending (e.g., a patented application). —Revised to indicate that prior to May 13, 2015, there were no procedures for accepting an unintentionally delayed priority claim in a design application, but that effective May 13, 2015, such procedures were established. Added cross-reference to MPEP § 216.01. —Updated form paragraphs for consistency with 37 CFR 1.55.214.03 —In subsection III, revised to include caveat regarding priority not having been restored under PCT Rule 26 bis.3 or 37 CFR 1.55(c). Form paragraph 2.23 revised to include information pertaining to petitions under 37 CFR 1.55(c) to restore the right of priority.
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—Subsection V revised to update the protocol to follow 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 and to add cross-reference to MPEP § 216.01. —Revised to correct cross-reference from MPEP § 215.01(a) to MPEP § 215.01.214.04 —Subsection I revised to indicate that an application data sheet may be used for applications filed prior to September 16, 2012 to identify the certified copy of the foreign priority application.
215
—Subsection III revised to insert 37 CFR 1.55(h) and update form paragraph 2.20. —Subsection IV revised to update procedures for correcting the priority claim when the foreign priority document does not correspond with the application identified in the priority claim and for adding a priority claim when the priority claim is presented after the time period set forth in 37 CFR 1.55. Updated form paragraph 2.22. —Subsection V revised to update the protocol to follow 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, and to add cross-reference to MPEP § 216.01. —Updated website address for information concerning the priority document exchange program and corrected the reference to 37 CFR 1.323.
215.01
—Updated 37 CFR 1.55(f) and the discussion thereof in accordance with Hague implementation rule. In particular, text revised to indicate that the time period set forth in 37 CFR 1.55(f)(1) only
215.02
applies to applications filed under 35 U.S.C. 111(a) on or after March 16,2013, and to indicate that 37 CFR 1.55(f)(2) sets forth the time period for filing a certified copy of the foreign application for international applications entering the national stage under 35 U.S.C. 371. —Revised to explain that the time period requirement in 37 CFR 1.55(f)(1) or (f)(2) does not apply in three circumstances, namely those set forth in 37 CFR 1.55(h)(certified copy filed in parent or related application), 37 CFR 1.55(i)(foreign intellectual property priority document exchange participant), or (j)(interim copy of foreign application filed). —Updated 37 CFR 1.55(i)(formerly 37 CFR 1.55(h)) and cross-references to paragraphs of 37 CFR 1.55. Revised description of timeliness requirement to indicate that the time period is set forth in 37 CFR 1.55(g)(1).
215.02(a)
—Updated 37 CFR 1.55(j)(formerly 37 CFR 1.55(i)) and cross-references to paragraphs of 37 CFR 1.55. Added indication of the time period for providing an interim copy of the foreign
215.02(b)
application in an application entering the national stage under 35 U.S.C. 371. Revised to indicate that a certified copy of the foreign application must still be filed during the pendency of the application, unless filed with a petition under 37 CFR 1.55(e), (f), or (g) as appropriate. Revised document description to be used when filing interim copies via EFS-Web. —Replaced paragraphs of 37 CFR 1.55 previously reproduced herein with 37 CFR 1.55(g), and revised text for consistency with the provisions of 37 CFR 1.55(g) as amended in the Hague
215.03
implementation rule. Deleted references to a processing fee under 37 CFR 1.17(i), and added brief discussion of petitions under 37 CFR 1.55(e), (f), or (g). —Revised to indicate that an application data sheet may be used for applications filed prior to September 16, 2012 to identify the foreign application to which priority is claimed. Revised to
216
indicate that for original applications filed under 35 U.S.C.111(a) and international applications, entering the national stage under 35 U.S.C. 371, the examiner should ensure that the claim for foreign priority is timely. Updated form paragraph 2.19. —Revised discussion specific to applications filed before September 16, 2012, for consistency with 37 CFR 1.55(n). Revised text to clarify that if the nonprovisional application and the certified copy of the foreign application do not name the same inventor or do not have at least one joint inventor in common, the priority date should be refused until the inconsistency is resolved. —Revised to clarify circumstances under which a United Kingdom "complete specification" is treated as a different application than the United Kingdom "provisional specification."
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Section title revised to "Perfecting Claim for Priority Under 35 U.S.C. 119(a)-(d) or (f) After Issuance of a Patent."
216.01
—Revised to update 35 U.S.C. 119(b) and add 37 CFR 1.55(e)-(g) pertaining to delayed priority claims and delayed submission of the certified copy of the priority document. Added text explaining that the failure to perfect a claim to foreign priority prior to issuance of the patent may be cured via a certificate of correction under 35 U.S.C. 255 and 37 CFR 1.323 , provided the requirements of 37 CFR 1.55 are met, or by filing a reissue application. —Moved discussion of Brenner v. State of Israel to subsection II and discussion of In re Van Esdonk to subsection I. —Added subsection I. Perfecting Priority Claim Via Certificate of Correction to explain that 37 CFR 1.55(g) eliminates the need in many instances to file a reissue application in order to perfect a claim for foreign priority, and to provide specific examples pertaining to 37 CFR 1.55(e) - (g) and 37 CFR 1.55(h). —Added subsection II. Perfecting Priority Claim Via Reissue to explain that in circumstances where a claim to foreign priority benefits cannot be perfected via a certificate of correction because the requirements of 35 U.S.C. 119(a) - (d) or (f) had not been satisfied in the patented application, or its parent, prior to issuance, and the requirements of 37 CFR 1.55 are not met, the claim to foreign priority benefits can be perfected only by way of a reissue application. —Revised to update 37 CFR 1.57(b)(formerly 37 CFR 1.57(a)) and to update cross-references to paragraphs of 37 CFR 1.57.
217
—Subsection I revised to indicate that the provisions of 37 CFR 1.57(b) are applicable to inadvertently omitted from an application that claims priority to, or the benefit, a prior-filed provisional, nonprovisional, international, or international design application. —Revised subsection II.F to indicate that pursuant to 37 CFR 1.57(b)(3), an amendment to add inadvertently omitted material must be by way of a petition pursuant to 37 CFR 1.53(e). Added subsection II.H directed to amendments to an international design application pursuant to 37 CFR 1.57(b)(1). —In subsection III, Example 3, replaced "the effective date of 37 CFR 1.57(a)" with "September 21, 2004" for clarification. —In subsection IV, updated form paragraph 6.19.02.
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CHAPTER 300:
—Updated 35 U.S.C. 261 to reflect revisions made in the PLT.301 —Updated 37 CFR 3.1 for consistency with the Hague implementation rule, adding international design applications designating the U.S. to the definition of "application" for the purposes of 37 CFR Part 3. —Revised the last paragraph of the section to add applications filed under 35 U.S.C. 385 to the list of applications wherein an assignment may contain the statements required to be made in an oath or declaration. —Updated 37 CFR 3.11 and the corresponding text in the section to specify that "other documents" that may be recorded at the discretion of the Director are documents "relating to interests in patent applications and patents."
302
—Revised the second paragraph of the section by deleting the reference to the Cooperative Research and Technology Enhancement Act of 2004 (CREATE Act). —Updated 37 CFR 3.21 for consistency with the Hague implementation rule adding the manner in which an international design application must be identified in an assignment.
302.03
—Updated 37 CFR 3.31(h) for consistency with the PLT implementation rule, which provides that the assignment cover sheet required by 37 CFR 3.28 will be satisfied by certain Patent Law Treaty model forms.
302.07
—Updated 37 CFR 1.4 for consistency with the PLT implementation rule, which specifies how electronically submitted correspondence must be signed and the certifications made by submission of signed correspondence.
302.10
—Revised last paragraph by adding an exception to when substitute or continuation-in-part applications require the recordation of a new assignment if they are to be issued to an assignee,
306
i.e., if the substitute or continuation-in-part application is filed on or after September 16, 2012, and the assignee is the original applicant therein. —Revised to add that the recordation of a new assignment is not required in an application that both claims the benefit of a provisional application and adds matter not in common with the
306.01
provisional application if the application claiming the benefit is filed on or after September 16, 2012, and the assignee is the original applicant therein. —Updated 37 CFR 1.46 for consistency with the Hague implementation rule.308 —Revised Editor Note in 37 CFR 1.46 to include a reference to 35 U.S.C. 385 and a reference to "pre-Hague" 37 CFR 1.46. —Revised to add cross-reference to MPEP § 1701 for additional restrictions on Office employees.309 —Revised last paragraph to change the references to "prior copending" or "earlier" applications to "related" applications. Deleted cross-references to 37 CFR 1.78(a) and MPEP § 211 et seq. and specified the relevant paragraph of 37 CFR 1.77, i.e. 37 CFR 1.77(b)(1) - (3).
310
—Revised title by deleting first occurrence of "Other."313 —Revised text for consistency with 35 U.S.C. 261 and 37 CFR 3.11. Revised to replace the specific indication of where documents will be recorded (i.e., the Assignment Division) with "the Office." —Further revised to specify that in addition to documents that constitute a transfer or change of title, other documents relating to interests in patents or applications will generally be recorded. Added explanation that documents not accepted for recording include attorney's liens against patents or patent applications, citing to In re Refusal of Assignment Branch to Record Attorney's Lien, 8 USPQ2d 1446 (Comm'r Pat. 1988). Revised third paragraph, second sentence, by changing "Office" to "purported assignee" to correct an error. —Added cross-references to MPEP § 512 and MPEP § 513.317.02
Rev. 07.2015, November 201517
CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Revised by deleting "due to a typographical error" in first sentence of first paragraph because the discovery of an improperly recorded assignment or name change is not limited to typographical errors.
323.01(c)
—Revised to clarify by adding the explanation that petitions to correct, modify, or expunge an assignment record "will not result in the removal of a document from the assignment records."
323.01(d)
Further revised by adding an indication that assignment records are recognized as distinct from application file records. —Added the following explanation at the end of the section: "A redacted version of the 'expunged' document must be recorded and will appear in the assignment records instead of the 'expunged' document upon the granting of the petition. An additional assignment of the 'correct' document may be recorded in addition to the redacted version where the redacted version is incomplete or the original document was not correct." —Revised Editor Notes under (pre-AIA) 37 CFR 3.71 and pre-AIA 37 CFR 3.73 to include references to 35 U.S.C. 385. In subsection VII, changed "37 CFR 1.131" to "37 CFR 1.131(a)."
324
—Revised Editor Notes under 37 CFR 3.71 and 37 CFR 3.73 to include references to 35 U.S.C. 385. Revised "37 CFR 1.46(c)" to read "37 CFR 1.46(c)(2)" throughout section. Revised third
325
paragraph to indicate that the owner or assignee "can consent" (rather than "consents") to the filing of a reissue application. In subsection VII, changed "37 CFR 1.131" to "37 CFR 1.131(a)."
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CHAPTER 400:
—In subsection I, added cross-reference to MPEP § 601.03(a) explaining change of correspondence address in applications filed on or after September 16, 2012, and MPEP § 601.03(b) for change of correspondence address in applications filed before September 16, 2012.
402
—Added cross-references to MPEP § 1807 for representation in international applications (PCT) and MPEP § 2911 for representation in international design applications.
402.01
—Updated 37 CFR 1.32. In subsection II, added reference to 35 U.S.C. 386(c) in the context of powers of attorney in prior national applications to which benefit is claimed.
402.02(a)
—In subsection III, deleted information pertaining to applications filed before September 16, 2012, and added a link to forms available on the USPTO website. —In subsection III, deleted information pertaining to applications filed on or after September 16, 2012, and added reference to forms PTO/SB/80 and PTO/SB/81.
402.02(b)
—Updated 37 CFR 11.18.402.03 —Deleted form PTO/SB/83 and replaced with form PTO/AIA/83.402.06 —Updated Form PTO/SB/80.402.07 —Updated 37 CFR 1.33.403.01(a) —Updated Form PTO/SB/84.405 —Revised section title to read "Interviews With Patent Practitioner of Record." Revised text to indicate an examiner may contact the patent practitioner of record in the application (in accordance with MPEP § 502.03) to suggest a telephonic, personal, or video conference interview.
408
—Replaced indication that a patent practitioner not of record should not be given information relative to the application by telephone with a cross-reference to MPEP §§ 101 -104 for information regarding access to application information by persons other than a patent practitioner of record. —Deleted reference to practitioners having offices or representatives in the Washington area. —At the end of subsection II, added cross-reference to MPEP § 1702.409.03(d) —Updated 37 CFR 1.46.409.05 —Updated 37 CFR 1.4. Provided additional guidance on certifications before the Office consistent with 37 CFR 1.4(d)(4) and (5) and 37 CFR 11.18(b). Revised to change cross-reference from
410
37 CFR 1.137(b) to 37 CFR 1.137(a) because the unintentional delay standard has been relocated to 37 CFR 1.137(a).
Rev. 07.2015, November 201519
CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
CHAPTER 500:
—Updated 37 CFR 1.1 and 1.4. Revised subsection I to include reference to requests for supplemental examination.
501
—Updated 37 CFR 1.5 and 1.6. Revised to indicate that papers filed in association with a supplemental examination proceeding should identify the patent number and the supplement examination request control number.
502
—Updated 37 CFR 1.6. Revised to indicate that correspondence in international design applications and requests for supplemental examination may not be submitted via facsimile.
502.01
—Updated 37 CFR 1.4. Revised to indicate that a graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) or S-signatures as provided for in 37 CFR 1.4(d)(2) will be accepted when submitted via the Office electronic filing system.
502.02
—Revised to incorporate changes associated with Change to Internet Usage Policy to Permit Oral Authorization for Video Conferencing Tools by Patent Examiners, 80 FR 23787 (April 29, 2015).
502.03
—Section rewritten in its entirety to parallel the organizational structure of the April 2011 Legal Framework for EFS-Web (available at
502.05
www.uspto.gov/patents-application-process/applying-online/legal-framework-efs-web-06april11), and to reflect the current abilities and requirements of the Office Electronic Filing System (EFS-Web). —Subsection I is directed to the Legal Framework for EFS-Web, and subsection II provides additional information. Subsections I.A – I.G correspond to sections A – G of the April 2011 Legal Framework; subsections I.H – I.N reorganize sections H – J of the April 2011 Legal Framework and add additional information. Subsection II references the USPTO website for additional information on EFS-Web and PAIR. Pertaining to subsection I, following is a summary of the major differences between MPEP § 502.05, subsection I and the April 2011 Legal Framework.
502.05
—I.A. General Information on EFS-Web - revised to provide updated general information on web-based documents such as ePetitions and eTerminal Disclaimers submitted via EFS-Web. —I.B. Legal and Document Policies - revised to update the listing of applications and documents that are permitted to be filed via EFS-Web to provide for international design applications, supplemental examination requests, third-party preissuance submissions, citation of prior art and written statements in patent files, and web-based documents such as ePetitions and eTerminal Disclaimers. Clarified that registered users may not file follow-on documents in applications, reexamination proceedings, or supplemental examination proceedings, unless the practitioner is of record or acting in a representative capacity. Added listing of papers which may be filed and processed electronically by registered users, including: request for withdrawal as attorney or agent; ePetition for Revival of an Application for Patent Abandoned Unintentionally Under 37 CFR 1.137(b); Petition to withdraw an application from issue under 37 CFR 1.313; Petition for revival of an application under 37 CFR 1.137; eTerminal Disclaimers for nonprovisional utility applications under 37 CFR 1.321; and Petition to correct assignee after payment of Issue Fee under 37 CFR 3.81(b). —I.C. Electronic Acknowledgement Receipt and Date of Receipt - revised to clarify that the EFS-Web system records as the date of receipt of documents the local time and date in Alexandria, Virginia. —I.D. Proper Usage of EFS-Web - revised to clarify that providing an incorrect application number and confirmation number when filing a follow on document will result in the follow on document being entered in the wrong application. —I. E. Security and Authentication - revised to clarify that a Public Key Infrastructure (PKI) certificate holder has thirty (30) days to update changes to information in the certificate of action form and may only use his or her certificate to attempt to access applications which the certificate holder is authorized to access.
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—I.F. Signature Policy - revised to reflect changes to 37 CFR 1.4(d)(3) which permit the use of a graphic representation of a handwritten signature as provided for in 37 CFR 1.4(d)(1) or of an S-signature as provided for in 37 CFR 1.4(d)(2). —I.G. Submission of Pre-Grant (Eighteen-Month) Publication Requests via EFS-Web - revised to update form numbers. —I.H. Submission of Supplemental Examination Requests via EFS-Web – subsection added to provide that supplemental examination requests may be submitted via EFS-Web. Information in April 2011 Legal Framework section H moved to subsection I.K. —I.I. Filing of Third-party Preissuance Submissions and Citation of Prior Art and Written Statements in Patent Files Filed via EFS-Web – new subsection added to provide that third-party preissuance submissions and citation of prior art and written statements in patent files may be submitted via EFS-Web. Information in April 2011 Legal Framework section I moved to subsections I.K and I.L. —I.J. Submission of Interim Copies of Foreign Priority Documents via EFS-Web – new subsection added to provide that interim copies of foreign priority documents may be submitted via EFS-Web. Information in April 2011 Legal Framework section J moved to subsection I.M. —I.K. Submission of Photographs and Drawings via EFS-Web – subsection I.K includes information in April 2011 Legal Framework section I pertaining to the submission of drawings and photographs via EFS-Web and further revised to provide for international design applications, supplemental examination proceeding and to clarify that a petition under 37 CFR 1.84 to accept color drawings does not apply to design applications. —I.L. Text Files and File Limits – subsection I.L includes information in April 2011 Legal Framework section I pertaining to the submission of text files and file limits via EFS-Web and is further revised to address file limits for international design applications. —I.M. International Applications (PCT) and Associated Documents – subsection I.M includes information in April 2011 Legal Framework section J pertaining to the submission of international applications (PCT) and documents therefor via EFS-Web and is further revised to indicate that color drawings are not permitted in PCT international applications. —I.N. International Design Applications and Associated Documents – new subsection added to include information concerning the filing of international design applications and associated documents via EFS-Web. —Updated 37 CFR 1.54. Revised to indicate that the Office includes the application's confirmation number on the cover sheet accompanying Office actions and on filing receipts. Also revised to indicate
503
a nonprovisional application filed on or after December 18, 2013 may receive a filing date when filed with or without claims. —Updated 37 CFR 1.6.505 —Updated 37 CFR 1.53. Revised to distinguish between the statutory requirements for a nonprovisional utility application and a design application to have a filing date granted. Revised to update information concerning the processing of incomplete applications.
506
—Revised to distinguish between the requirements associated with the accordance of a filing date for nonprovisional utility and design applications.
506.02
—Replaced 37 CFR 1.52(d)(1) with 37 CFR 1.52(d).507 —Revised to indicate that applications are scanned and loaded into the Image File Wrapper system upon filing.
508
—Removed reference to patent lapses.508.04 —Updated 37 CFR 1.23.509 —Updated 37 CFR 1.25. Added explanation that fees in an international design application may be charged to a deposit account.
509.01
—Revised to indicate that, once small entity status is established, fee payments may be made without regard to change in status until the payment of the issue fee is due or a maintenance fee is due.
509.02
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Updated 37 CFR 1.27 and 1.4. Removed reference to former versions of USPTO forms being acceptable. Revised subsection IV to include circumstances in which payment of the individual designation fee in an international design application would qualify as an assertion of small entity status.
509.03
—Revised to indicate that a micro entity fee may be available in ex parte reexamination proceedings filed under 37 CFR 1.510 only when the request is filed by the patent owner.
509.04
—Updated 37 CFR 1.29.509.04(f) —Revised to add reference to the USPTO access control procedures which may affect visitors to the USPTO campus.
510
—Updated 37 CFR 1.10; removed reference to former Express Mail service of the USPS.511 —Updated 37 CFR 1.8. Removed reference to paper processing instructions.512 —Removed references to prior Express Mail service from the USPS. Updated 37 CFR 1.6 and 1.10. Removed reference to Nitto Chemical Industry. Co., Ltd. v. Comer, 39 USPQ2d 1778 (D.D.C. 1994).
513
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CHAPTER 600:
—Removed alternative citations to pre-AIA 35 U.S.C. 112, except in form paragraph text.Passim —Updated cross-references to paragraphs of 37 CFR 1.57 because the former provisions of paragraphs (a) - (f) were moved to paragraphs (b) - (h) in the PLT implementation rule, and new paragraph (a) pertaining to reference filing was added. —Deleted or modified the discussion of filing a petition under 37 CFR 1.57(a)(3) for consistency with the PLT implementation rule; pursuant to 37 CFR 1.57(b)(3), an amendment to add inadvertently omitted subject matter from a priority or benefit application must be by way of a petition pursuant to 37 CFR 1.53(e) accompanied by the fee set forth in 37 CFR 1.17(f). Updated all forms. —Added current 35 U.S.C. 111 as amended by the PLTIA. Designated the version of 35 U.S.C. 111 in effect prior to the PLTIA as "pre-PLT (AIA)" and added an Editor Note to state
601
its applicability to applications filed on or after September 16, 2012 but prior to December 18, 2013. Also added explanation that the pre-AIA 35 U.S.C. 111 requirements substantially correspond to those of pre-PLT (AIA) 35 U.S.C. 111, but do not include conforming amendments with regard to the oath or declaration provisions and other miscellaneous provisions of the AIA. —Updated 37 CFR 1.51. —In subsection I, in the first paragraph, added "which is governed by 37 CFR 1.41" after "naming of the inventors" for clarification. —In subsection II, in the first paragraph, in light of the changes to 35 U.S.C. 111(a), clarified that an application filed under 35 U.S.C. 111(a) requires claims before examination. —In subsection III, added or updated cross-references to portions of the MPEP that discuss continuation applications, commencement and entry into national stage of international applications, international design applications, and supplemental examination. —Added current 37 CFR 1.53 as amended in the PLT implementation rule. Designated the version of 37 CFR 1.53 in effect prior to the PLTIA as "pre-PLT (AIA)," added an Editor
601.01
Note to state its applicability to applications filed prior to December 18, 2013. Also added an Editor Note to pre-AIA 37 CFR 1.53 to discuss the applicability of certain paragraphs to applications filed before September 16, 2012. —Modified text to explain that the filing date requirements for applications, other than design applications, filed on or after December 18, 2013 have changed in that claims and drawings are no longer required to receive a filing date. Pertaining to subsection I. Application Filing Requirements:601.01(a) —In subsection I, added text to explain the filing date requirements for nonprovisional applications filed on or after December 18, 2013. For example, except for design applications, the filing date of an application under 35 U.S.C. 111(a) is the date on which a specification is received in the Office. Modified text to clarify that applications filed prior to December 18, 2013 are subject to pre-PLT filing date requirements, and therefore are required to include a description, at least one claim, and any necessary drawings to receive a filing date. —In subsection I, added text to state that for design continued prosecution applications (which are not available for international design applications) filed on or after September 16, 2012 an inventor's oath or declaration is not required if the prior application contains an application data sheet with the name, residence, and mailing address for each inventor, in accordance with 37 CFR 1.53(d)(1)(ii) as revised in the interim rule Changes to Continued Prosecution Application Practice, 79 FR 12384 (March 5, 2014)(adopted as final, 79 FR 68121 (November 14, 2014)). Revised text to include benefit claims to international design applications under 35 U.S.C. 386(c).
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
Pertaining to subsection II. Completion of Nonprovisional Application Under 35 U.S.C. 111 Subsequent to Filing:
601.01(a)
—Added new subsection II.A that discusses the completion of nonprovisional applications, except for design applications, which are filed on or after December 18, 2013. —Redesignated former subsection II.A as II.B, and modified the Editor Note to update applicability information. —Added text to subsection II.B to explain that 37 CFR 1.53(f) was further revised, effective December 18, 2013, to require that the inventor's oath or declaration or substitute statement must be filed no later than the date the issue fee is paid. Deleted the parenthetical discussing the use of the inventor's oath or declaration from a prior application under 37 CFR 1.53(d) in view of the 2014 CPA rulemaking. —In subsection II.B, revised discussion of 37 CFR 1.53(f) for consistency with the PLT implementation rule. Also added text to clarify that if applicant fails to properly reply to a "Notice Requiring Inventor's Oath or Declaration" before or with payment of the issue fee, then the application will be regarded as abandoned. —Redesignated former subsection II.B as II.C, and modified the Editor Note to update applicability information. Pertaining to subsection III. Application Under 35 U.S.C. 111(a) Filed By Reference:601.01(a) —Added new subsection III to discuss filing an application under 35 U.S.C. 111(a) by reference to another application. Includes 35 U.S.C. 111(a) and (c), and 37 CFR 1.57(a), as revised by the PLTIA and PLT implementation rule, respectively. —Subsection III provides a detailed explanation of reference filing requirements. As provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application under certain conditions. —Added text to explain the filing date requirements for provisional applications filed on or after December 18, 2013. For example, the filing date of an application under 35 U.S.C. 111(b) is the date on which a specification is received in the Office.
601.01(b)
—In subsection I, added that a provisional application is not entitled to claim priority or benefit to a prior-filed application under 35 U.S.C. 386.
601.01(c)
—In subsection II, added an Editor Note to explain the limited applicability of certain paragraphs of 37 CFR 1.53 to applications filed under 35 U.S.C. 111 on or after December 18, 2013, and revised the text of 37 CFR 1.53(c) as amended by the PLT implementation rule. Added text to clarify the requirements for converting a provisional application into a nonprovisional application in light of filing date requirement changes. —Modified text to clarify the filing date requirements of an application in light of the PLT implementation rule.
601.01(d)
—In subsection I, in the last paragraph, revised text to reflect that provisional application files are held in the Office's Image File Wrapper (IFW) system and will be automatically abandoned at the end of the pendency period. —In subsection II, paragraph (B), clarified that an application is not entitled to a filing date if the application was filed under 35 U.S.C. 111(a) prior to December 18, 2013 or is a design application and omitted a specification. —Revised title of subsection III to read "Application Forwarded to Examiner." Added text to explain the filing date requirements for design applications and for applications other than design applications filed on or after December 18, 2013. Also revised text to include international design applications as applications for which benefit can be claimed under 37 CFR 1.78.
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—Added an Editor Note to limit applicability of this section to nonprovisional applications filed prior to December 18, 2013 or to design applications. Similarly, modified text to clarify the applicability of the guidance provided in this section.
601.01(e)
—Added a sentence to clarify that for nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, there is no need to request conversion to a provisional application because such applications do not require presentation of at least one claim to obtain a filing date. —Added an Editor Note to limit applicability of this section to nonprovisional applications filed prior to December 18, 2013 or to design applications. Similarly, modified text to clarify
601.01(f)
the applicability of the guidance provided in this section. Also, revised text to include an international design application as an application for which benefit can be claimed under 37 CFR 1.78. —Modified text to clarify the different filing date requirements in regard to submitting drawings. Drawings if necessary as provided for in 35 U.S.C. 113 are required upon filing
601.01(g)
for applications filed prior to December 18, 2013 and for design applications. For applications filed under 35 U.S.C. 111 on or after December 18, 2013, except for design applications, drawings are not required to receive a filing date. —In subsection I, revised text to include an international design application as an application for which benefit can be claimed under 37 CFR 1.78. Also, deleted text that reflected discontinued paper processing and inserted text that reflects electronic processing and storage of files. In the last paragraph, clarified when correction is required if, in applications filed with drawings with several views, the specification is not consistent with the drawings as labelled. —Added "of attorney" after "power" in first paragraph in order to provide proper nomenclature.601.02 —Changed "would be" to "is" to improve grammar in the paragraph starting with "The submission of a daytime …."
601.03(a)
—Changed "would be" to "is" to improve grammar in the paragraph starting with "The submission of a daytime …" and corrected several other errors in grammar.
601.03(b)
—Added "a nonprovisional international design application" to the list of applications in which an application data sheet may be submitted.
601.05
—Updated 37 CFR 1.76 and the discussion thereof for consistency with the Hague implementation rule. Added text to the Editor Note to explain that the changes to 37 CFR
601.05(a)
1.76(b)(3) are only applicable to applications filed under 35 U.S.C. 111 on or after December 18, 2013. —In subsection I, added a new paragraph to discuss application data sheet (ADS) requirements for reference filing under 37 CFR 1.57(a). Also, added an explanation regarding the requirements of 37 CFR 1.46(b) if an application entering the national stage under 35 U.S.C. 371, or a nonprovisional international design application, is applied for by a person other than the inventor under 37 CFR 1.46(a). —In subsection II, revised the title to include "or information otherwise of record" and revised text to clarify that a corrected or updated ADS is required even if an ADS was not previously filed. Also, revised text to clarify that in an ADS, identification of information that is being changed is not required for an ADS included with the initial submission under 35 U.S.C. 371 and that any change to inventorship, foreign priority, and domestic benefit must comply with the requirements of 37 CFR 1.48, 37 CFR 1.55, and 37 CFR 1.78, respectively. Also, modified text to state that a corrected ADS should be filed with a request for a corrected filing receipt unless accompanied by a request to take some other action and to further clarify how changes should be indicated on a corrected ADS.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—In subsection III, added 37 CFR 1.64 to the listing of "37 CFR 1.63 or 1.67" to accurately reflect the language in the current version of 37 CFR 1.76. Added text to explain that 37 CFR 1.76(d)(2) provides that information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form or certain Patent Law Treaty Model Forms. Also, at the end of the first example, added "with underlining for inserts and strike-through or brackets for text removed." Added cross-references to MPEP §§ 602.01(c) et seq. and 605.01, subsection II. —In subsection IV, added several paragraphs to discuss newly added provisions of 37 CFR 1.76(f) and (g) that permit use of Patent Law Treaty Model International Forms as appropriate or the Patent Cooperation Treaty Request Form in lieu of an application data sheet under 37 CFR 1.76 to provide certain information. —Updated 37 CFR 1.76 for consistency with the PLT implementation rule and added an Editor Note to clarify its applicability.
601.05(b)
—In subsection I, clarified that the applicant's suggested classification and TC assignment may be provided but the Office no longer uses such information. Also, deleted the paragraph about providing classification information for provisional applications because the Office does not use such information. —In subsection III, added text to explain that information in the application data sheet will also govern when inconsistent with the information supplied at any time in a Patent Cooperation Treaty Request Form or certain Patent Law Treaty Model Forms in accordance with 37 CFR 1.76(d)(2). Deleted text that discussed correction of a typographical or transliteration error in the spelling of an inventor's name because it is does not reflect current Office policy. Added text to state that if an inventor's name is incorrect, a request under 37 CFR 1.48(f) is required as is explained in MPEP§ 602.01(c)(2). —Added a new subsection heading "IV. ADDITIONAL INFORMATION" in order to mirror the structure in MPEP § 601.05(a). In subsection IV, added text to refer to MPEP § 601.05(a) for a discussion of the provisions of 37 CFR 1.76(f) and (g). —Revised subsection I to update 37 CFR 1.41 and add text to explain the provisions of new 37 CFR 1.41(f).
602.01
—Updated 35 U.S.C. 115(g)(1) and 37 CFR 1.63(d)(1).602.01(a) —In subsection I.A, added a paragraph explaining that 37 CFR 1.1021(d)(3) provides an alternative to the requirement in 37 CFR 1.63(b) to identify an inventor for nonprovisional international design applications. —In subsection I.A, revised text of the first paragraph to clarify when inventorship is set in an application.
602.01(c)
—In the Editor Note, changed "applications" to "requests" to more accurately state the applicability of pre-AIA 37 CFR 1.48 as to requests filed before September 16, 2012. Inserted
602.01(c)(1)
the current version of 37 CFR 1.48 which reflects the provisions in effect as amended by the AIA implementation rule packages. Deleted the sentence "A request filed on or after September 16, 2012 under 37 CFR 1.48(a) or (d) will generally correct inventorship in the application in which it is filed" because it was duplicative of other text in the section. —In subsection I, added a sentence to the end of the second paragraph to explain that the ADS must identify information being changed with underlining and strike-through or brackets, as appropriate. —In subsection III, added the parenthetical "(in addition to the processing fee)" after 37 CFR 1.17(d). —In subsection IV, added a sentence indicating that when an inventor is being added, applicants should file a corrected ADS or new cover sheet providing the residence of all inventors.
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—In the Editor Note, deleted "in an application" to more accurately state the applicability of pre-AIA 37 CFR 1.48 as to requests filed before September 16, 2012.
602.01(c)(2)
—Revised text to clarify the procedures for correcting inventorship by adding a parenthetical after "desired order" and adding the clause "[i]n addition to the corrected application data sheet," to the beginning of the last sentence. —In the Editor Note, delete two instances of "in an application" and inserted "requests for" to more accurately state the applicability of current 37 CFR 1.48 as to requests filed on or
602.01(c)(3)
after September 16, 2012. Inserted "pre-AIA" before certain regulations (e.g., 37 CFR 1.48 and 37 CFR 1.63) to clarify which version of the regulation is being discussed. —In subsection II, added the phrase "but prior to September 16, 2012" in Example A. In subsection III.E, updated form paragraphs 2.13 and 2.14.01. —Revised the section title to "Office Finds the Inventor's Oath or Declaration Defective" in order to clarify that this section is limited to policies and procedures when the Office finds
602.03
an error. In the first paragraph, added "for applications filed on or after September 16, 2012 following "condition for allowance" to clarify that delayed filing of an inventor's oath or declaration until allowance is limited to applications filed on or after September 16, 2012. —Added an Editor Note to 37 CFR 1.66 to state its applicability only to patent applications filed under 35 U.S.C. 111(a) or 363 on or after September 16, 2012.
602.04
—Deleted the first paragraph as duplicative of the Editor Note.602.05(a) —Deleted the first paragraph as duplicative of the Editor Note.602.05(b) —In subsection III, deleted the one of the repetitious phrase "in an application filed" in the last paragraph.
602.08(a)
—In subsection I added a cross-reference to MPEP § 402.03 for a further discussion of signature requirements. Clarified the fourth paragraph by revising the text to indicate it is
602.08(b)
improper for an applicant to sign an oath or declaration which is not attached to or does not identify "the application (e.g., a specification and drawings) to which it is directed." Added a sentence to refer to 37 CFR 1.1021(d) and 1.1067 for nonprovisional international design applications. Inserted "pre-AIA" prior to "35 U.S.C. 102(e)" to clarify that the citation is to the provision in effect on March 15, 2013. —In subsection III.A, in the last sentence of the second paragraph added "along with a petition under 37 CFR 1.182" after "certificate of correction." In subsection III.B, added a sentence to clarify that the corrected ADS must identify the information being changed. —Added items (C) and (D) and relettered the remaining items in order to be consistent with 37 CFR 1.5(a).
602.08(c)
—Inserted 35 U.S.C. 116 as amended by the AIA, and added "(pre-AIA)" to the version of 35 U.S.C. 116 in effect prior to September 16, 2012.
602.09
—In subsection II, added "(pre-AIA)" in the title of 37 CFR 1.67 to clarify that it is the version in effect for applications filed prior to September 16, 2012.
603
—Added text regarding inventorship requirements for international design applications.604 —In subsection I, added an Editor Note and updated 37 CFR 1.46(b) and (c) to reflect changes made in the Hague implementation rule. At the end of the last paragraph, added two sentences
605.01
to state that the corrected ADS must identify the information being changed and the effect of changing the name of the applicant recorded pursuant to Hague Agreement Article 16(1)(ii). —In subsection II, in the first paragraph, added "in accordance with 37 CFR 1.76(c)(2)." —Added "(pre-AIA)" in the title of 37 CFR 1.41 and 1.45 to clarify that they are the versions in effect for applications filed prior to September 16, 2012.
605.02
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Deleted "a formal" and inserted "an" prior to "examiner's amendment" for proper current nomenclature. Inserted a cross reference to MPEP § 1302.04(a) regarding an examiner's amendment that changes the title of invention.
606.01
—In subsection I, added "For international design applications under 35 U.S.C. 385, see 37 CFR 1.1031 for the required fees."
607
—In subsection II, added text in the first paragraph to clearly explain the Office's procedure for counting pages of preliminary amendments submitted on the filing date, and to indicate that the Office will not count the sheets of paper making up any English translation of a non-English language specification if submitted with the application on filing. —In subsection III, added a paragraph to explain the application of excess claim fees for nonprovisional applications filed under 35 U.S.C. 111(a) without claims. —Deleted the phrase "Jumbo Application" in form paragraph 6.31 and the discussion thereof because the Office no longer characterizes applications as "jumbo."
608.01
—In subsection I, updated 37 CFR 1.52 and 1.58. Inserted a reference to and website address for the EFS-Web Legal Framework. —In subsection V, added text and cross-references to MPEP § 601.01(a), subsection III, pertaining to reference filing. Added "via EFS-Web" to the recommended ways to file original application papers. —In subsection VI, modified language for consistency with 37 CFR 1.58(a) as revised by the PLT implementation rule. —Added "(e.g., not required)" after "preferable" to clarify that the order of arrangement of the specification elements is not a requirement. Also, added "in compliance with 37 CFR
608.01(a)
1.76" after "application date sheet" in the fifth paragraph of text. Updated form paragraphs 6.01 and 6.02. —Updated 37 CFR 1.72 regarding the requirements (e.g., a recommended word limit) for an abstract.
608.01(b)
—In subsection I.A, clarified language that a reader should be able to quickly determine the nature and gist of the invention and what is new from a cursory inspection of the abstract. In subsection I.B, deleted redundant sentences regarding compounds or compositions in chemical patents. Revised subsection I.C for consistency with 37 CFR 1.72 regarding the recommended word limit for an abstract. In subsection I.D, deleted the phrase "with any necessary editing and revision on allowance of the application" and inserted a new sentence to discuss the same with a reference to MPEP § 1302.04. After the third sample in subsection I.E, added subsection heading "F. Form Paragraphs." In subsection I.F, updated form paragraphs 6.14, 6.15, 6.16, and 6.16.01. —Added "(but is not required to)" after "may" to clarify that the suggested elements in the background of the invention are not required.
608.01(c)
—In first paragraph, deleted redundant text indicating that stereotyped general statements should not be in the brief summary of invention.
608.01(d)
—Added text to limit applicability of the citation of MPEP § 601.01(f) to applications, other than design applications, filed prior to December 18, 2013. Similarly, modified text to clarify
608.01(f)
the applicability of the guidance provided in MPEP § 601.01(g). Updated 37 CFR 1.84(a)(2) and (y) as amended by the Hague implementation rule. —Revised section title to "Claims Present on the Application Filing Date." In the first paragraph, "original claims" was replaced with "claims present on the filing date of the application." Second paragraph revised for consistency with current nomenclature.
608.01(l)
—In form paragraph 6.18.01, added a reference to 37 CFR 1.75(h).608.01(m) —Corrected 35 U.S.C. 112(e) by inserting missing heading. In subsection I.E, deleted "when granting the filing date" after "Office of Patent Application Processing." In subsection I.G.1,
608.01(n)
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added the phrase "or submitted in response to an OPAP notice requiring claims" to clarify the procedure when the application is not filed with claims. —In the second paragraph, changed "original claims" to "claims present on the filing date of the application" for clarity because claims are no longer required to be present on the filing
608.01(o)
date. In the first sentence of the third paragraph, added the phrase "including claims first presented after the application filing date where no claims were submitted on filing" for clarity. —In subsection I, updated 37 CFR 1.57 for consistency with the Hague implementation rule. Revised text to reflect the addition of 37 CFR 1.57 in 2004, and to discuss changes that
608.01(p)
occurred in 2013, i.e., the addition of a reference filing provision in 37 CFR 1.57(a) and relocation of the subject matter of former paragraph (a) to paragraph (b) of 37 CFR 1.57. Also added a paragraph that briefly discusses reference filing and refers to MPEP § 601.01(a), subsection III. —Updated form paragraph 6.28.02, examiner note 2.608.01(q) —Section title revised to read "Marks Used in Commerce and Trade Names." Added 15 U.S.C. 1127 and revised text to address trade names and marks as defined in 15 U.S.C. 1127
608.01(v)
(e.g., changed "product" to "product, service, or organization"). Form paragraph 6.20 was similarly revised to address marks and trade names. —In the last paragraph of subsection II, revised to include "and reply" after "complaint letter" to clarify that both the letter and the reply should be forwarded to the DCPEP. —Updated 37 CFR 1.81(a) as amended by the PLT implementation rule and inserted an Editor Note to state the applicability of paragraph (a). Inserted 37 CFR 1.81(a) (pre-PLT) as in effective prior to December 18, 2013.
608.02
—Revised title of subsection I and inserted new subsection I.A to discuss the filing date requirements regarding drawings for applications filed on or after December 18, 2013. Subsection I.B, directed to applications filed prior to December 18, 2013, contains the former text of subsection I, further modified to clarify when pre-PLT law and policy applies. The last paragraph of subsection I.B was further revised to state that a sequence listing or table should not be included in both the drawings and the descriptive portion of the specification in accordance with 37 CFR 1.58(a) and 1.83(a). —In subsection III, text revised to state whether pre-PLT law and policy applies or post-PLT law and policy applies. —In subsection IV, modified text to clarify that the lack of a drawing is treated as an informality and a filing date will be accorded. Deleted citations to 37 CFR 1.83 as its provisions do not apply when the drawing is missing. Clarified language regarding when the examiner may require a drawing under 37 CFR 1.81(c). —In subsection V, updated 37 CFR 1.84(a)(2) and (y) as amended by the Hague implementation rule. Inserted cross-reference to MPEP § 608.02(b) for information pertaining to the acceptability of drawings. Deleted text regarding the acceptability of good quality copies or facsimile copies and added a reference to international design reproductions and 37 CFR 1.1026. Added text to limit applicability of the citation of MPEP § 601.01(f) to design applications or applications filed prior to December 18, 2013. Similarly modified text to clarify the applicability of the guidance provided in MPEP § 601.01(g). —In subsection VII, inserted 37 CFR 1.84(a)(1). Added text in subsection VII.A pertaining to black and white drawings, including a reference to MPEP § 608.02(c) for more information. Original text is located in new subsection VII.B, further modified to clarify when black and white photographs and grayscale drawings are acceptable in utility and design applications. Deleted text regarding the requirements of photographic paper or mounted on Bristol Board. —In subsection VIII, updated 37 CFR 1.84(a)(2) as amended by the Hague implementation rule. Added text to state the required quality of the drawings. Also, revised text and FP 6.24.01
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
to state that one set of color drawings or color photographs is required if submitted via the Office electronic filing system, but three sets of color drawings or color photographs are required if not submitted via the Office electronic filing system. Text was also revised to state that color photographs or drawings will be stored in SCORE and a black and white copy will be stored in the IFW along with a SCORE placeholder sheet. Text and FP 6.24.01 were revised to limit the requirement for a petition under 37 CFR 1.84(a)(2) and (b)(2) to utility applications. Added a cross-reference to MPEP § 608.02(c). —In subsection IX, inserted a new paragraph to discuss that design applications should not generally use graphic symbols and that color drawings are permitted in design applications. Added cross references to MPEP §§ 1503.02 and 608.02. Revised the last paragraph to be limited to utility applications. —Added a citation to MPEP § 601.01(g) in reference to procedures when an application is missing drawings. Clarified text to indicate that OPAP will send a notice if drawings are
608.02(a)
unacceptable for purposes of publication and will not release applications to the technology centers until acceptable drawings are filed. —Updated 37 CFR 1.85(c) as amended by the Hague implementation rule. In subsection III, added an alternative citation to 37 CFR 1.1026 for the standard to which drawings must comply.
608.02(b)
—Added discussion of the processing and storage of drawings (including black and white line drawings, grayscale and color drawings, and black and white and color photographs)
608.02(c)
filed in various types of applications (e.g., utility applications under 35 U.S.C. 111, international applications, international design applications) or reexamination proceedings. —Updated 37 CFR 1.83(a) as amended by the PLT implementation rule.608.02(d) —In the first sentence, changed "see to it" to "ensure."608.02(e) —Updated 37 CFR 1.85(c) and 1.121(d) for consistency with the Hague implementation rule.608.02(p) —Revised text in the fourth paragraph to delete "(with no extensions of time permitted)" because current policy permits extensions of time for some notices.
608.02(z)
—In the second to last paragraph and in form paragraph 6.48, change "one month" to "two months" in light of policy changes in the implementation of the PLT.
608.03(a)
—In the first paragraph, changed "original claims" to "claims present on the filing date of the application" for clarity because claims are no longer required to be present on the filing
608.04
date. Added a cross-reference to MPEP § 211.05 for new matter in continuation or divisional applications. —Revised section title to read "Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date." Revised the first sentence by adding "present on the filing date
608.04(a)
of the application" and deleting "original" for clarity because claims and drawings are no longer required to be present on the filing date. —Added 37 CFR 1.52(a)(5) and updated 37 CFR 1.52(e) as amended by the PLT implementation rule. Revised to clarify text for consistency with 37 CFR 1.52(e).
608.05
—In subsection I, added a citation to 37 CFR 1.77(b)(5) and to form paragraphs 6.61.02 and 6.71.02. In subsection I.A, revised text to correspond to 37 CFR 1.52(e), and to state that if a sequence listing text file submitted via EFS-Web on the application filing date complies with 37 CFR 1.824(a)(2)-(6) and applicant has not filed a sequence listing in a PDF file (or on paper) on the same day, the text file will serve as both the paper copy and the computer readable form. Also, revised text to explain that submission of the sequence listing in a PDF file on the application filing date is not recommended. Added a cross-reference to MPEP § 2422.05. In subsection I.B, changed the citation to 37 CFR 1.821(c) or (e) to 37 CFR 1.824(a)(2)-(6) and (b). In subsection I.C, added "text" prior to "file types" in the first sentence.
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—In subsection II, deleted the sentence "CD-R discs must be finalize so that they are closed to further writing to the CD-R" because this requirement was removed from 37 CFR 1.52(e). Revised text to clarify the reason incorporation by reference is required. Also modified text to state that an amendment to the material on the compact disc must be done by submitting a replacement compact disc or by filing the material as text file(s) via EFS-Web. Revised form paragraphs 6.61.02 and 6.71.02. —Revised text throughout the section to indicate that as an alternative to submission on a compact disc, a computer program listing appendix may be submitted in an ASCII text file via EFS-Web.
608.05(a)
—Subsection I is further revised to state that copies of publicly available program listings are available via Public PAIR, or may be purchased from the Office on paper or compact disc. —In subsection II, revised form paragraphs 6.64.01 and 6.64.02 to discuss submission of the computer program listing via EFS-Web as a text file; form paragraph 6.64.03 has been deleted as redundant. —Subsection III revised to state that the computer program listing appendix submitted electronically via EFS-Web in ASCII text or on a compact disc will be identified in the patent. Deleted text that reflected the discontinued practice of identifying the appendix on the front page of the patent and that reflected paper processing (e.g., placing a label on the file wrapper). Revised text to state that the specification entry "should" appear at the beginning of the specification to be consistent with 37 CFR 1.77. —Revised to indicate that submission of large tables via EFS-Web as text file(s) is permitted and is preferred. Deleted the last sentence in the first paragraph regarding the requirement to finalize CD-Rs because this requirement was removed from 37 CFR 1.52(e).
608.05(b)
—Added indication that a single table contained on fifty pages or less may be submitted as part of the specification in PDF (if filed via EFS-Web), and that landscape oriented tables should not be filed via EFS-Web. —Form paragraphs 6.63.01 and 6.63.02 revised to discuss submission of tables via EFS-Web as text files. —Added cross-reference to new MPEP § 2422.03(a) which discusses in detail submission of sequence listings as ASCII text files via EFS-Web.
608.05(c)
—Updated 37 CFR 1.97(b)(3)-(5) as amended by the Hague implementation rule. In the first sentence of the second paragraph of text, deleted "filed under 35 U.S.C. 111(a)" because the duty to submit material information applies to all nonprovisional applications.
609
—In the chart in item (A), updated row (1) to add a provision concerning the time for filing information disclosure statements for international design applications as set forth in 37 CFR 1.97(b)(5).
609.01
—Added new subsection title "I. Consideration of Prior Art Cited in a Parent International Application" prior to existing text. Designated prior subheading as subsection II. IDS in
609.02
Continued Examinations or Continuing Applications. In subsection II.A.2, added "(other than an international application; see subsection I, above)" in the first paragraph and added "and the timing requirements of 37 CFR 1.97" at the end of the second paragraph for clarification. —In subsection I, added a cross-reference to MPEP § 707.05(e) for more information on citing to publications and electronic documents in the second to last paragraph.
609.04(a)
—In the introductory text and in subsection I, added information to reflect a new provision in 37 CFR 1.97(b)(5) concerning the time for filing information disclosure statements for international design applications.
609.04(b)
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—Deleted redundant text "and any citations considered will have the examiner's initials adjacent thereto (or the bottom of each page … examiner's electronic initials)" in the third paragraph.
609.05(b)
—Revised "EFS" to "EFS-Web" in multiple locations. Modified text by deleting "signing, and dating" after "initialing" or "signed, and dated" after "initialed" to make text consistent
609.07
with current procedures. Also, deleted text that referred to discontinued paper processing steps. Revised the penultimate paragraph to state that "Applicants and registered practitioners are permitted to sign portions of an EFS-Web submission, including an IDS, with an electronic signature" and deleted the reference to a 2003 version of EFS system. —Revised to delete the reference to a prior version of eDAN and to deleted the entire text regarding electronic annotation and signature as such practice covered in detail elsewhere in
609.08
MPEP § 609 et seq. Also deleted the last sentence of the first paragraph regarding IDSs annotated by hand because most IDSs are annotated electronically. Inserted a cross-reference to MPEP § 609.04(b).
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CHAPTER 700:
—Corrected reproduced 35 U.S.C. 103 (both AIA and pre-AIA) by removing "of this title."Passim —Updated 35 U.S.C. 100(i)(1)(B).701 —Added discussion of changes to filing date requirements made pursuant to the Patent Law Treaties Implementation Act of 2012 (PLTIA).
702
—Updated form paragraphs 7.01 and 7.02 to provide a two-month period for reply.702.01 —Updated 37 CFR 1.105(a)(1).704.10 —Updated discussion of 37 CFR 1.105(a)(1) to address the identification of applications filed before June 8, 1995 and the requirement that they be kept in confidence by the Office
704.11(a)
per 35 U.S.C. 122(a). References to form paragraphs 7.104.02.fti and 7.104.02.aia changed to reference form paragraph 7.104.02. —Updated form paragraph 7.95 to provide a two-month period for reply.704.12(c) —Added Form Paragraph 7.104.02 for use in requiring information from the applicant regarding rescission of a statement under 37 CFR 1.55 or 1.78.
704.14(a)
—Clarified the procedure where primary examiners from requested and requesting Technology Centers (TCs) agree that a Patentability Report from the requested TC is necessary. Deleted reference to the IFW Manual.
705.01
—Deleted indication that the Patentability Report is not given a paper number, and deleted reference to IFW Manual.
705.01(a)
—Deleted reference to IFW Manual.705.01(e) —Updated 35 U.S.C. 102(d)(2).706.02 —In subsection II, added discussion of machine translations, translation resources and conditions for making an Office action final, including a supporting citation to In re Orbital Technologies Corporation. Also moved the cross reference to MPEP § 706.07(a) and added a cross reference to MPEP § 706.07(b) regarding final actions. —In subsection IV, added reference to 35 U.S.C. 386(c). —Revised to add form paragraphs 7.03.aia and 7.03.fti, as well as an introductory sentence.706.02(a) —In subsections II and III, inserted "pre-AIPA" before "35 U.S.C. 102(e)" to indicate the version of 35 U.S.C. 102(e) in force prior to November 29, 2000. Also in subsection II, inserted "pre-AIA" with regard to 35 U.S.C. 374.
706.02(a)(2)
—Updated discussion of overcoming a prior art rejection by submitting a benefit claim under 35 U.S.C. 120 or 35 U.S.C. 119(e), or by identifying a prior foreign application under 35 U.S.C. 119(a) – (d) in items (A)-(C).
706.02(b)(1)
—Updated discussion of overcoming a prior art rejection by submitting a benefit claim under 35 U.S.C. 120 or 35 U.S.C. 119(e), or by submitting a claim to priority under 35 U.S.C. 119(a) – (d).
706.02(b)(2)
—Added an indication that, effective December 18, 2013, the PLTIA provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). Included a cross-reference to MPEP § 213.03, subsection III for more information. —Revised section text and Examiner Notes in the form paragraphs to state that a 2-month time period should be given for any reply to a requirement for information.
706.02(c)
—In subsection I, added reference to 35 U.S.C. 386(c). In subsection II, corrected date to March 15, 2013 immediately preceding the examples, and added benefit under 35 U.S.C. 365(c) or 386(c) to Example 1.
706.02(f)(1)
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—In subsection I, revised the title and notes in the form paragraphs to refer to common assignee, common applicant or at least one common joint inventor. In form paragraph
706.02(f)(2)
7.15.01.aia, note 3 further revised to clarify the conditions under which 35 U.S.C. 102(a)(2) may be applied. —Revised to rearrange the order of presentation of the form paragraphs. Revised several form paragraphs to make minor editorial changes and to clarify the applicability information in the notes.
706.02(i)
—As appropriate, revised form paragraphs to add references to international design applications and/or to 35 U.S.C. 386. Form paragraphs for provisional rejections revised to refer to a common assignee, a common applicant or at least one common joint inventor. —In form paragraph 7.15.fti, notes 3 and 5, added a reference to form paragraph 7.15.01.fti. In form paragraph 7.15.02.aia, note 9 was revised to indicate the applicant should be required to amend or cancel patentably indistinct claims using form paragraph 8.27.aia. In form paragraph 7.15.02.fti, note 10 was added. —In subsection II, changed "instructive as to" to "illustrative of." In subsection II, revised examples of rejection scenarios for clarity.
706.02(k)
—Added cross reference to MPEP § 717.02 et seq.706.02(l) —In subsection I, added ", or under an obligation to assign to" and inserted "pre-AIA" before the references to statutory sections.
706.02(l)(2)
—In subsection II, deleted sentence that referenced, but did not set forth, an exemplary statement. Further revised to delete the alternative of submitting the statement of common ownership in a separately labeled section. Clarified subsection II by adding an indication that "[t]he statement must be signed in accordance with 37 CFR 1.33(b)" and adding an explanation to examiners that the execution dates in assignment documents may not reflect the date a party was under an obligation to assign the claimed invention. —In subsection III, added an indication that the applicant or patent owner may, but is not required to, present evidence supporting the existence of a joint research agreement. —Revised "the applicant(s) or an attorney or agent of record" to "the applicant(s) or patent owner(s)" in the context of who should make a statement of common ownership.
706.02(l)(3)
—In subsection III, clarified that the availability of double patenting rejections is subject to the conditions discussed in MPEP § 804 et seq. —Revised to rearrange the order of presentation of the form paragraphs. Revised several form paragraphs to make minor editorial changes and to clarify the applicability information in the notes.
706.02(m)
—Revised the notes of several form paragraphs to delete the reference to Graham v. Deere and add a reference to MPEP § 2144. —As appropriate, revised form paragraphs to add references to international design applications. In addition, form paragraphs for provisional rejections and certain obviousness rejections revised to refer to a common assignee, a common applicant, or at least one common joint inventor. —Subsection II revised for consistency with MPEP § 2103, subsection III, MPEP § 2106, subsection II, and the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 FR 74618 (Dec. 16, 2014).
706.03(a)
—In subsection IV, revised form paragraphs relevant to the rejection of claims directed to nonstatutory subject matter for consistency with guidance that was provided to examiners on December 16, 2014 (see www.uspto.gov/sites/default/files/documents/sme_memo_20141216.pdf). —Form paragraph 7.33.01 revised to more clearly explain the lack of enablement rejection.706.03(c)
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—Revised form paragraph 7.34.11 which should be used when it cannot be determined from the specification whether the term "means" connotes function or structure.
706.03(d)
—Added form paragraphs 7.30.03.h, 7.30.03 and 7.30.04 related to claim interpretation and means (or step) plus function claim limitations.
706.03(e)
—Revised order of form paragraphs.706.03(u) —Added cross-reference to MPEP § 1207.03(a) for guidance in determining what constitutes a new ground of rejection.
706.07(a)
—Updated form paragraph 13.02.02 so it is no longer limited to authorizations made by telephone.
706.07(f)
—Cross-reference to the Notice of Appeal and the appeal fee updated to 37 CFR 41.20(b). Revised the flow chart and form paragraphs to set a two month period for reply to a notice of nonresponsive submission.
706.07(g)
—Updated 37 CFR 1.114(e).706.07(h) —Revised the discussion and form paragraphs to indicate the provisions of 37 CFR 1.114 do not apply to an international application that does not comply with 35 U.S.C. 371 or to an international design application. Updated the time periods for reply to two months. —Forms PTO/SB/30 and PTO-2051 were updated. —Revised the discussion of interviews suggested by the examiner whereby the application may be placed in condition for allowance.
707
—Updated the discussion of communications from the examiner with respect to 35 U.S.C. 132 and 37 CFR 1.104. —Added "or more" to the discussion of applications that have been pending over five years.707.02 —In view of the restructuring of 35 U.S.C. 112 for applications filed on or after September 16, 2012, deleted the words "first paragraph."
707.07(l)
—Updated 37 CFR 1.102(a) and 1.102(e)(1).708.01 —Updated 37 CFR 1.102(a) and 1.102(e)(1). Added an indication that advancement of examination under 37 CFR 1.102 may be sought via a petition to make special under 37 CFR 1.102(c) or (d), or via a request for prioritized examination under 37 CFR 1.102(e).
708.02
—In subsections III, IV, and V, added an indication that "any petition to make special filed under this subsection must comply with the requirements set forth in MPEP § 708.02(a)." —In subsection VI, added an indication that applications granted prioritized examination remain special until prioritized examination is terminated or until a final disposition of the application. Also added a cross-reference to MPEP § 708.02(b), subsection II. —In subsections III, VIII.D, VIII.E and IX, updated the discussion and form paragraphs to change the period for reply to two months and to indicate extensions of time under 37 CFR
708.02(a)
1.136(a) are permitted but the filing of a petition for an extension of time will result in the application being taken out of the accelerated examination program. Form paragraph examiner notes revised to indicate the provisions of 37 CFR 1.114 apply to an international application "that complies with 35 U.S.C. 371." —In subsection VIII.C, added reference to 35 U.S.C. 386(c). —Deleted form paragraphs 24.01.AE, 24.02.AE and 24.03.AE. —Revised to incorporate the changes, including updates to 37 CFR 1.102(e)(1), necessitated by the interim rule Changes to Permit Delayed Submission of Certain Requirements for
708.02(b)
Prioritized Examination, 79 FR 12386, March 5, 2014 (adopted as final, 79 FR 68124, Nov. 14, 2014). —Revised to indicate that any item submitted on the same day the request for prioritized examination is filed will be considered to have been filed with the request under 37 CFR 1.102(e).
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—Revised to indicate that a fee may be set by the USPTO to $0, and in such a case, that fee is considered to be paid and no additional payment is necessary for that fee. —Revised to remove outdated information concerning the time period for reply under the accelerated examination program. ——Updated discussion of the Patent Prosecution Highway Program (PPH) for consistency with the information available from
708.02(c)
www.uspto.gov/patents-getting-started/international-protection/ patent-prosecution-highway-pph-fast-track. —Added information about the USPTO's participation in the Global PPH and IP5 PPH pilot programs, and updated the information about the USPTO's PPH agreements with intellectual property offices that are not yet included in the Global PPH. —In subsection I.C, added a reference to 35 U.S.C. 386.709 —Updated 35 U.S.C. 133 and 35 U.S.C. 267.710 —Revised to indicate the time period for reply under 37 CFR 1.135(c) is generally 2 months.710.01 —Updated 37 CFR 1.136.710.02 —Revised for consistency with the PLT, which entered into force with respect to the United States on December 18, 2013 and provides for a time period of at least two months for replies to most Office actions and other notices.
710.02(b)
—Revised to eliminate discussion of petitions to revive based on unavoidable delay under former 37 CFR 1.137(a)
710.02(d)
—Updated 37 CFR 1.136.710.02(e) —Deleted the discussion of "some writing that manifested an intent to obtain an extension of time," which is no longer required for the granting of a petition filed under 37 CFR 1.136(a). —Deleted reference to IFW Manual. —Subsection III revised to include a cross-reference to 35 U.S.C. 115(f) and indicate that if a Notice Requiring Inventor's Oath or Declaration (PTOL-2306) is sent with the Notice of Allowability, the required inventor's oath or declaration must be submitted no later than the payment of the issue fee. —Updated 37 CFR 1.7(a) and updated the citation to the Executive Order regarding federal holidays that fall on a Sunday.
710.05
—Updated 37 CFR 1.138(b).711 Updated forms PTO/AIA/24, PTO/AIA/24A and PTO/AIA/24B.711.01 —Revised form paragraph 7.98.02 to remove discussion of petitions to revive based on unavoidable delay and updated the references to 37 CFR 1.137 for petitions based on unintentional delay.
711.02
—Changed "paragraph" to "subsection" in items (F) - (H).711.02(b) —Updated 37 CFR 1.137 and the discussion of petitions to revive filed under 37 CFR 1.137 to remove the discussion of petitions to revive based on unavoidable delay and references to lapsed patents.
711.03(c)
—In subsection II, included a discussion of the notable changes made by the PLTIA and included newly added 35 U.S.C. 27. —In subsection II.A, removed citation to Ex parte Richardson and added new subsection II.A.1 entitled "Abandonment for Failure To Timely Submit A Copy of the Specification And Any Drawings In An Application Filed By Reference Under 35 U.S.C. 111(c) and 37 CFR 1.57(a)." —Renumbered former subsection II.A.1 as subsection II.A.2, removed the discussion of Brenner v. Ebbert and In re Mills, and added a discussion of sections 202(b)(6) and 201(b)
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of the PLTIA. Added a discussion of the issue fee and publication fee payable when applicant changes entity status with the filing of a petition to revive. —Added new subsection II.A.3, entitled "Abandonment for Failure To Provide Required Drawings." —Renumbered former subsection II.A.2 as subsection II.A.4, removed the requirement for the appeal brief fee from item (A), and revised item (B) to include a reference to 37 CFR 1.114(b). —Renumbered former subsection II.A.3 as subsection II.A.5 and included a cross-reference to 37 CFR 1.137(f) for the revival of an application abandoned for failure to timely provide notice of a foreign filing. —In subsections II.B through II.F, removed information relating to petitions to revive on the basis of "unavoidable" delay. In addition, in subsection II.B, updated the discussion of 35 U.S.C. 41(a)(7); in subsection II.C, updated forms PTO/SB/64, PTO/SB/64a, and PTO/SB/64PCT; in subsection II.D, deleted reference to the 1887 Pratt decision and removed discussion of petitions not filed within 1 year of the date of abandonment of the application; and in subsection II.F, deleted the Haines decision and changed the cross-reference to reference 35 U.S.C. 27 instead of 35 U.S.C. 41(a)(7). —Revised to reference MPEP § 403 instead of MPEP § 402.711.04(c) —Subsections II and III were updated to incorporate changes described in the Federal Register Notice: Change to Internet Usage Policy To Permit Oral Authorization for Video Conferencing Tools by Patent Examiners, 80 FR 23787 (April 29, 2015).
713.01
—Changed the time period specified form paragraph 7.84 to two months.713.04 —Changed "no interview is permitted" to "interviews with examiners are not permitted."713.05 —Deleted reference to IFW Manual.713.08 —Updated 37 CFR 1.121(d). In subsection II.F, items (A), (C), and (F), changed "30 days or one month, whichever is later" to "two months."
714
—Updated pre-AIA 37 CFR 1.33(b). Revised form paragraph 7.84.01 to provide a two-month period for reply.
714.01(a)
—Updated cross-references in the third paragraph that formerly referenced 37 CFR 1.78(a).714.01(e) —In subsection I, inserted "(for applications filed prior to September 16, 2012)" with respect to placing a reference to a prior filed application in the first sentence(s) of the specification, corrected cross-reference to MPEP § 211 et seq., changed "one month" to "two months," deleted the phrase "so long as no new matter is included in the specification," and updated the reference to former 37 CFR 1.63(d)(1)(iii). —In subsection II, moved to the first sentence the indication that "Applicants are strongly discouraged from submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application." Changed "executed oath or declaration under 37 CFR 1.63" to "oath or declaration in compliance with 37 CFR 1.63." Deleted a discussion of the former requirement for a supplemental oath or declaration under 37 CFR 1.67 if a preliminary amendment is filed that contains subject matter not included in the specification and drawings of the application. Changed "will be required to submit a supplemental oath or declaration" to "should submit a supplemental oath or declaration." —Updated text and form paragraph 7.95 to provide a period for reply of two months.714.03 —Changed "petition" to "request" and added a reference to 37 CFR 1.48(f) in each of items (F) and (G).
714.16
—Updated 37 CFR 1.131(a)(1) and (d)(2). Changed "applicant" to "applicant or patent owner" in the context of establishing a date of completion of the invention in a NAFTA or WTO member country.
715
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—Revised to provide an updated discussion of the use of declarations (or affidavits) under current 37 CFR 1.131(a) and current 37 CFR 1.132 to overcome a rejection under pre-AIA
715.01(a)
35 U.S.C. 102(a), (e), or (f) where the rejection is based on a joint patent or published application to applicant and another. —Revised to include a requirement for an explanation of the presence of an additional inventor in the reference where the reference includes a claim reciting the subject matter relied upon in the rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination. —Revised to include a cross-reference to MPEP § 715.05 and an indication that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming another inventor which claims interfering subject matter as defined in 37 CFR 41.203(a). —In the last paragraph, changed "an applicant" to "the applicant or patent owner."715.07(c) —Added a reference to In re DeBaun with respect to an unequivocal declaration by S under 37 CFR 1.132 that he/she conceived or invented the subject matter that was disclosed but not claimed in the patent or patent application publication and relied on in the rejection.
716.10
—Revised to include a requirement for an explanation of the presence of an additional inventor in the reference where the reference includes a claim reciting the subject matter relied upon in the rejection and that subject matter anticipates or would render obvious the subject matter of a claim in the application under examination. —Revised to include a cross-reference to MPEP § 715.05 and an indication that an affidavit or declaration under 37 CFR 1.131(a) cannot be used to overcome a rejection based on a U.S. patent or U.S. patent application publication naming another inventor which claims interfering subject matter as defined in 37 CFR 41.203(a). —Corrected the citation to Ex parte Kroger. —Updated 37 CFR 1.130(d) and form paragraph 7.68.aia.717.01 —Revised the introductory text in item (A) to clarify that the list therein sets forth when the provision of 37 CFR 1.130(a) is not available. In item (A)(1), added "(e.g., patented,
717.01(a)(1)
described in a printed publication, or in public use, on sale, or otherwise available to the public) following "the disclosure was made." After item (A)(2), changed "the exceptions of 35 U.S.C. 102(b)(1)(A) or 35 U.S.C. 102(b)(2)(A) to "declarations or affidavits pursuant to 37 CFR 1.130(a)." —In item (B), corrected citation to Ex parte Kroger. —Deleted the parenthetical (E) at the beginning of the paragraph following item (D) as the text therein was not intended to be part of the list. —Revised the introductory text in item (A) to clarify that the list therein sets forth when the provision of 37 CFR 1.130(b) is not available. In item (A)(1), added "(e.g., patented,
717.01(b)(1)
described in a printed publication, or in public use, on sale, or otherwise available to the public)" following "the disclosure was made." —In subsection I, added an indication that "Anyone who has knowledge of the facts discussed in the declaration may sign a declaration under 37 CFR 1.130," and clarified text explaining
717.01(c)
it is the applicant or patent owner who may submit (i.e., file) a declaration or affidavit under 37 CFR 1.130. —In subsection I, changed "the applicant (or the applicant's representative of record)" to "the applicant (or the patent owner)" in the context of who must make the statement of common ownership.
717.02(a)
—Subsection I further revised to insert new subsections "A. Definition of Common Ownership" and "B. Evidence Required to Establish Common Ownership" and to add an
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expanded discussion of common ownership for AIA applications based on the discussion of common ownership in MPEP § 706.02(l)(2). —In subsection II, deleted discussion of practice under pre-AIA 35 U.S.C. 103(c) and added an expanded discussion of joint research agreements under 35 U.S.C. 102(b)(2)(C) and 35 U.S.C. 102(c) for AIA applications based on the discussion of joint research agreements in MPEP § 706.02(l)(2). —Corrected 37 CFR 1.104(c)(4)(ii)(A) and 37 CFR 1.71(g).717.02(b) —In subsection III, first sentence, inserted "subject to the conditions discussed in MPEP § 804 et seq."
717.02(c)
—Updated form paragraph 7.20.04.aia.717.02(d) —Updated 37 CFR 1.131(d) and corrected a cross-reference to 37 CFR 1.131(c)(2).718 —Added a reference to 35 U.S.C. 386.719 —Corrected a cross-reference to MPEP § 602.08(a), inserted a cross-reference to MPEP § 601.05(a) for the formatting of corrected Application Data Sheets for patent applications
719.02
filed on or after September 16, 2012, and inserted a cross-reference to MPEP § 601.05(b) for the formatting of Supplemental Application Data Sheets for patent applications filed prior to September 16, 2012. —Updated to indicate that "[s]earches are listed in the 'SEARCHED' boxes and/or SEARCH NOTES box of the OACS Search Notes page." Revised examples throughout to reflect Cooperative Patent Classification (CPC).
719.05
—In subsection I, revised title to "'SEARCHED' Boxes Entries" and extensively revised discussion of the "searched" box entries to reflect recording searches performed under the Cooperative Patent Classification (CPC), CPC Combination Sets, and U.S. Patent Classification (USPC) paradigms. —In subsection II: Added new subsection heading, "A. Format of Entries in the "SEARCH NOTES" Section." Replaced information type (A), limited classification search, with "Annotations associated with classification searches, as shown in the examples in subsection I above." Revised information type (B) to list "Text search performed in a particular database (where no classification search was performed)." Inserted new information type (C), "Searches made within the International Classification System (IPC)" and new information type (D) "Searches performed by the Scientific and Technical Information Center (STIC)." Former information type "(C)" redesignated as information type "(E)" and former information type "(D)" divided into two new information types, "(F)" for Searches performed in electronic journals and electronic books available to examiners on their desktop through the STIC NPL website and "(I)" for Nonelectronic searches of publications in paper form. The content from former subsection II.D is now information type (G). The content from former subsection II.C is now information type (H). —Subsection III is a new subsection directed to conducting and recording the Interference Search. Former subsection III, directed to "Information Not Recorded in the Application File," has been redesignated as subsection IV. —Added the website address for accessing the August 2012 revision of the MPEP.720 —Deleted references to the IFW Manual.724.04 —Revised subsection III to add "[h]owever, if the papers are correctly matched with the application serial number given in an electronic filing via EFS-WEB, the information is not
724.05
considered to have been submitted in the incorrect application even if the identifying information in the heading of the papers is directed toward a different application."
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CHAPTER 800:
—Revised "obviousness-type double patenting" or "ODP" to "nonstatutory double patenting" or "NDP" to reflect current terminology.
Passim
—Revised to add cross-reference to MPEP § 823 for guidance on matters set forth in MPEP Chapter 800 that apply to national stage applications submitted under 35 U.S.C. 371. Paragraph
801
added to indicate that the general principles of this chapter, with certain exceptions, apply to design applications, reissue applications, and reexamination proceedings and to provide cross-references to MPEP sections for additional information. —Revised the title of the section and the first sentence to clarify that the section is limited setting forth the basis for restriction practice.
802
—Added a cross-reference to MPEP § 804.01.803.01 —Revised to indicate that in 2007, the Office rescinded the 1996 partial waiver of the requirements of 37 CFR 1.141 et seq. with regard to restriction requirements in certain
803.04
applications claiming polynucleotide molecules. Added that for national applications filed under 35 U.S.C. 111(a), polynucleotide inventions will be considered for restriction, rejoinder, and examination practice in accordance with the standards set forth in MPEP Chapter 800. Deleted text discussing the guidance provided in the Official Gazette notice regarding the1996 partial waiver. —New section added to explain policies and procedures for restriction practice in reissue applications.
803.05
—Revised text throughout the section to add "common applicant" to the situations in which double patenting rejections may be applicable.
804 (Passim)
—Modified text throughout the section to refer to both the current statutory provisions for common ownership and joint research agreement (35 U.S.C. 102(b)(2)(C) and 102(c), respectively) and the prior statutory provisions as amended by the CREATE Act (pre-AIA 35 U.S.C. 103(c)). Pertaining to introductory text and double patenting charts:804 —In the introductory text, added a citation to Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208, 110 USPQ2d 1551 (Fed. Cir. 2014). —In the introductory text, added preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention to the purposes underlying the doctrine of nonstatutory double patenting. —Added explanation that a nonstatutory double patenting rejection may be based on an anticipation analysis, an "obviousness" analysis that is similar to, but not necessarily the same as, that undertaken with regard to 35 U.S.C. 103, or equitable principles. —Revised the double patenting charts for consistency with the AIA. Specifically, the charts cover when two applications have claims to the same invention (Charts I-A) or to patently indistinct inventions (Charts I-B) and when an application and a patent have claims to the same invention (Charts II-A) or to patently indistinct inventions (Charts II-B). One set of four charts apply when the application being examined is subject to the first to invent (FTI) provisions and a second set of four charts apply when the application being examined is subject to the first inventor to file (AIA) provisions. Added text to explain the revisions to the charts, including certain possible rejections that the charts do not address. Pertaining to subsection I. Instances Where Double Patenting Issue Can be Raised:804 —In subsection I.A, added a citation to In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013), which indicates that complete identity of ownership or inventive entities is not required in order for nonstatutory double patenting rejection to apply.
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—In subsection I.B, second paragraph, deleted "unless that 'provisional' double patenting rejection is the only rejection remaining in at least one of the applications" and inserted "except as noted below" in its place. In subsections I.B.1 and I.B.2, added "Provisional" to the subsection title and completely rewrote the text to set forth procedures that are consistent with current practice as set forth in MPEP § 1490. —In subsection I.D, first paragraph, added "same" before "issue" in the last sentence for clarification. Pertaining to subsection II. Requirements of a Double Patenting Rejection (Including Provisional Rejections):
804
—In subsection II, second paragraph, deleted "substantively" before "the same" in the first sentence for clarification. Revised the list of determinations to be made with regard to the proper basis for a double patenting rejection to reorder the items and to added "nonstatutory" before "double patenting rejection" in the context of determining whether a rejection is prohibited by the third sentence of 35 U.S.C. 121. Added citation to AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014). —In subsection II.A, revised the examiner notes in form paragraphs 8.31 and 8.32, to conform with current terminology and to clarify guidance for applications being examined under pre-AIA (first to invent) law and for applications being examined under the first inventor to file provisions of the AIA. —In subsection II.B, at the end of the first paragraph, added preventing the possibility of multiple suits against an accused infringer by different assignees of patents claiming patentably indistinct variations of the same invention as a public policy basis for nonstatutory double patenting rejections. Deleted subsection heading "1. Obviousness Type" and rewrote text previously thereunder in new subsections II.B.1 and II.B.2. The text in former subsection II.B.2 —Added new subsection II.B.1, entitled "Anticipation Analysis," to explain when an anticipation analysis should be used to explain the basis for a nonstatutory double patenting rejection. The added text specifically discusses policies in regard to species and sub-genus claims. Added citation to AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014) to support the statement that an obviousness analysis is required if one of ordinary skill in the art is not able to at once envisage the invention claimed within the scope of the genus claims of the conflicting application or patent. —Redesignated former subsection II.B.1 as subsection II.B.2. Obviousness Analysis. Revised to explain issues to be considered when determining the propriety of a nonstatutory double patenting rejection based on an obviousness analysis. Clarified text to explain that the specification of the applied patent or copending application may be used to interpret the applied claims, even though the specification is not prior art. Added citations to Geneva Pharmaceuticals, 349 F.3d at 1378 n.1, 68 USPQ2d at 1869 n.1 (Fed. Cir. 2003) and In re Basell Poliolefine, 547 F.3d 1371, 1379, 89 USPQ2d 1030, 1036 (Fed. Cir. 2008) to support the statement that the nonstatutory double patenting analysis is similar to, but not necessarily the same as, the analysis under 35 U.S.C. 103. —Added new subsection II.B.2(a), entitled "Construing the claim using the reference patent or application disclosure." Revised the former text discussing use of the reference disclosure to clarify the proper use of the specification for claim construction. Included supporting citations to Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) (en banc); AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014); Pfizer, Inc. v. Teva Pharm. USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008); and Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC , 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003). Specifically, added new text to clarify procedures and help to avoid improper reliance on the disclosure of a reference patent or copending
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application. In addition, the result in In re Schneller, 397 F.2d 350, 158 USPQ 210 (CCPA 1968) is discussed to avoid improper application of double patenting rejections based on Schneller. —Relocated the text of former subsection II.B.1(a) to subsection II.B.2(b) One-Way Test for Distinctness. Revised text to use "distinctness" in place of "obviousness" to emphasize that a double patenting analysis is different from an obviousness analysis under 35 U.S.C. 103. In the first paragraph, deleted text drawn to "obvious-type" double patenting and anticipation from the last two sentences. In the second paragraph, added references to In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013) and In re Kaplan, 789 F.2d 1574, 229 USPQ 678 (Fed. Cir. 1986). In the third paragraph, changed "an unjustified timewise extension rationale" to "equitable principles" to conform with current terminology. Moved form paragraphs 8.33 to 8.37 from former subsection II.B.2(b) to this subsection. Revised form paragraph 8.33 to improve clarity and revised the examiner notes in form paragraphs 8.34 to 8.37 to conform with current terminology and to clarify policies under the first to invent law and first inventor to file law. —Relocated the text of former subsection II.B.1(b) to added subsection II.B.2(c) Two-Way Test for Distinctness. In the first paragraph, added a citation to In re Hubbell, 709 F.3d 1140, 106 USPQ2d 1032 (Fed. Cir. 2013) to support that the Office must solely be responsible for delays to be entitled to a two-way test for distinctness. In the second paragraph, clarified the procedures in making a two-way distinctness determination and changed "the fundamental reason … by a patent" with "equitable principles" to conform with current terminology. Added a new paragraph that discusses the unusual facts of In re Braat. In the last paragraph, changed "an unjustified timewise extension rationale" to "equitable principles" to conform with current terminology. Form paragraphs 8.33 to 8.47 were moved to current subsection II.B.2(b). —Redesignated former subsection II.B.2 as subsection II.B.3. Nonstatutory Double Patenting Rejection Based on Equitable Principles. In the first paragraph, revised text to clarify that double patenting rejections based on equitable principles are intended to prevent unjustified timewise extension of patent rights, no matter how the extension is brought about. Added a supporting citation to Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003) and a new paragraph discussing that decision. Made conforming changes through the subsection by referring to "equitable principles" rather than "unjustified timewise extension of patent rights rationale" as the basis for such nonstatutory double patenting rejections. Revised the examiner notes in form paragraphs 8.38 and to 8.39, to conform with current terminology and to clarify guidance for applications being examined under pre-AIA (first to invent) law and for applications being examined under the first inventor to file provisions of the AIA. —Redesignated former subsection II.B.3 as subsection II.B.4. Revised text to use "distinctness" in place of "obviousness" to emphasize that double patenting analysis is different from obviousness analysis under 35 U.S.C. 103. In the second paragraph, clarified text regarding double patenting in a design-utility situation. Deleted "But see Carman Indus. (J. Nies, concurring)." Pertaining to subsection III. Contrast Between Double Patenting Rejection and Rejections Based on Prior Art:
804
—In subsection III, changed the citation of "35 U.S.C. 103(a)" to "35 U.S.C. 102 or 103" and "obviousness analysis" to "anticipation or obviousness analysis" because double patenting may be evaluated either an anticipation or obviousness analysis. In the first paragraph, added a quotation from In re Bartfeld. —In the second paragraph, replaced the citation to the In re Bowers CCPA decision with a citation to In re Heck, 699 F.2d 1331, 216 USPQ 1038 (Fed. Cir. 1983).
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—In the third paragraph, added "even though it may overcome a nonstatutory double patenting rejection" at the end of the first sentence to clarify that this paragraph is limited to nonstatutory double patenting, and replaced the citation of In re Fong with a citation to In re Bartfeld, 925 F.2d 1450, 17 USPQ2d 1885 (Fed. Cir. 1991). Added a citation to Agrizap, Inc. v. Woodstream Corp., 520 F.3d 1337, 86 USPQ2d 1110 (Fed. Cir. 2008) for an example of the purpose of a terminal disclaimer. Pertaining to subsection IV. Double Patenting Rejections and Prior Art Exclusion under Pre-AIA 35 U.S.C. 103(c):
804
—Added new subsection IV, which contains modified text from former subsection III. Added "pre-AIA" before statutory citations to 35 U.S.C. 102 and 103 for clarification. Deleted the clause "and for reexamination proceedings in which the patent under reexamination was granted on or after December 10, 2004" as unnecessary. Added cross-references to MPEP § 706.02(l) and the charts in this section. Pertaining to subsection V. Double Patenting Rejections and Prior Art Exception under 35 U.S.C. 102(b)(2)(C) and 102(c):
804
—Added new subsection V, which contains new text to briefly discuss policies regarding double patenting rejections and the prior art exception under 35 U.S.C. 102(b)(2)(C) and 102(c). Pertaining to subsection VI. Double Patenting Rejections Once a Joint Research Agreement is Established:
804
—Added new subsection VI, which contains modified text from the last paragraph of former subsection III. Text was revised to clarify that this subsection (pertaining to joint research agreements) applies to both pre-AIA and AIA law and to clarify whether the statutory citations are to pre-AIA or AIA law. Also, minor clarifying changes to the text were made. —Revised text to clarify that the prohibition under 35 U.S.C. 121 applies to nonstatutory double patenting and does not apply to statutory double patenting. In the first paragraph, added
804.01
discussion of, and citation to, Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 86 USPQ2d 1001 (Fed. Cir. 2008). Added text that discusses the court's interpretation of the double patenting prohibition in Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003) and Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 40 USPQ2d 1481 (Fed. Cir. 1996). —In the third paragraph, added "independent or distinct inventions, such as" after "restriction between" in the first sentence for clarification. In item (A), clarified the language by moving qualifying phrases to a different location in the same sentence. In item (B), clarified the first sentence by changing "different applications or patents" to "application under examination and claims of the other application/patent." —In item (C), clarified the language by adding "requirement was withdrawn because the" after "restriction" in the first sentence and deleting the second sentence. In item (D), added a new second sentence to emphasize that the prohibition against double patenting rejections to apply to national stage applications. In item (E), added "in its entirety, or in part" after "withdrawn" in the first sentence and changed "third sentence" to "[double patenting]" in the second sentence for clarification. Added new text to explain the effect of withdrawing a restriction requirement and to add a supporting quote from In re Ziegler. —In item (F), added text to state that the 35 U.S.C. 121 prohibition against double patenting is not applicable to statutory double patenting with supporting citations to Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). In item (G), clarified the text in the last sentence that if any process claims are rejoined, the restriction requirement should be withdrawn in accordance with 37 CFR 1.141(b) and MPEP § 821.04.
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—Added new item (H) to explain that continuation-in-part (CIP) applications do not qualify for the 35 U.S.C. 121 prohibition against double patenting, including a supporting citation to Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001,
1007-08 (Fed. Cir. 2008). —Rewrote the first sentence of the last paragraph to improve clarify by relocating qualifying phrases. —Modified the citation of "37 CFR 1.131" to "37 CFR 1.131(a)" and revised text to clarify that a terminal disclaimer can obviate a "nonstatutory" double patenting rejection.
804.02
—In subsection II, added text to state that 35 U.S.C. 101 prevents two patents from issuing on the same invention and added supporting citations to Miller v. Eagle Mfg. Co., 151 U.S. 186 (1984); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957). Revised the cross-reference to "35 U.S.C. 102(e)/103(a)" to "35 U.S.C. 102 or 103" to include both pre-AIA and AIA versions of the statutes. —Added a new paragraph to discuss the consonance requirement, including supporting citations to Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003), Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991), and Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 40 USPQ2d 1481 (Fed. Cir. 1996). —In subsection IV, corrected "application date" to read "expiration date" in the first sentence. Also, changed "rejection" to "judicially created double patenting" in the last sentence of the second paragraph to make the quoted language consistent with the current text of 37 CFR 1.321(c)(3). Changed "ownership" to "separate enforcement" in the first sentence of the last paragraph to make the language consistent with 37 CFR 1.321(d). —In subsection VI, added citations to 35 U.S.C. 386(c), where appropriate. In the first paragraph, added a citation to 35 U.S.C. 156 following 35 U.S.C. 154(b) to clarify that certain patent term adjustments and extensions effect the patent term. Also added explanation that in certain situations copending applications will have the same effective filing date and may potentially have the same patent term. In the second paragraph, changed "extension" to "adjustment" to make the terminology consistent with 35 U.S.C. 154(b), and added text to explain the interplay between terminal disclaimers and patent term adjustment under 35 U.S.C. 154(b). Also added explanation that 37 CFR 1.321(d) limits enforcement of the patent to only when the patent and the reference application or patent are not separately enforced, and that a terminal disclaimer is only effective in the application in which it is filed. In the third paragraph, updated the citation to a 1997 Official Gazette notice with more complete identifying information and added a supporting citation to AbbVie Inc. v. Kennedy Institute of Rheumatology Trust, 764 F.3d 1366, 112 USPQ2d 1001 (Fed. Cir. 2014). Added a new fourth paragraph to subsection VI indicating that a terminal disclaimer may be withdrawn if the conflicting claims are cancelled or shown to be patentably distinct from the reference claims. —Added 35 U.S.C. 102(b)(2)(C) and (c). Revised the title of 35 U.S.C. 103(c) to indicate that it is the pre-AIA version. Replaced former 37 CFR 1.78(c) with current 37 CFR 1.78(g)
804.03
and replaced former 37 CFR 1.130 with current 37 CFR 1.131(c) to provide the regulatory sections relevant to the discussion in the this MPEP section. Revised text to clarify that a terminal disclaimer can obviate a "nonstatutory" double patenting rejection. —Modified text to refer to both the current statutory provisions for common ownership and joint research agreement (35 U.S.C. 102(b)(2)(C) and 102(c), respectively) and the prior statutory provisions as amended by the CREATE Act (pre-AIA 35 U.S.C. 103(c)) and other conforming changes (e.g., updating form paragraph references and using "effective filing date" instead of "when the invention was made").
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—In subsection I, deleted the reference to Public Law 108-453. Also updated cross-references to other MPEP sections that contain more information on common ownership and joint research agreements. —In subsection II.A, added text from MPEP § 706.02(l)(2) to define common ownership and added cross-references to MPEP 717.02(a) and (b) for more information on the prior art exception based on common ownership. In subsection II.B, added text at the end to discuss the differences between the joint research agreement provisions of 35 U.S.C. 102(c) and pre-AIA 103(c). In subsection II.C, added "may be made final" to the end of the last sentence. —In subsection III, clarified text in the second paragraph to conform with current terminology. —In subsection IV, updated all form paragraphs to conform with current terminology. —In the first paragraph, added "nonstatutory" before "double patenting" for clarification and deleted "or continuing" because the 35 U.S.C. 121 prohibition against double patenting is only applicable to divisional applications.
804.04
—Added new paragraphs to further explain the 35 U.S.C. 121 prohibition against double patenting, including support citations to Geneva Pharmaceuticals Inc. v. GlaxoSmithKline PLC, 349 F.3d 1373, 68 USPQ2d 1865 (Fed. Cir. 2003), Applied Materials Inc. v. Advanced Semiconductor Materials, 98 F.3d 1563, 40 USPQ2d 1481 (Fed. Cir. 1996), and Symbol Techs, Inc. v. Opticon, Inc., 935 F.2d 1569, 19 USPQ2d 1241 (Fed. Cir. 1991). —Changed "void" to "invalid" to be consistent with current terminology in the last sentence.805 —Revised section title and modified text to refer to both the current statutory provisions for common ownership and joint research agreement (35 U.S.C. 102(b)(2)(C) and 102(c),
806.04(i)
respectively) and the prior statutory provisions as amended by the CREATE Act (pre-AIA 35 U.S.C. 103(c)). Made minor clarification changes to the first sentence. —Updated the cross-reference from MPEP § 818.03(d) to MPEP § 818.01(d).809.03 —Changed the period for reply from "1-month (not less than 30 days)" to "2 months." Deleted "or election" after "restriction" for clarification. Deleted the clause "When preparing … the
810
restriction requirement" and inserted text to more fully explain making a restriction requirement final. —In the second paragraph, made clarifying changes that the examiner must consider whether there is a serious burden before requiring a restriction of claims previous examined on the merits.
811
—Revised the order of the text and made minor revisions thereto for clarity. References to "documentation" and "the next Office action" reflect updates to use current terminology.
812.01
—In subsection I, added "if necessary" after "mentioned" for clarification and added cross-references to form paragraphs 8.01 and 8.02. In subsection III, added "linked" before "invention" for clarification.
814
—Revised the text in the paragraph following form paragraph 8.11 for clarification. Added new subitem (v) under item (C)(2) regarding the process of making and process of using.
817
—Updated form paragraph 8.21 and revised text to indicate that only form paragraph 8.21 must be used at the conclusion of all restriction requirements. Deleted form paragraphs 8.21.01-8.21.03. Added form paragraphs 8.27.aia and 8.28.aia. —Deleted text of section except for the first sentence, and added "by applicant" following "designation" in the first sentence for clarification. Added a new paragraph to discuss when
818
two or more independent and distinct inventions are presented, and to discuss the restriction process. Added text from former MPEP § 818.01. In addition, added a sentence about inventions elected by original presentation with a cross-reference to MPEP § 818.02(a). —Revised section title to "Election in reply to a restriction requirement," and added text from former section MPEP § 818.03, modified for clarity.
818.01
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—Added two new paragraphs to state the requirements for traversing a restriction requirement and to explain that where a rejection or objection is included with a restriction requirement, applicant must respond to all rejections and objections in addition to the restriction requirement. —New section added that contains modified text from former MPEP § 818.03(a). In the first paragraph, text was modified by adding "for restriction" after "requirement" in the first sentence
818.01(a)
and deleting all text after "37 CFR 1.111(b)." In the second paragraph, text was modified by changing the cross-reference from MPEP § 818.03(b) to MPEP § 818.01(b) and adding "if accompanied by an incomplete traversal of the requirement for restriction" at the end of the last sentence. —New section added that contains modified text from former MPEP § 818.03(b). In the second paragraph, text was revised to add "other than those containing only an election of
818.01(b)
species" after "restriction" and to refer to form paragraph 8.21 instead of 8.22. Deleted form paragraph 8.22. Added a paragraph that for election of species, form paragraph 8.01 or 8.02 should be used. —New section added that contains modified text from former MPEP §§ 818.03(a) and 818.03(c). Added text explaining that a traversal must point out all errors in order to preserve
818.01(c)
petition rights, and that the petition may be deferred until after final action but no later than the filing date of a notice of appeal. —New section added that contains modified text from former MPEP § 818.03(d). Text from former MPEP § 818.03(d) was revised to combine the text into a single paragraph and to
818.01(d)
clarify that regardless of the presence of a linking claim, a proper traverse must include a written statement of the reasons for traverse, including distinctly and specifically pointing out supposed errors in the restriction requirement. —Text is revised by changing "expressly" to "by explicitly or expressly identifying the elected invention or" and by adding a cross-reference to MPEP § 818.02(d).
818.02
—Section title is modified by adding "Election" at the beginning. In the first paragraph, text is revised by changing "an action is given, they are treated as original claims" to "the earlier
818.02(a)
of the mailing of a first restriction requirement or the mailing of a first Office action on the merits, those claims, along with ones presented upon filing the application, will be considered as originally presented claims." A cross reference to MPEP chapter 1400 is added for reissue applications. —Section title is modified by adding "; Linking Claims Only – No Election of Invention" and by adding text indicating that where only linking claims are first presented and prosecuted in
818.02(b)
an application in which no election of a single linked invention has been made, and applicant later presents claims to two or more linked, independent or distinct inventions, the examiner may require applicant to elect a single invention. —Section title revised by adding "Election." Added "independent or distinct" prior to "inventions," deleted "(which may be species or various types of related inventions)," and made minor changes to clarify the text.
818.02(c)
—New section added to explain that when applicant's reply to a restriction requirement does not expressly state the invention elected, but cancels claims to all but one invention, the remaining invention is deemed to be the elected invention.
818.02(d)
—Sections removed and reserved; text previously therein was modified and moved to MPEP § 818.01 et seq. as discussed above.
818.03 et seq.
—In the first paragraph, minor changes to text made for clarification and to add a cross-reference to MPEP § 706.07(h), subsection IV.B.
819
—In the second paragraph, reorganized the order which the information is presented and qualified the discussion of continued prosecution applications as limited to design applications (but not international design applications).
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—Delete text regarding interference and allowable genus claims. Added a new paragraph stating that an applicant, as a matter of right, may not shift from claiming one invention to another but an examiner is not precluded from permitting a shift. —Deleted the second paragraph and moved the citation of In re Hengehold, 440 F.2d 1395, 169 USPQ 473 (CCPA 1971) to the end of the final paragraph.
821
—Minor clarifying changes are made to the first paragraph. Text surrounding form paragraphs 8.25 and 8.05 rearranged and clarified to explain that if a restriction requirement is made final,
821.01
the claims to the nonelected invention should be clearly indicated as being withdrawn from consideration. —Deleted form paragraph 8.24 and text that indicated a complete reply to a final rejection must include cancellation of claims nonelected with traverse or other appropriate action because even after final rejection, the withdrawn claims to the non-elected invention might properly be rejoined. Deleted the second to last paragraph that states that the failure to cancel claims drawn to the nonelected invention in a reply to a final action that otherwise places the application in condition for allowance will be taken as an authorization to cancel claims not eligible for rejoinder or to take appropriate action. —In the last paragraph, clarified that "not later than appeal" means on or before the date of notice of appeal is filed and added a cross-reference to MPEP § 1204. —In the first paragraph, revised text to clarify that where the initial requirement is not traversed (either expressly or by virtue of an incomplete reply), the examiner should take appropriate
821.02
action, including determining whether the restriction requirement should be withdrawn in whole or in part. Also added a cross-reference to MPEP § 821.04. Added a sentence indicating when form paragraph 8.07 should be used. —Added explanation that even if an election was made without traverse, claims directed to nonelected species and nonelected inventions that are eligible for rejoinder should be rejoined; if not rejoined, such claims may only be cancelled by examiner's amendment when the cancellation is expressly authorized by applicant. —In the first paragraph, deleted the cross reference to MPEP § 818.01 and made minor clarification changes. Revised form paragraph 8.26 to provide a two month time period for
821.03
reply, and to add an examiner note indicating that the form paragraph should not be used for an application filed on or after August 25, 2006 that has been granted special status under the accelerated examination program or other provisions under 37 CFR 1.102(c)(2) or (d). —Revised form paragraphs 8.03 and 8.47 to provide a two month time period for reply.821.04(a) —Revised section title to "Claims to Inventions That Are Not Patentably Distinct in Plural Applications of Same Applicant or Assignee."
822
—Replaced former 37 CFR 1.78(b) with current 37 CFR 1.78(f), which relates to the treatment of applications containing patentably indistinct claims, and updated form paragraph 8.29 to cite to 37 CFR 1.78(f). Added brief discussion of appropriate rejections that should be made when claims in two or more applications filed by the same applicant or assignee are patentably indistinct. —Added cross-references to MPEP §§ 804.01 and 1490 for additional information pertaining to provisional double patenting rejections. —Section deleted in its entirety. See MPEP § 822 for information pertaining to the treatment of applications containing patentably indistinct claims.
822.01
—Revised to explain that the analysis used to determine whether the Office may require restriction differs in national stage applications submitted under 35 U.S.C. 371 (unity of
823
invention analysis) as compared to national applications filed under 35 U.S.C. 111(a) (independent and distinct analysis), however the guidance set forth in MPEP Chapter 800
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with regard to other substantive and procedural generally applies to national stage applications submitted under 35 U.S.C. 371.
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CHAPTER 900:
—Revised to add "pre-AIA" to references to 35 U.S.C. 102(a), 35 U.S.C. 102(e), 35 U.S.C. 102(g)(1), 35 U.S.C. 104, 35 U.S.C. 135(a), 35 U.S.C. 135(b), and 35 U.S.C. 154(b)(1)(C).
Passim
Revised to replace references to "35 U.S.C. 112, first paragraph" with "35 U.S.C. 112(a)" and "35 U.S.C. 112, second paragraph" with "35 U.S.C. 112(b)." —Revised to indicate that matter canceled from the application file wrapper of a U.S. patent or U.S. patent application publication is publicly available, e.g., for purposes of 35 U.S.C. 102(a)(1), as of the patent or publication date, respectively.
901.01
—New section added regarding ordering patented and abandoned provisional and nonprovisional application files. Revises information previously in MPEP § 905.03 for consistency with current practices.
901.01(a)
—Revised to include discussion of relevant AIA provisions under 35 U.S.C. 102.901.02 —Revised to include information regarding the non-publication of international design applications filed under 35 U.S.C. 382. Revised to include discussion of use of U.S. patent application publications under AIA 35 U.S.C. 102.
901.03
—Revised to add cross-reference to MPEP § 2154.901.04 —Revised to delete previous subsection I, Placement of Foreign Patent Equivalents in the Search Files; renumbered the remaining subsections.
901.05
—Revised to update information regarding Scientific and Technical Information Center (STIC) commercial database offerings including Derwent World Patents Index, International Patent Documentation Center, and Chemical Abstract Service. Information regarding the STIC microfilm collection updated. —Revised to delete the alphabetical lists of the foreign language names of the months and of the names and abbreviations for the United States of America.
901.05(a)
—Revised to provide updated guidance on utilizing STIC to obtain copies of foreign patent documents.
901.05(c)
—Revised to update information about using STIC Translations Service Center to obtain human (written) or machine translations of non-patent literature and foreign patent
901.05(d)
documents, and to include a link to the STIC's listing of machine translation tools. Added cross-reference to MPEP § 706.02 relating to the use of machine translations where possible in the early phases of examination. —Revised to update information regarding the location of main STIC and the STIC-Electronic Information Centers (STIC-EICs), which are found in each of the Technology Centers.
901.06(a)
—Revised to update information regarding STIC collections, including books (electronic and print), periodicals, and special collections. Also revised to update information regarding locating materials in the STIC online catalog, and receiving loaned books from STIC. —Revised to update information on STIC services, including performing online searches using commercial databases, foreign patent document retrieval, document translation, and interlibrary loans. —Revised to add reference to a database that includes information on U.S. Alien Property Custodian bibliographic data.
901.06(c)
—Revised to specify that requests for statutory invention registration filed on or after March 16, 2013, will not be processed in light of the repeal of pre-AIA 35 U.S.C. 157.
901.06(d)
—Section rewritten in its entirety, and previous information pertaining to arrangement of art in technology centers deleted.
901.07
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—Section title revised to "Patent Family Information" and text rewritten to include information previously in MPEP § 905.06 regarding accessing patent family information. Additionally updated to include information about the Common Citation Document website accessible through the Patent Examiner's Toolkit. —Section removed and reserved.901.08 —Revised to include information regarding classification systems. Revised to indicate that U.S. Patent Classification (USPC) System will become a static searchable database after December 31, 2014.
902
—Section title revised to "Classification Manual for the U.S. Patent Classification System," and text revised to indicate that the classification manual for the U.S. Patent Classification
902.01
System will no longer be updated after December 31, 2014. Removed reference to bimonthly Manual updates and portable document format (.pdf) archiving on CD-ROM. —Revised section title to pertain to class and subclass definitions in the USPC.902.02 —Revised section title to pertain to definition notes in the USPC.902.02(a) —Revised to indicate that a majority of U.S. Patents and U.S. Patent Application Publications published after December 31, 2014, will no longer receive a designated U.S. patent classification.
902.03
—Revised to replace "IPC8" with "IPC."902.03(b) —Section removed and reserved.902.03(c) —Section removed and reserved.902.03(d) —Deleted.902.04 —Deleted.902.04(a) —Revised section title to pertain to classification in the USPC.903 —Section removed and reserved.903.02(a) —Revised section title to pertain to scope of a class in the USPC.903.02(b) —Deleted.903.02(c) —Revised to provide information about the Foreign Patents Service Center, which assists examiners in foreign patent data retrieval, patent family searches and document retrieval services for non-patent literature in the STIC collections.
903.03
—Revised section title to pertain to classifying applications for publication as a patent application publication in the USPC.
903.04
—Revised to delete reference to subclasses being regularly populated with documents from the EPO and JPO databases.
903.06
—Revised to reflect the current practice of electronic processing.903.07 —Deleted.903.07(b) —Revised to delete form paragraph 5.03 and the indication that applicants may be advised of expected application transfers by use of the form paragraph.
903.08
—Revised to delete indication that the SPE or a designee reviews each application to determine whether it belongs in the art unit.
903.08(a)
—Deleted outdated information regarding classification and assignment of applications filed under the Patent Cooperation Treaty (PCT).
903.08(c)
—In subsection II, deleted any distinction between the treatment of PCT, docketed, and undocketed applications in the context of application transfers.
903.08(d)
—Subsection III revised to delete references to eDAN messaging, to change "PALM EXPO" to "Patent File Wrapper (PFW)," and to delete the phrase "examinable in another TC" from identification of the controlling claim for the purposes of the application transfer request
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form. Subsection III further revised to delete information regarding handling of PCT applications and other special applications throughout the transfer process. —Revised the list setting forth how an application will be assigned by deleting reference to reclassification of entire classes from item (E), deleting former item (H) and redesignating former items (I-M) as items (H-L).
903.08(e)
—Subsection I retitled "Routing of Applications Transferred Between TCs" and revised to remove references to undocketed applications and eDAN messaging. Replaced "PALM EXPO" with "Patent File Wrapper (PFW)." —Subsection II retitled "Patent File Wrapper"; references to PALM EXPO transfer inquiry function and routing sheet deleted. —Section removed and reserved; moved information to new MPEP § 906.903.09 —Section removed and reserved; moved information to new MPEP § 907.903.09(a) —Revised to update discussion of a second search of the prior art following the first Office action.
904
—Revised to replace references to Information Technology Resource Person (ITPR) and Scientific and Technical Information Center (STIC) with Electronic Information Center.
904.02
—Revised to include classified searching in the Cooperative Patent Classification system.904.02(a) —Updated to reflect that an NPL search may be performed by the examiner or by using a STIC-EIC searcher.
904.02(b)
—Revised to update guidance on the use of the Internet as an examination search tool.904.02(c) —Revised to include general introduction of the cooperative patent classification (CPC) system.
905
—Revised to include explanation of the classification scheme for CPC, including specifics about each element of the classification symbol.
905.01
—New section added to explain that the title associated with CPC symbols defines the scope of the subject matter covered by that symbol.
905.01(a)
—New section added to explain references within CPC titles.905.01(a)(1) —New section added to explain significance of notes following a CPC class, subclass, main group or subgroup title.
905.01(a)(2)
—New section added to explain presence of warnings found within CPC schemes.905.01(a)(3) —New section added to explain guidance headings found in CPC schemes.905.01(a)(4) —Revised to explain CPC definitions.905.02 —Rewritten to provide guidance on classification rules in the CPC classification system. Information regarding ordering patented and abandoned provisional and nonprovisional application files relocated to new MPEP § 901.01(a).
905.03
—New section added containing information on the CPC database, which maintains technical information regarding the patent family documents for each patent included and associated CPC classification symbols.
905.03(a)
—New section added providing guidance on what subject matter to classify in the CPC classification scheme.
905.03(b)
—New section added providing guidance on searching using CPC combination sets.905.03(c) —Deleted. Content formerly in MPEP § 905.06 moved to MPEP § 901.07.905.04 - 905.06 —New section added containing updated information previously found in MPEP § 903.09 regarding the International Patent Classification system. Information pertaining to update of the Concordance was deleted.
906
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—New section added containing information previously found in MPEP § 903.09(a) regarding the Locarno International Classification system. Content revised to indicate that international design applications include a Locarno international classification designation.
907
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CHAPTER 1000:
—Updated 35 U.S.C. 2 and 3.1001 —Revised to add material emphasizing the distinction between appealable matters and petitionable matters.
1001.01
—Added 37 CFR 1.4(c) and updated 37 CFR 1.181 – 1.183.1002 —Revised to list four elements that should be included in a petition. —Revised to include a paragraph directed to the requirement of 37 CFR 1.4(c) for a separate paper/petition for each distinct subject, inquiry or order to avoid confusion and delay in answering the petition. Added an indication that many prior petitioners have benefitted by delaying the filing of petitions under 37 CFR 1.182 or 1.183 until after they receive a decision on a petition seeking supervisory review under 37 CFR 1.181. —Deleted a reference to 37 CFR 1.644. —Added form paragraph 10.30. —Revised to delete the last paragraph of the section, which was directed to notations made on the "Contents" of paper application file wrappers.
1002.01
—Revised to include a reference to MPEP § 1002.02(p).1002.02 —Revised the first paragraph to delete reference to petitions decided by PCT Legal Administration, to update the Mail Stop for applications for patent term extension under 35
1002.02(b)
U.S.C. 156, and to add the Mail Stop for petitions for retroactive foreign filing license under 37 CFR 5.25. —In item 1, removed reference to petitions to revive based on unavoidable delay. In item 4, changed 37 CFR "1.55(c)" to "1.55(e)" and MPEP § "201.14(a)" to "214.02." Added item 5 directed to petitions to restore the right of priority under 37 CFR 1.55(c). Added item 6 directed to petitions for the late filing of priority papers under 37 CFR 1.55(f). Renumbered former item 5 as item 7, changed "priority" to "benefit," changed 37 CFR "1.78(a)(3) and (a)(6)" to "1.78(c) and (e)," and changed MPEP § "201.11" to "211.04." Added item 8 directed to petitions to restore a domestic benefit claim under 37 CFR 1.78(b) or (e). —Renumbered former items 6-8 as 9-11, respectively. In former item 7 (renumbered as item 10), added "subsection I" after "MPEP § 711." In former item 8 (renumbered as item 11), deleted "assignments and" and added ", for example, issuance of a patent in the name of an assignee under 37 CFR 3.81" after "provided for." Deleted former item 9. Renumbered former items 10-21 as 12-23, respectively. In former item 10 (renumbered as item 12), added "or agent of record" after "attorney" and "and in applications pending in a Technology Center" after "Policy." In former item 12 (renumbered as item 14), changed "[r]equests by the examiner to the Board of Patent Appeals and Interferences for reconsideration of a decision" to "[r]equests from the examiner for the rehearing of a decision of the Patent Trial and Appeal Board." In former item 14 (renumbered as item 16), added "an unintentionally" before "delayed payment." In former item 15 (renumbered as item 17), added "or Central Reexamination Unit Director" after "Technology Center Director." —In former item 18 (renumbered as item 20), deleted "unavoidable or" and the reference to 35 U.S.C. 133. In former item 19 (renumbered as item 21), added "(or pre-AIA 37 CFR 1.14)" after "37 CFR 1.14." Renumbered former items 20 and 21 as items 22 and 23. Deleted former item 22. Renumbered former item 23 as item 24 and revised it to read "[a]pplications relating to Hatch-Waxman patent term extension, 37 CFR 1.710 - 1.791 and petitions relating to Hatch-Waxman patent term extension, 37 CFR 1.182 or 1.183." In former item 24 (renumbered as item 25), added "for original applications, other than designs, filed on or after June 8, 1995 and before May 29, 2000, MPEP § 2720." In former item 25 (renumbered as item 26), added a cross-reference to MPEP § 2734, subsection I. In former item 26, (renumbered as item 27),
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added a cross-reference to MPEP § 2734, subsection II. In former item 27 (renumbered as item 28), deleted references to former 37 CFR 1.60 and former 37 CFR 1.62. Added item 32, "[p]etitions, or requests at the initiative of the USPTO by someone other than a Technology Center Director, to withdraw patent applications from issue under 37 CFR 1.313(a) before payment of the issue fee." In former item 32 (renumbered as item 33), added "subsection II" after "MPEP § 1308." In former item 33 (renumbered as item 34), added a cross-reference to MPEP § 1308, subsection I.B. In former item 34 (renumbered as item 35), added "or assignment information." —Added new items 36-48. Item 42, directed to petitions for retroactive foreign filing license, was formerly item 7 of MPEP § 1002.02(c)(1). Item 48, directed to the return of papers containing discourteous remarks, was formerly item 3 of MPEP § 1003. —In item 2, revised the language addressing lack of unity in international applications to refer to "protests following a holding of lack of unity of invention by the USPTO in its
1002.02(c)
capacity as International Searching Authority ( 37 CFR 1.477 and MPEP § 1850 ) or International Preliminary Examining Authority (37 CFR 1.489 and MPEP § 1875.02)." —In item 3, deleted former sub-items (b) and (e) and relabeled sub-items (c), (d), and (f)-(j) as b-h, respectively. In former sub-item (d) (relabeled as sub-item c), changed 37 CFR "1.131" to 37 CFR "1.131(a)" and deleted references to 37 CFR 1.608 and MPEP § 2308 -§ 2308.02. In former sub-item (h) (relabeled as sub-item f), added a cross-reference to MPEP § 714.01(e). In former sub-item (j) (relabeled as sub-item h), MPEP § "704.11" was changed to "704.14(c)." —Items 5 and 9 were deleted and items 6-8 and 10-21 were renumbered as 5-19, respectively. In former item 7 (renumbered as item 6), "[p]etitions under 37 CFR 1.193(a) relating to the form of the appeal" was changed to "[p]etitions under 37 CFR 41.40 to request review of the primary examiner's failure to designate a rejection in the examiner's answer as a new ground of rejection, MPEP § 1207.03(b)." In former item 8 (renumbered as item 7), MPEP § "1206" was changed to "1205.01." In former item 11 (renumbered as item 9), a cross-reference to MPEP § 1205.01 was added. In former item 12 (renumbered as item 10), 37 CFR "1.515" was changed to 37 CFR "1.515(c)." In former item 13 (renumbered as item 11), "pending in the Technology Center" was deleted. In former item 16 (renumbered as item 14), a cross-reference to MPEP § 1204.03 was added. In former item 18 (renumbered as item 16), "where the application is before the Technology Center" was added after "37 CFR 1.313(a)." In former item 19 (renumbered as item 17), ", subsection II" was added after "MPEP § 1308." In former item 20 (renumbered as item 18), a cross-reference to MPEP § 608.03 was added. In former item 21 (renumbered as item 19), a cross-reference to MPEP § 608.03(a) was added. Former item 22 was deleted. —In item 1, a reference to MPEP § 710 was added. In item 2, a reference to MPEP § 709, subsection II was added. The text formerly between items 2 and 3 was deleted. In item 3, 37 CFR "5.12(a)" was changed to "5.12(b)."
1002.02(c)(1)
—Former item 7 is now item 42 of MPEP § 1002.02(b). The item was revised to include a reference to subsection II of MPEP § 140. Former items 8-14 were renumbered as 7-13, respectively. In former item 9 (renumbered as item 8), the cross-reference to MPEP § 1109 was deleted and "as in effect on March 15, 2013" was added. In former item 10 (renumbered as item 9), a cross-reference to MPEP § 150 was added. In former item 11 (renumbered as item 10), a cross-reference to MPEP § 150 was added. In former item 12 (renumbered as item 11), a cross-reference to MPEP § 140 was added. —Item 2 was changed from "[p]etitions to make biotechnology applications special where applicant is a small entity, MPEP § 708.02, item XII." to "[r]equest for a certificate of statement of availability of deposit, MPEP § 2410.02."
1002.02(c)(2)
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—In the section title, "and Requests" was added after "Petitions." In the preamble, before "requests," "petitions and" was deleted. Items 1 and 2 were deleted. The item number for item 3 was deleted.
1002.02(c)(3)
—New section added directed to petitions decided by the Director of the Central Reexamination Unit.
1002.02(c)(4)
—In item 2, MPEP § "1208.01" was changed to MPEP § "1207.04." In item 4, a cross-reference to MPEP § 1480 was added. In item 5, MPEP § "1481" was changed to MPEP § "1481.02."
1002.02(d)
—In item 6, a cross-reference to MPEP § 714.01(e) was added. In item 7, 37 CFR "1.603" was changed to "41.202" and MPEP § "2303" was changed to "2304.04 et seq." In item 9, a cross-reference to MPEP § 608.02, subsection VIII was added. In item 10, MPEP § "1211" was changed to "1211.01." —Section removed and reserved. The content was moved to MPEP § 1004, item 20.1002.02(e) —The first paragraph was revised to indicate that the Chief Administrative Patent Judge is authorized to delegate authority to decide any of the petitions or matters listed to the Deputy
1002.02(f)
Chief Administrative Patent Judge, to a Vice Chief Administrative Patent Judge, a Lead Administrative Patent Judge, or to an Administrative Patent Judge of the Patent Trial and Appeal Board. —Items 1 and 2 were added and former items 1-5 were renumbered as 3-7, respectively. Former item 1(renumbered as item 3) was revised to provide for "[d]esignation of members of the Patent Trial and Appeal Board to, on written appeal, review adverse decisions of examiners upon applications for patents, review appeals of ex parte reexaminations, conduct derivation proceedings, conduct inter partes reviews and post-grant reviews, initially and on request for reconsideration. 35 U.S.C. 6." —Former item 2 (renumbered as item 4) was revised to remove the reference to "37 CFR 1.610(a)" and to include after "interference," "including the determination of priority and patentability of invention. Pre-AIA 35 U.S.C. 6." —Former item 3 (renumbered as item 5) was revised to refer to the review of appeals of inter partes reexaminations. In former item 4 (renumbered as item 6), former sub-items a, c, e, f, g, and h were deleted. Sub-items b and d were relabeled as sub-items e and f, respectively. New sub-items a-d, g, and h were added. Former item 5 (renumbered as item 7) was revised to refer to "pre-AIA" 35 U.S.C. 135(c) throughout. Sub-item a was revised to refer to 37 CFR 41.205(b) rather than 37 CFR 1.666(c) and sub-item b was revised to refer to 37 CFR 41.205(d) rather than 37 CFR 1.666(b). —Former items 1-5 were deleted and replaced by new items 1-5.1002.02(g) —Former text was deleted and replaced by items 1-7.1002.02(j) —In item 2, 37 CFR "1.304(a)(3)" was changed to "90.3(c)" and 37 CFR "2.145(d)" was changed to "2.145(e)." In item 3, 37 CFR "10.2(c)" was changed to "11.2(d)" and the phrase
1002.02(k)(1)
"regarding enrollment or recognition" was added at the end of the item. Former item 4 was renumbered as item 5 and a new item 4 directed to petitions under 37 CFR 11.2(e) was added. In former item 4 (renumbered as item 5), 37 CFR "10.155" was changed to "11.55" and 37 CFR "10.156" was changed to "11.56(c)." —In item 2, "Petitions requesting review" was changed to "Administrative appeals." A new item 3 was added directed to "[c]ertain uncontested decisions involving the Office of Enrollment and Discipline."
1002.02(k)(2)
—In item 1, a cross-reference to MPEP § 1481 was added. In item 3, MPEP § "1481" was changed to "1481.02."
1002.02(l)
—In the section title, "the Office of" was added before "Enrollment and Discipline." Item 1 was revised to change "relating to registration" to "regarding enrollment or recognition under
1002.02(m)
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37 CFR 11.2(c)." Item 2 was revised to change 37 CFR "10.9" to "11.9." Former items 3 and 4 were deleted and former items 5 and 6 were renumbered as 3 and 4, respectively. In former item 5 (renumbered as item 3), 37 CFR "10.160" was changed to "11.60." In former item 6 (renumbered as item 4), 37 CFR "10.170" was changed to "11.3." New item 5, directed to a "[p]etition to withdraw a Rule to Show Cause under 37 CFR 11.11(b)," was added. —Revised text to eliminate item numbers and references to interferences and to specify that the Deputy Director of the USPTO has been delegated the authority to decide petitions to the
1002.02(o)
Director of the USPTO from actions taken by the PTAB for matters not otherwise delegated to the Chief Administrative Patent Judge, the Deputy Chief Administrative Patent Judge, a Vice Chief Administrative Patent Judge, or administrative patent judge(s). —Revised by replacing throughout the section, including in the section title, "PCT Legal Administrator" with "Director of International Patent Legal Administration." Revised item 8 to delete reference to petitions under 37 CFR 1.137 based on unavoidable delay.
1002.02(p)
—Former items 9 and 16 were deleted. Former items 10-14 were renumbered as 9-13, respectively. In former item 10 (renumbered as item 9), "pre-AIA" was added before "37 CFR 1.47" and before "37 CFR 1.42." New items 14-16 were added. Former items 15 and 17 were renumbered as 17 and 19, respectively. New items 18, 20 and 21 were added. —New item 1 was added. Former items 1-5 were renumbered as 2-6, respectively. Former item 6 was deleted. New item 8 was added.
1002.02(q)
—Item 3 was changed from "[r]equests to issue patent in name of the assignee after payment of the issue fee, 37 CFR 3.81(b), MPEP § 307" to "[r]equests for republication of an application, 37 CFR 1.221(a), MPEP § 1130." Item 4 was deleted.
1002.02(r)
—Revised section title by deleting "by the Special Program Examiners." Revised the section to be directed to petitions to make patent applications special under the accelerated program
1002.02(s)
set forth in MPEP § 708.02(a). Sub-items (a)-(k) were deleted and new sub-items a-d were added. Sub-item (l) was relabeled as sub-item e. Former item 2 was deleted from this section and added to item 12 of MPEP § 1002.02(b)). —In item 1, relabeled sub-items i-iii as a-c, respectively. In item 2, revised to replace "on the 'Contents' of the file wrapper" with "in the file wrapper" and to delete references to MPEP
1003
§ 201.14(c) and § 604.04(a). Item 3 was deleted from this section and added as new item 48 in MPEP § 1002.02(b). Former items 4-18 were renumbered as 3-17, respectively. —Former item 6 (renumbered as item 5) was revised to be directed to actions which hold claims unpatentable on grounds of rejection that would also be application to corresponding claims in a patent. In former item 7 (renumbered item 6), the cross-reference to MPEP § 2303 was deleted. In former item 9 (renumbered as item 8), MPEP § "2305.04" was changed to "2304.02." In former item 10 (renumbered as item 9), MPEP § "1208" was changed to "1207.02." In former item 11 (renumbered as item 10), MPEP § "2303" was changed to "2302." In former item 13 (renumbered as item 12), MPEP § "2305" was changed to "2304.04." In former item 14 (renumbered as item 13), "Office of Petitions" was changed to "Office of the Deputy Commissioner for Patent Examination Policy." In former item 16 (renumbered as item 15), a cross-reference to MPEP § 1308.01 was added. In former item 17 (renumbered item 16), sub-items i-ii were relabeled as a-b, respectively. In former item 18 (renumbered as item 17), MPEP § "1208" was changed to "1207.01." Former item 19 was deleted. —This section has been revised to include a number of actions (for example, allowances, examiner's amendments, Quayle actions, actions on amendments submitted after final rejection,
1004
and actions reopening prosecution) that previously were listed in MPEP § 1005 and require the attention of a primary examiner. The actions listed in this section have been numbered as 1-24 and the actions relating to interference practice were moved to the end of the list (now items 21-24). Item 10 was revised slightly from the language of item 10 in MPEP §
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1005 because approval by the supervisory patent examiner is required unless the amendment is directed merely to formal matters or the cancellation of claims (see MPEP §§ 714.16 and 1002.02(d)). Item 13 (decision on affidavits or declarations) was updated to specifically mention affidavits or declarations under 37 CFR 1.130(a), 1.130(b), 1.131(a), 1.131(c), and 1.132. Item 14 was revised from the language of item 14 of MPEP § 1005 because it is the Technology Center Director (and not the primary examiner), who can grant second or subsequent suspensions (see MPEP § 1003). —Item 20 (moved from former MPEP § 1002.02(e)) regarding decisions on requests filed under 37 CFR 1.48 has been revised to include "filed prior to September 16, 2012" because requests under 37 CFR 1.48 filed on or after September 16, 2012 are decided by the Director of the Office Patent Application Processing (see MPEP § 1002.02(q), item 1). —Introductory paragraph revised to change "the signature of the primary examiner" to "the signature of a primary examiner, Technology Center Director, or practice specialist."
1005
—The actions listed in this section have been numbered as 1-21 and the actions relating to interference practice were moved to the end of the list as items 19-21. In item 7, the citation for examiner's answers on appeal was changed from MPEP § "1208" to MPEP § "1207." Item 13 (actions based on affidavit or declaration evidence) was updated to specifically mention affidavits or declarations under 37 CFR 1.130(a), 1.130(b), 1.131(a), 1.131(c), and 1.132. Item 15 regarding reissue applications was revised to include "e.g.," before "decisions on reissue oath or declaration."
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CHAPTER 1100:
—Revised to update 35 U.S.C. 122(b)(2)(A)(ii)-(iv) for consistency with conforming amendments made in the AIA. Updated 37 CFR 1.211(b), which added international design applications under
1120
35 U.S.C. chapter 38 to the list of applications that will not be published. Subsection I revised to indicate that the Office will not publish "international design applications filed under 35 U.S.C. 385" under 35 U.S.C. 122(b). —In subsection I, added subordinate subsection headings A and B.1121 —Subsection III revised to replace "37 CFR 1.137(b)" with "37 CFR 1.137(a)" because the relevant subject matter was moved to 37 CFR 1.137(a) in the PLT implementation rule.
1122
—Revised to update 35 U.S.C. 122(b)(2)(B)(iii) for consistency with the PLTIA.1123 —Revised to update 35 U.S.C. 122(b)(2)(B)(iii) for consistency with the PLTIA. Added subsection headings I and II.
1124
—In subsection II, updated 37 CFR 1.137 and revised text of subsection for consistency with the revised rule, which no longer provides for petitions to revive abandoned applications on the basis of unavoidable delay. —Updated 37 CFR 1.14 for consistency with changes to the rule made as a result of the PLTIA.1128 —Subsection I revised to indicate that if a published patent application is pending and is not maintained in the IFW system, the paper application file itself will not be available to the public for inspection and that only copies of the application file may be obtained pursuant to 37 CFR 1.14(a)(1)(iii). A cross-reference to MPEP § 103 was also added. —Subsection III was removed and information pertaining to physical access to published applications is now in subsection I. —Renumbered subsection IV as subsection III. Revised subsection to indicate that status information may also be provided when an application is referred to by its application number in an international publication of an international application under PCT Article 21(2), or in a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. —Added subsection headings I and II.1130 —Revised to remove Editor Note concerning the effective date of certain AIA provisions.1134.01 —Updated 37 CFR 1.290(f) to replace the reference to "37 CFR 1.17(p)" with "37 CFR 1.17(o)." —Updated form PTO/SB/429 in subsection II.A.1. Revised subsection II.F.2 to explain that a resubmission of a third party submission after receipt of a notice of non-compliance must be complete as the Office will not accept amendments to a noncompliant submission. —Revised text to explicitly state that to be complete, the appropriate fee must accompany any resubmission made in response to a notification of non-compliance. Clarified that to satisfy the fee requirement for a resubmission after a finding of non-compliance where the proper fee set forth in 37 CFR 1.290(f), or a proper fee exemption statement under 37 CFR 1.290(g), accompanied the non-compliant submission, the third party may request that the Office apply the previously-paid fee or fee exemption statement to the resubmission. Added statement that "The determination of whether the fee requirement for a resubmission is satisfied will be made at the sole discretion of the Office." —Revised subsections V and VI to replace references to a notification "of non-compliance" with references to a notification "to the third party regarding its third-party submission."
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CHAPTER 1300:
—Revised to remove recommendation that examiners require applicants to limit the disclosure to be confined to and in harmony with the claims; deleted associated form paragraphs 13.07 and 13.08.
1302.01
—Revised to delete language stating that an examiner's amendment is required for changing the order of the claims, and to remove paper processing references. —Revised for consistency with 37 CFR 1.72 to specify that the title of an application may not exceed 500 words in length. —Updated Notice of Allowability form PTOL-37.1302.03 —Revised to delete "formal" when preceding "examiner's amendment," and to delete instructions pertaining to "informal" examiner's amendment" practices, as these practices are not available
1302.04
in electronic processing. Revised to provide updated guidance on when an examiner may make changes to the specification, or any other paper filed in the application, without an examiner's amendment approved by applicant. —Revised to indicate that for continuing applications, a reference to a parent application in the first sentence(s) of the specification is no longer required when the reference appears in an Application Data Sheet. Added reference to benefit claims under 35 U.S.C. 386(c). Added explanation that if applicant has included a reference to the parent application in the specification, the examiner should review the statement and the application data sheet for accuracy. Further revised to provide updated guidance as to when an ADS is required for benefit claims. —Revised text and form paragraphs 13.02.01 and 13.02.02 to remove references to specific interview types. —Revised to update the role of the Office of Patent Quality Assurance upon discovery of any informality in the application suitable for correction by examiner's amendment. —Section removed and reserved.1302.04(b) —Deleted "formal" preceding "examiner's amendment."1302.04(g) —Revised to replace "Publishing Division" with "Office of Data Management" and to replace "non-extendable period" with "time period."
1302.05
—Deleted.1302.05(a) —Updated cross-references to sections of MPEP Chapter 200.1302.06 —Updated Issue Classification sheet.1302.09 —Revised to add reference to benefit claims under 35 U.S.C. 386(c), and to remove references to paper processing instructions. —Revised to add cross-references to MPEP §§ 905 through 907.1302.10 —Revised to indicate that the Office Action Correspondence System (OACS) automatically populates the Issue Classification sheet with the Cooperative Patent Classification symbols applied to a family of documents, and as such it is possible that not all classification symbols shown on the Issue Classification Sheet have been searched by the examiner. —Section removed as unnecessary and reserved.1302.11 —Revised to remove reference to paper processing, and to add reference to derivation proceedings.
1302.12
—Revised to reflect electronic signatures by examiners.1302.13 —Revised to delete information specific to paper processing. Subsection V revised to include derivation among the proceedings considered by the Board.
1302.14
—Updated 37 CFR 1.311. Revised to note that the publication fee was reset to $0.00 effective January 1, 2014.
1303
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—Revised to update the Notice ofAllowance and Fee(s) Due form (PTOL-85) and the discussion thereof. Note that page 3 of the form indicates that the Office no longer provides a patent term adjustment calculation with the Notice of Allowance. —Revised to add processing instructions associated with applications filed after September 16, 2012, which are in condition for allowance but do not include an oath or declaration in compliance with 37 CFR 1.63 or a substitute statement in compliance with 37 CFR 1.64. —Revised to state that if an amendment received after allowance contains claims copied from a patent to provoke an interference, see MPEP Chapter 2300.
1303.01
—Revised to delete limitation of text to Image File Wrapper applications.1303.02 —Revised to replace cross-reference reference to MPEP § 409.01(f) with cross-references to MPEP §§ 409.01(a) and (b).
1303.03
—Revised to delete indication that an examiner may make an examiner's amendment correcting obvious errors after a Notice of Allowance is mailed.
1305
—Revised to indicate that once the patent has been granted, the Office can take no action concerning it, except as provided in 35 U.S.C. 135, 35 U.S.C. 251 through 256, 35 U.S.C. 302 through 307, 35 U.S.C. 311 through 319, and 35 U.S.C. 321 through 329. —Revised to reflect fee reductions for micro entities. Revised to remove reference to unavoidable delays in making issue fee payments.
1306
—Revised to remove paper processing instructions.1306.01 —Revised to remove prior instructions for ordering of allowed application paper files.1306.03 —Revised to update 37 CFR 1.313(b) and associated text in subsection II to reflect that derivation proceedings are a reason the Office may withdraw an application from issue.
1308
—In subsection I.B, added references to filing an ePetition via EFS-Web to withdraw an application from issue. Subsection I.B further revised to indicate that once a petition under 37 CFR 1.313(c)(1) or (c)(2) has been granted, the application will be withdrawn from issue, the applicant's submission(s) will be entered, and the application forwarded to the examiner for consideration of the submission and further action. —Subsection II revised to replace discussion of paper processing with current electronic processing procedures. —New subsection III added to provide guidance for handling of applications withdrawn from issue which contain an examiner's amendment. —Revised to reflect that a case may be withdrawn from issue due to a new grounds of rejection.1308.01 —Revised to replace discussion of paper processing with current electronic processing procedures. —Revised section title and text to add reference to withdrawal from issue for derivations purposes.
1308.02
—Updated business unit names.1308.03 —Revised to reflect current electronic processing procedures.1309 —Revised section title to "'Printer Rush' Cases." Revised text to reflect current electronic processing procedures.
1309.02
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CHAPTER 1500:
—Updated 35 U.S.C. 171. Revised to add references to international design applications as provided for in 35 U.S.C. chapter 38 as a result of the PLTIA. Added cross-reference to MPEP
1501
Chapter 2900 for additional information concerning international design applications. Also added explanation that certain statutory provisions in 35 U.S.C. chapter 38 provide for the applicability of the provisions of 35 U.S.C. chapter 16 to international design applications, and accordingly many of the practices set forth in MPEP Chapter 1500, such as those pertaining to examination in MPEP § 1504, are applicable to international design applications that designate the United States. —Revised to delete form paragraphs previously reproduced herein; form paragraphs relating to statutory subject matter are set forth in MPEP § 1504.01.
1502
—Revised to indicate that the term of a design patent is 15 years for applications filed on or after May 13, 2015 and 14 years for applications filed prior to May 13, 2015.
1502.01
—Revised to indicate that an international design application designating various countries may be filed for design applications under the Hague Agreement. —Revised to remove prior references to the effective date of changes to continued prosecution applications in design applications. —Revised section title and text to indicate that this section is directed to design applications filed under 35 U.S.C. chapter 16.
1503
—Revised to update 37 CFR 1.154 and to limit the applicability of form paragraph 15.05 to design applications filed under 35 U.S.C. chapter 16.
1503.01
—Subsection I revised to indicate that the title may contribute to defining the scope of the claim, and to delete text pertaining to objecting to the title when it does not correspond to the claim. —Subsection I further revised to indicate that the practice set forth in this section regarding the title of the design is generally applicable to international design applications designating the United States. Updated form paragraph 15.05.01. —In subsection II, item (A)(4), replaced "environmental use" with "intended use." Subsection II further revised to add form paragraph 15.61.01. —Subsection III revised to indicate that the form and content of the claim in an international design application is set forth in 37 CFR 1.1025 and mirrors 37 CFR 1.153. Revised form paragraphs 15.62 and 15.63 to include reference to 37 CFR 1.1025. —Revised form paragraph 15.05.03 for clarity.1503.02 —Subsection I revised to remove the indication that the basis for an objection pertaining to sectional views is 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph. —Subsection II revised to delete form paragraph 15.49 pertaining to surface shading. —In subsection III, revised form paragraphs pertaining to the use of broken lines, and deleted form paragraph 15.50.03. —Subsection V revised for consistency with 37 CFR 1.84(a) as amended in the Hague implementation rule to indicate that color drawings are permitted in design applications, and that one set of color drawings is required if submitted via the Office electronic filing system or three sets of color drawings are required if not submitted via the Office electronic filing system. Deleted references to petitions to accept color drawings in design applications and revised form paragraphs pertaining to color drawings or photographs. —Added cross-reference to MPEP § 401 and updated form paragraph 15.66 with regard to how to obtain a list of registered patent practitioners.
1504
—Revised to update 35 U.S.C. 171.1504.01 —Revised form paragraph 15.07.01 and inserted form paragraphs 15.42 and 15.43.
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—Revised subsection I.B to remove certain references to 37 CFR 1.71, 1.84, and 1.152-1.154 where the provisions discussed are also applicable to international design applications, and added cross-references to rules specific to international design applications where appropriate.
1504.01(a)
—Subsection II revised to add citation of In re Jung, 98 USPQ2d 1174 (Fed. Cir. 2011).1504.01(c) —Subsection V revised to add cross-reference to MPEP § 716.03(b) and to add a citation to, and discussion of, In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) regarding submission of evidence of commercial success. —Subsection V further revised to indicate that the requirement that the design was created for the 'purpose of ornamenting' must be met with appropriate evidence concerning visibility for a rejection under 35 U.S.C. 171 to be overcome if the design would be hidden during its end use and to cite In re Webb, 916 F.2d 1553 (Fed. Cir. 1990). —Revised to change form paragraph cross-reference to "15.09.01".1504.01(e) —Revised to delete text of 35 U.S.C. 172.1504.02 —Revised to remove discussion of In re Bartlett with regard to the standard for determining novelty. —Revised to include references to Door Master Corp. v. Yorktowne, Inc., 256 F.3d 1308 (Fed. Cir. 2001), International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009), Egyptian Goddess Inc. v. Swissa Inc., 543 F.3d 665 (Fed. Cir. 2008) ( en banc), Richardson v. Stanley Works Inc., 93 USPQ2d 1937 (Fed. Cir. 2010), and Amini Innovation
Corp. v. Anthony California Inc., 439 F.3d 1365 (Fed. Cir. 2006) with regard to the "ordinary observer" test for anticipation. Further revised to expand discussion of In re Glavas, 230 F.2d 447 (CCPA 1956). —Revised to clarify that registration of a design abroad is considered to be equivalent to patenting for priority purposes under 35 U.S.C. 119(a) - (d) and for prior art purposes pre-AIA 35 U.S.C. 102(d), whether or not the foreign grant is published. —Revised form paragraphs. —Revised to update 35 U.S.C. 103, and to indicate that any reference to 35 U.S.C. 103 is equally applicable to pre-AIA 35 U.S.C. 103(a), unless otherwise noted.
1504.03
—Added form paragraph 15.19.02.aia and revised examiner note 8 of form paragraph 15.19.02.fti to reference benefit claims under 35 U.S.C. 368(c). —Revised subsection I.D to add citation to MRC Innovations, Inc. v. Hunter Mfg., LLP, 110 USPQ2d 1235 (Fed. Cir. 2014); and Crocs Inc. v. International Trade Commission, 93 USPQ2d 1777 (Fed. Cir. 2010). —Revised subsection II.A.2 title to read "Nonanalogous Art." —In subsection III, revised numerous form paragraphs related to obviousness rejections. —Revised to delete reproduction of pre-AIA 35 U.S.C. 112.1504.04 —Revised form paragraph 15.20.02 to indicate that it is applicable only to design applications filed under 35 U.S.C. chapter 16 and to delete the suggestion that applicant submit large, clear informal drawings in response to a rejection under 35 U.S.C. 112. Also revised form paragraph 15.21.01. —Revised to correctly state that the issue of whether a search and examination of an entire application can be made without a serious burden to the examiner does not apply to design applications.
1504.05
—Subsection III revised to clarify that clear admission on the record by the applicant, on its own, that the embodiments are not patentably distinct (as noted in MPEP § 809.02(a)) will not overcome a requirement for restriction if the embodiments do not have overall appearances that are basically the same as each other.
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—In subsection III, revised guidance as to the handling of applications which are in condition for allowance except for the presence of withdrawn claims so as to be consistent with MPEP § 821.01. —Revised to indicate that indicate that a double patenting rejection based on 35 U.S.C. 171 is a "statutory" double patenting rejection.
1504.06
—Revised the discussion of nonstatutory double patenting for consistency with MPEP § 804. —Revised to specify the conditions under which a double patenting rejection would be appropriate for consistency with MPEP § 804. Further revised to add citation to MPEP § 1490 for situations when a provisional double patenting rejection is the only rejection remaining in an application. —In subsection II, added explanation that a double patenting rejection also serves public policy when it prevents the possibility of multiple suits against an accused infringer by different assignees. —Subsection II revised to indicate that a nonstatutory double patenting rejection "may only be necessary" (rather than "should only be given") if the reference patent issued less than a year before the filing date of the application, and to clarify that a terminal disclaimer may obviate a nonstatutory double patenting rejection. —Subsection II further revised to replace "obviousness-type" double patenting with "nonstatutory" double patenting, and to replace "one-way obviousness" with "one-way distinctness" for consistency with MPEP § 804 and current terminology. Conforming revisions made to the form paragraphs. —Updated 35 U.S.C. 172. Revised text to indicate that for design applications filed on or after May 13, 2015, a claim for priority may be made to an international design application pursuant to the PLTIA.
1504.10
—Revised to add text explaining that under certain conditions, a right of priority to a foreign application may be restored if the U.S. design application is filed within two months of the expiration of the six-month period specified in 35 U.S.C. 172. —Revised form paragraphs 15.01, 15.01.01, 15.02, 15.03 for consistency with 37 CFR 1.55 as set forth in the Hague implementation rules. —Updated 35 U.S.C. 120. Revised text for consistency with 37 CFR 1.78(d) as amended in the Hague implementation rule to add a more detailed description of the requirements for a proper benefit claim.
1504.20
—Revised to add a discussion of how to delete or change a benefit claim, the impact of changing the relationship of an application from a continuation or divisional application to a continuation-in-part application, and the definition of a continuation-in-part application. Added an explanation of when a continuation-in-part application is not entitled to the benefit of the filing date of the parent application. Deleted reference to applications filed prior to September 21, 2004. —Revised form paragraphs related to continuation-in-part applications, and added new form paragraph 15.74.01. —Revised discussion of pre-AIA 35 U.S.C. 102(d)/172. —Revised to add citation of Racing Strollers Inc. v. TRI Industries Inc., 878 F.2d 1418, 11 USPQ2d 1300 (Fed. Cir. 1989) and Vas-Cath Inc. v. Mahukar, 935 F.2d 1555, 19 USPQ2d 1111 (Fed. Cir. 1991) and with regard to benefit claims in the design application-utility application context. Deleted citation of In re Chu. —Revised to update 37 CFR 1.155 and discussion thereof to indicate that expedited examination is available for international design applications designating the United States that have been published pursuant to Hague Agreement Article 10(3).
1504.30
—Revised to update procedures for filing a request for expedited processing in a design application or international design application designating the United States, and to set forth
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recommended practices to facilitate processing of a request. Added instructions for filing requests for expedited examination via EFS-Web. —Revised to update 35 U.S.C. 173 in accordance with the PLTIA.1505 —Revised subsection II to indicate that the examiner will not object to a copyright notice as extraneous when it is limited in print size from 1/8 to ¼ inch and placed within "sight" of the drawing immediately below the figure representing the copyright material.
1512
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CHAPTER 1700:
—Revised to indicate that Office personnel are only permitted to express an opinion on the validity or patentability of any claim of a patent to the extent necessary to carry out an examination of a
1701
reissue application of the patent, a supplemental examination proceeding or reexamination proceeding to reexamine the patent, an interference or derivation proceeding involving the patent, or an inter partes or post-grant review of the patent. —Revised section title to read "Restrictions on Current and Former Office Employees Regarding Patent Matters." Added text of 35 U.S.C. 4 and updated 37 CFR 11.10. Added paragraph discussing
1702
the inventor's oath or declaration when an Office employee is named as an inventor in a patent application. —Revised to update the description of The Official Gazette – Patents (eOG:P), including the website address, information on the various pages of the eOG:P, and the information provided for each patent
1703
issued on the eOG:P publication date. Revised to delete reference to the availability of paper copies of the Official Gazette, as the Official Gazette is now only available in electronic form. —Revised to delete reference to bar code readers as means to enter transactions into PALM (Patent Application Locating and Monitoring) System. Also revised to replace "accelerated" with "expedited" to be consistent with PALM examiner docket reports.
1704
—Revised to delete Form PTO-1472 Examiner's Case Action Worksheet and references thereto. Revised to provide update of how the Examiner's Time and Activity Report is generated, and to
1705
delete references to an examiner "count" and instead utilize "credit," consistent with the current examiner production system. —Added subsection numbers to the subsection titles. Updated list of items for which the examiner will receive a disposal credit to further include institution of a derivation proceeding. —Section removed and reserved.1711 —Revised to reflect current practice for forwarding Board decisions to the examiner.1720 —Revised to change the term preceding "Commissioner for Patent Examination Policy" from "Associate" to "Deputy," and to change the term following "Deputy Commissioner" from "for Patents" to "for Patent Operations."
1721
—In subsection II.B, updated information pertaining to the Patent Electronic Business Center (EBC). In subsection II.B.1(e), updated information pertaining to Assignments on the Web (AOTW). Added
1730
new subsection II.B.1(f) directed to the Global Patent Network and its utility for providing English language translations of a large subset of Chinese patent documents created by machine translation technology. In subsection II.B.2(a), added cross-reference to the EFS-Web Legal Framework. —In subsection III, updated the PCT Help Desk hours. —In subsection IV, updated information pertaining to the location of the main library of the Scientific and Technical Information Center. —In subsection V, limited the discussion of the list of attorneys and agents registered to practice before the Office to providing the website where the list is available. —In subsection VI.A, updated contact information for the Application Assistance Unit. In subsection VI.E, updated information pertaining to acquiring copies of patent documents from the Office of Public Records' Patent and Trademark Copy Fulfillment Branch. In subsection VI.F, added cross-reference to relevant information found in MPEP § 2570. In subsection VI.G, provided updated contact information for Assignment Recordation Services regarding filing assignments or other documents affecting title. In subsection VI.H, updated information pertaining to petitions administered by the Office of Petitions. In subsection VI.I, updated information regarding downloading the PatentIn software program or using PatentIn. Added cross-reference to relevant information found in MPEP § 2430.
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CHAPTER 1800:
—Deleted phrase "international applications filed on or after January 1, 2004" at each occurrence.
Passim
—Revised subsection I to change "designates or elects" to "designates."1801 —Revised subsection II to change "earlier filed national application" to "earlier-filed application" in discussion of "priority date" for timing purposes. Also changed "date of filing" to "date of receipt," and added citations to PCT Rules 14.1(c), 15.3 and 16.1(f). —Revised subsection III to add the Australian Patent Office (IP Australia), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), and the Japan Patent Office (JPO) as International Searching Authorities (ISAs) which applicants filing in the United States Receiving Office (RO/US) may choose. Added cross-reference to MPEP §§ 1840.01-1840.06 for further information regarding ISA/EP, ISA/KR, ISA/AU, ISA/RU, ISA/IL, and ISA/JP. —Subsection III further revised to indicate that copies of the international search report and prior art will be "made available" (rather than "sent") to the applicant by the ISA. Added sentence to subsection III to indicate that if a Demand for Chapter II examination is not timely filed, the International Bureau communicates a copy of the written opinion established by the ISA (retitled International Preliminary Report on Patentability (Chapter I of the PCT)) to each designated Office after the expiration of 30 months from the priority date. —Subsection IV revised to indicate the applicant may request, by checking a box on Form PCT/RO/101, for the International Bureau to obtain a copy of the priority document from a digital library if the priority document is registered in a digital library and made available to the International Bureau within the prescribed time limit, as set forth in PCT Rule 17.1(b- bis) and the access code is furnished to the International Bureau. Also revised to change "prepare the certified copy" to "transmit a copy of a prior application." —Subsection IV revised to indicate that, for international applications filed before July 1, 2014, former PCT Rule 44 ter provided that the written opinion of the ISA would not be made publicly available until the expiration of 30 months from the priority date, but that, for international applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by applicant will be made available to the public as of the publication date. Also changed "International Bureau transmits copies" to "International Bureau communicates copies." —Subsection V revised to indicate that at the time of MPEP publication, only three countries had not adopted Article 22(1) as amended: Luxembourg (LU), United Republic of Tanzania (TZ) and Uganda (UG), and to indicate applicant may desire to file the Demand by 19 months from the priority date to extend the national stage entry deadline in these three countries. Also revised to indicate Luxembourg is included in the regional designation "EPO" and the United Republic of Tanzania and Uganda are included in the regional designation "ARIPO." Also revised to indicate the IB forwards any statement explaining the basis for the Article 19 amendments to the IPEA with the Demand. —Section title revised to mention Notifications of Incompatibility. Deleted discussion of a reservation under PCT Article 64(4) relating to the prior art effective date of a U.S. patent
1803
issuing from an international application. Revised the indication that the USPTO "has taken a reservation on adherence to" specified PCT rules to instead indicate the USPTO "has made a notification of incompatibility with respect to" the specified rules. —Revised to change citation regarding who can file an international application from 37 CFR 1.421-1.423 to MPEP § 1806. Deleted indication that, for purposes of designating the
1805
United States of America, the applicant(s) must be the inventor(s), and that the RO/US is located in Arlington, VA. Added indication that international applications may be filed
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electronically through EFS-Web. Also revised to indicate any request to transfer the application to the International Bureau which is received after substantial processing of the international application by the RO/US has occurred may be declined. —New section added. Subsection I discusses applicants and inventors for international applications filed on or after September 16, 2012, and subsection II discusses applicants and inventors for international applications filed before September 16, 2012.
1806
—Includes information formerly in MPEP § 1820 concerning deceased inventors, and information formerly in MPEP § 1821 regarding applicants and inventors. —Revised to update PCT Rules 90.4(b) and (d). Added an indication that a Customer Number may be used in the international phase solely for purposes of viewing the international
1807
application in PAIR and added a cross-reference to new MPEP § 1809. Updated PCT Rules 90.5(b)-(d). Also updated to indicate that a separate power of attorney or copy of the general power of attorney may still be required in certain cases, e.g., where waiver could result in harm to an applicant as in the case of the removal of an applicant. —Updated to include the International Bureau as an alternative to the U.S. receiving Office when submitting a request to withdraw from representation as attorney or agent in an
1808
international application. Changed references to former 37 CFR 10.40 to instead reference 37 CFR 11.116. The requirement to notify the client of any replies that may be due and the time frame for reply was deleted. —New section added to address PAIR access to international applications.1809 —Updated 35 U.S.C. 363 and 37 CFR 1.431(b)(3)(iii), and deleted 35 U.S.C. 373. With respect to the applicability of PCT Rules 4.18 and 20.6, deleted two occurrences of "In applications filed on or after April 1, 2007."
1810
—Deleted a reference to former PCT Administrative Instructions Section 102 bis.1812 —Revised to delete the table listing the PCT Contracting States; added website addresses for updated lists of PCT Contracting States and information about regional patents that can be obtained via the PCT.
1817
—Section deleted. The content formerly in this section was moved to a new subsection VIII in MPEP § 1821.
1817.01
—Section relating to international applications filed before January 1, 2004, deleted.1817.01(a) —Section deleted. The content formerly in this section was moved new MPEP § 1828.02.1817.02 —Updated PCT Rule 4.15. Deleted discussion of the requirement for a separate signed power of attorney in international applications filed prior to January 1, 2004. Added information
1820
concerning handwritten signatures and S-signatures, and included a cross-reference to MPEP § 502.02, subsection II. Deleted discussions concerning an applicant/inventor unavailable or unwilling to sign and moved information concerning a deceased inventor to new MPEP § 1806. —This section has been reorganized into an introductory portion and subsections numbered I-VIII.
1821
—In the introductory portion, removed the discussion of PCT-EASY physical media and former PCT Administrative Instructions Section 102 bis and added a discussion of filing the PCT Request form in PCT-EASY.zip file format via EFS-Web and obtaining a reduction of the international filing fee. —In subsection II, added a cross-reference to new MPEP § 1828.02 for how to indicate the international application is a continuation or continuation-in-part of an earlier application. —In subsection V, added a cross-reference to new MPEP § 1806 for who can be applicant and moved the discussion of applicants and inventors to new MPEP § 1806. Deleted the
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indication that the check box "applicant only" must be marked where the applicant is a corporation or other legal entity. —Subsection VIII, entitled "Designation of States," is a new subsection directed to the content of former MPEP § 1817.01, "Designation of States in International Applications Having an International Filing Date On or After January 1, 2004." —Revised to update PCT Administrative Instructions Section 204.1823 —Revised to update an IB website address.1823.01 —Revised to update PCT Administrative Instructions Section 208. Added "(text)" after occurrences of "electronic form" to clarify the type of electronic form. Subsection I revised
1823.02
to explain that full compliance with the requirements of the U.S. rules will generally ensure compliance with the applicable PCT requirements, but the requirements of 37 CFR 1.821 through 37 CFR 1.825 are less stringent than the requirements of WIPO Standard ST.25. Revised to include cross-references to MPEP § 2422, subsection II, MPEP § 2422.03(a), subsection IV, and MPEP § 2422.07 for information specific to filing sequence listings in international applications. Revised to include a paragraph explaining the calculation of the international filing fee for an international application filed with a sequence listing in ASCII text and/or PDF. —Deleted the text of former subsection II. Added a new subsection II directed to the requirements for submitting tables related to sequence listings in international applications. —Revised to update PCT Administrative Instructions Section 205. Removed the indication that paragraph numbers (e.g., paragraph numbers complying with 37 CFR 1.52(b)(6)) are acceptable provided they are not placed in the margins.
1824
—Deleted indication that where tables cannot be presented satisfactorily in an upright position, they may be placed sideways.
1825
—Clarified that rectifications of obvious mistakes are not considered to be amendments, and that an amendment shall not go beyond the disclosure in the international application as filed. Added a cross-reference to PCT Article 34(2)(b). —Updated to indicate, if drawings are referred to in an international application but not found in the search copy file, examiners may consult with a Quality Assurance Specialist or with a PCT Special Program Examiner. —Revised to indicate the International Searching Authority establishes the abstract if the applicant fails to furnish an abstract within a time limit fixed in the invitation and to include a cross-reference to PCT Rule 38.
1826
—Also revised to indicate the applicant may propose modifications of, or comment on, the new abstract until the expiration of 1 month from the date of mailing of the international search report. —Revised to indicate for international applications filed in the RO/US after November 15, 2011, the transmittal fee includes a non-electronic filing fee portion for international applications filed in paper rather than by EFS-Web.
1827
—The reference to specific ISAs (KIPO and EPO) was replaced with broadened language that covers all of the possible ISAs.
1827.01
—Deleted reference to July 1, 1998 effective date regarding the time limit for adding or correcting a priority claim. Added a cross-reference to MPEP § 1859 for a withdrawal of a priority claim.
1828
—Added an indication that the request (Form PCT/RO/101) includes a box which can be checked to request that the receiving Office prepare the certified copy of a priority document; also added that applicant may request that the International Bureau obtain a copy of the priority application from a digital library and added a cross-reference to PCT Rule 17.1(b- bis).
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—Revised to indicate the transmission may be delayed or prevented when no inventor common to the priority application is named in the international application. —Revised to include 37 CFR 1.452, a reference to 37 CFR 1.17(m) for the requisite fee, and an indication the RO/US may decline to forward the international application to the
1828.01
International Bureau under PCT Rule 19.4(a)(iii) if substantial processing of the international application by the RO/US has occurred. —Revised to indicate that in the United States, a right of priority that has been restored under PCT Rule 26 bis.3 during the international stage will be effective in the U.S. national stage and added a cross-reference to MPEP § 1893.03(c). Further revised to include a reference to WIPO's website for a full listing of the national offices that will not accept the restoration of the right of priority in the national stage. —Revised to clarify that, regardless of the Rule 26 bis.3 and 49 ter.1(g) status of any particular Office, the priority date will still govern all PCT time limits, including the thirty-month period for filing national stage papers and fees under 37 CFR 1.495. —Revised to remove an example of a U.S. national stage application that was not entitled to a right of priority because the earlier-filed application was filed more than a year before the international filing date of the U.S. national stage application. —Revised to remove references to the versions of 35 U.S.C. 119(a) and 365(b) that were in effect prior to December 18, 2013. —New section directed to the content of former MPEP § 1817.02, "Continuation or Continuation-in-Part Indication in the Request."
1828.02
—Revised to update a website address.1830 —Revised to remove a reference to the PCT international application transmittal letter, Form PTO-1382.
1832
—Revised to update PCT Rule 92.2(a).1834 —Revised to delete references to telegraph and teleprinter from the section title and text of the section. Added an indication that facsimile transmission may be used to submit article 34 amendments.
1834.01
—Revised to delete PCT Rule 82.2 and replaced the cross-reference to PCT Rule 82.2 with a cross-reference to PCT Rule 82 quater. Further revised to include subsection numbers in the subsection titles.
1834.02
—Revised to update the list of States for which the USPTO agreed to conduct international searches and prepare international search reports and written opinions of the International Searching Authority.
1840
—Revised subsection III to delete indication that the United States International Searching Authority is the Examining Corps of the USPTO and to add indication that the Australian Patent Office (IP Australia), the Federal Service for Intellectual Property (Rospatent) (Russian Federation), the Israel Patent Office (ILPO), and the Japan Patent Office (JPO) are competent to carry out the international search for international applications filed with the RO/US. Subsection III further revised to add that the choice of the ISA must be made by the applicant on filing the international application, information which was previously in MPEP §§ 1840.01 and 1840.02. —Added information to subsection III regarding the amount of the international search fee and when the fee is due. Also added that if the selected ISA considers that the international application does not comply with the requirement of unity of invention, it may invite applicants to timely pay directly to it an additional search fee for each additional invention. —Section rewritten to explain that effective January 1, 2015, the EPO no longer has any limitations concerning its competency to act as an International Searching Authority, and to
1840.01
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explain the extent to which applications containing claims relating to business methods and subject matter set forth in PCT Rule 39.1 will be searched. —Moved the indication that the choice of the ISA must be made by the applicant on filing the international application from this section to MPEP § 1840. —Moved the indication that the choice of the ISA must be made by the applicant on filing the international application as well as information regarding the search fee and unity of invention previously in this section to MPEP § 1840.
1840.02
—Revised to include indication that that copies of documents cited in the international search report by the ISA/KR will be made available to applicant on the KIPO website within three months from the mailing of the international search report and that a fee may be required for request of the cited documents after the expiration of the three month period. —Added new section directed to the Australian Patent Office as an ISA.1840.03 —Added new section directed to the Federal Service for Intellectual Property (Rospatent) (Russian Federation) as an ISA.
1840.04
—Added new section directed to the Israel Patent Office (ILPO) as an ISA.1840.05 —Added new section directed to the Japan Patent Office (JPO) as an ISA.1840.06 —Revised to include new subsection V, entitled "Supplementary International Search (SIS)," and redesignated former subsections V and VI as VI and VII, respectively.
1842
—Revised to include an indication in subsection VII.A that at the time of publication of this Chapter, only three countries have not adopted Article 22(1) as amended: Luxembourg (LU), United Republic of Tanzania (TZ) and Uganda (UG). —Revised to indicate that Luxembourg is included in the regional designation "EPO" and that the United Republic of Tanzania and Uganda are included in the regional designation "ARIPO." —Revised to remove "[f]or international applications having an international filing date on or after January 1, 2004."
1843.04
—Revised to indicate that for international applications filed on or after July 1, 2014, the written opinion of the ISA and any informal comments submitted by the applicant are made available to the public in their original language as of the publication date.
1843.05
—Revised to remove a discussion of internal processing times in the Technology Centers and in the International Application Processing Division. —Revised to change "the relevant listings or related tables" to "the relevant listings."1844 —Revised subsection I.C to delete references to tables related to sequence listings. Subsection I.C further revised to clarify information regarding boxes 1a-1c and to add information regarding items 2-3 of Form PCT/ISA/210.
1844.01
—Revised subsection V to change "U.S. Classification" to "the patent classification as required by the ISA/US." —Revised subsection VI to include an indication that the USPTO in its capacity as the International Searching Authority makes a separate detailed search history of record in the applications and mails these search histories to applicants with the international search report. —Revised subsection VIII to delete an indication that the date of actual completion of the ISR is generated automatically by OACS. Replaced the example of Form PCT/ISA/210 with an example created using the January 2015 form. —Revised to remove "[f]or international applications having an international filing date on or after January 1, 2004."
1845
—Revised to replace "International Patent Classification and U.S. Classification" with "classifications."
1845.01
—Revised to change "electronic form" to "electronic form (text)" and "paper" to "paper/image."
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—Revised to change "sequence listing and/or tables relating thereto" to "sequence listing" and to delete information about tables that fail to comply with the technical requirements of Annex C of the Administrative Instructions. —Revised subsection I to delete an indication that the examiner must indicate the "type of material (i.e., a sequence listing and/or tables related thereto)." Further revised subsection I to include an indication that item 5 is available for providing any additional comments. —Revised subsection II to add "Quality Assurance Specialist or PCT" prior to "Special Program Examiner." —Revised to replace the example of Form PCT/ISA/237 with an example created using the July 2014 form. —Revised to change "Form PCT/ISA/101" to "Form PCT/RO/101."1845.02 —Revised replace the example of Form PCT/ISA/220 with an example created using the January 2015 form. —Section removed and reserved.1846 - 1847 —Revised the section title and text to delete references to tables related to sequence listings.1848 —Revised to include PCT Rules 13 ter.2 and 13 ter.3 and to update PCT Administrative Instructions Sections 513(d)-(f). —Revised to remove a paragraph directed to the filing of a sequence listing and/or any tables related thereto in the RO/US on CD-R or CD-ROM. —Revised subsection V to include IPAU, Rospatent, and ILPO. Also revised subsection V to indicate the additional search fee amounts can be found in Annex D of the Applicant's Guide (www.wipo.int/pct/en/appguide).
1850
—Revised to change "Special Program Examiners" to "Quality Assurance Specialists."1851 —Revised to replace tables listing information from WIPO Standard ST.16 with an explanation of what is included in Parts 7.3.1, 7.3.2, and 7.3.3 of WIPO Standard ST.16. —Revised to remove the table listing the two-letter country codes set forth in WIPO Standard ST.3 and updated the website address for WIPO Standard ST.3. —Revised to remove an indication that upon specific request and payment of the appropriate international type search report fee in a U.S. national nonprovisional application, that an international type search report Form PCT/ISA/201 will be prepared.
1852
—Revised to include a discussion of taking into account the earlier search results from a foreign Office. —Revised to update PCT Rule 46.5 and PCT Administrative Instructions Section 205 and to remove 37 CFR 1.415.
1853
—Revised to include an enhanced discussion of amendment practice before the International Bureau under PCT Article 19. —New section added entitled "Supplementary International Searches."1856 —Revised to update 35 U.S.C. 374.1857 —Revised to change "sends copies of published international applications" to "communicates published international applications." Further revised to replace a discussion of the USPTO receiving published international applications in printed form, on CD-ROM, and in other formats with an indication that published international applications are available from WIPO's Patentscope (www.wipo.int/patentscope/en/ ). —Revised to remove former Section 805 of the PCT Administrative Instructions and the discussion of sequence listings and/or tables filed in electronic format under former Part 8 of the PCT Administrative Instructions. —Revised to include an indication that sequence listings forming part of the international application may be filed in ASCII text (.txt) format and need not be filed in paper or PDF in addition to .txt format.
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—Revised to include an updated explanation of how to view and download the sequence listing parts of the description. —Section deleted.1857.01 —Revised to update PCT Rule 90 bis.5. Further revised to replace a discussion of an applicant inventor for the United States of America who cannot be found or reached with an indication
1859
that for international applications filed prior to January 1, 2013, applicants should see the version of PCT Rule 90 bis.5 in effect at that time. —Revised to include subsection numbers I and II in the subsection headings.1860 —Revised subsection I to include an indication that the examiner shall search at least to the point of bringing the previous search up to date and added a cross-reference to PCT Rule 66.1 ter. —Subsection I also revised to include an indication that any written opinion of IP Australia, Rospatent ILPO or JPO (in addition to any written opinion of the USPTO, EPO, or KIPO as had been previously indicated), will be treated as the first written opinion of the United States International Preliminary Examining Authority. —Section deleted.1860.01 —Revised to include a website address for the agreement between the USPTO and IB.1862 —Revised to include the Patent Prosecution Highway as an example of an acceleration program for which a positive international preliminary examination report might be used as a basis.
1864
—Revised to replace a cross-reference to MPEP § 1730 with a website address for obtaining copies of Form PCT/IPEA/401. —Revised to update PCT Rule 66.8 and 37 CFR 1.485 and to delete a reference to MPEP § 1871.01.
1864.01
—Revised to include an enhanced discussion of the filing of amendments under PCT Article 34. —Revised to delete "or teleprinter address."1864.02 —Revised to delete "on or after January 1, 2004."1864.03 —Revised to include a discussion of PCT Rule 54 with respect to when the demand must be filed.
1865
—Revised to include a cross-reference to MPEP § 1842, subsection VII.A for more information about when it may be necessary to file a demand before the expiration of 19 months from the priority date. —Revised to delete the addresses for the EPO and KIPO. —Revised to change the heading "Choice of Examining Authority" to "Choice of International Preliminary Examining Authority" and to provide enhanced guidance for choosing among IPEA/US, IPEA/KR, IPEA/RU, IPEA/EP, IPEA/AU, IPEA/IL, and IPEA/JP. —Revised to add an indication that Demands filed with the USPTO should preferably be filed via EFS-Web. Further revised to include an indication that courtesy copies of the Demand should not be filed with USPTO and to delete an indication that PCT Rule 59.3 was amended July 1, 1998. —Revised to replace the example of Form PCT/IPEA/401 with an updated example created using the July 2015 form. —Section deleted.1865.01 —Section removed and reserved.1866 —Revised to delete an indication that the amount of the handling fee is set out in the schedule of fees annexed to the PCT Regulations.
1867
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—Revised to remove the discussion of former 37 CFR 1.481(a) as it pertained to Demands filed prior to January 1, 2004. —Revised to indicate the Demand is considered as if it had been received on the actual filing date, i.e., the original date of receipt, "provided that the demand as submitted permitted the international application to be identified."
1868
—Revised to update PCT Rules 62.1 and 62.2 and to include PCT Rule 66.8.1871 —Revised to include an indication that a copy of any Article 19 amendments and accompanying documents will be provided to the IPEA by the International Bureau unless the IPEA has indicated that it has already received such a copy. —Revised the language to mention the statement referred to in PCT Article 19 and the letter required under PCT Rule 46.5(b). —Revised to indicate that when amendments are made under PCT Rule 66.8, the applicant shall be required to submit a replacement sheet for every sheet of the international application which, on account of an amendment, differs from the replaced sheet. Further revised to indicate that the replacement sheet or sheets shall be accompanied by a letter drawing attention to the differences between the replaced sheets and the replacement sheets, the basis for the amendments, and preferably explaining the reasons for the amendment. —Section deleted.1871.01 Updated to remove discussion of applications having an international filing date prior to January 1, 2004.
1874
Updated to remove discussion of applications having an international filing date prior to January 1, 2004.
1875
—Revised to include updated WIPO website address.1875.01 —Revised to clarify that with respect to an invitation to pay additional fees, the applicant may reply "directly to the International Preliminary Examining Authority issuing the invitation."
1875.02
—Revised to update PCT Administrative Instructions Section 607.1876 —Revised subsection II to change "examiner" to "International Preliminary Examining Authority."
1876.01
—Deleted subsection III, which had indicated that Form PCT/IPEA/412 must be signed by an examiner having at least partial signatory. —Revised to change two occurrences of "computer readable form" to "computer readable form (text)."
1877
—Revised to remove the note providing a cross-reference to former MPEP § 1878.01.1878 —Revised the introductory portion to include PCT Rule 66.1 ter and a discussion of top-up search procedures. Also revised to include an indication that since the IPEA/US will consider the written opinion of the ISA to be the first written opinion of the IPEA, item 1 of the cover sheet is marked accordingly and in item 2 of the cover sheet, the written opinion of the IPEA needs to be indicated as a second opinion. —Revised subsection I to update the discussion of the claims to reference "claim nos. or pages," to change "paper" to "paper/image," "electronic form" to "electronic form (text)," and to remove references to tables related to sequence listings. Also revised to include an indication that applicant's submission of a timely amendment to the claims alleged to be under Article 19 is accepted under Article 34 (not Article 19) unless the International Bureau has indicated the amendments were accepted under Article 19. Also revised to include an indication that the examiner must point out in item 4 if the amendments were not accompanied by a letter indicating the basis for the amendment in the application as filed. Also revised to add an indication that item 6 needs to be marked if the opinion is established taking into account
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the supplementary international search report(s) from the specified Supplementary International Searching Authority(ies) (SISA). —Revised subsection V to indicate the previous search should be brought up to date in all cases. Further revised to indicate that one copy of each newly cited foreign patent document and non-patent literature reference will be sent to the applicant and one copy will be retained for the application file. Further revised to change "Chapter II file" to "application file." —Section removed and reserved.1878.01 —Revised to update WIPO website address.1878.01(a) —Revised to update PCT Rule 66.8(a) and 37 CFR 1.485 and to delete PCT Rule 66.9.1878.02 —Revised to include an indication that the IPEA will consider a reply to the written opinion of the ISA if a Demand has been filed with the IPEA. —Revised the discussion of amendments to the claims, the description, and the drawings to include additional requirements with respect to the claims. More specifically, the discussion has been revised to include the requirement of PCT Rules 66.8(c) and 46.5(a) for a complete set of claims and the discussion has been revised to include the requirements set forth in PCT Rules 66.8(c) and 46.5(b) with respect to the letter accompanying the replacement sheets. —Revised to change "originally filed" to "originally filed/furnished," updated the discussion of the claims to reference "claim nos. or pages," changed "paper" to "paper/image," changed
1879
"electronic form" to "electronic form (text)," and removed references to tables related to sequence listings. —Revised to include an indication that the international preliminary examination report is otherwise known as International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty). —Revised to include a discussion of the requirement for a top-up search. —The first subsection heading was deleted and subsections II - X were renumbered as I - IX, resulting in subsection numbers I - VIII that correspond to Box Numbers I - VIII of Form PCT/IPEA/409. —Original subsection IV (renumbered as subsection III) was revised to include a new item (D), "no international search report has been established for the claims." —Original subsection X (renumbered as subsection IX) was revised to remove the discussion of Form PCT/IPEA/416. Further revised to move the information relating to information generated automatically by the OACS software from this subsection to a location preceding original subsection II (renumbered as subsection I), under a new heading "Form PCT/IPEA/409 Cover Sheet." —Original subsection X (renumbered as subsection IX) was further revised to include a discussion of what is required before annexes will be sent to the applicant and to the International Bureau, and what is required for annexes to be sent only to the International Bureau. —Revised to include an example of Form PCT/IPEA/416 preceding the example of Form PCT/IPEA/409, and the example of Form PCT/IPEA/409 was replaced with an updated example creating using the January 2015 form. —Revised to delete the note referencing former MPEP § 1879.01(a) for international applications filed prior to January 1, 2004.
1879.01
—Section deleted.1879.01(a) —Revised to indicate the international preliminary examination report and its annexes, if any, are transmitted to the applicant and the International Bureau using a Notification of
1879.02
Transmittal of International Preliminary Report on Patentability (Form PCT/IPEA/416). Also revised to change the requirement for Form PCT/RO/416 to be signed by a primary examiner
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to a requirement for the name of the authorized officer responsible for the international preliminary report to be indicated. —Revised to add Arabic, Korean and Portuguese to the list of languages in which the written opinion and the international preliminary examination report may be established.
1879.03
—Revised to delete PCT Rule 44 ter and to update 37 CFR 1.11 and 37 CFR 1.14.1879.04 —Revised to delete language regarding withdrawal of the demand or any election where an applicant/inventor for the United States could not be found or reached after diligent effort.
1880
—Revised to delete information regarding the storage of paper records by the Office of PCT Operations.
1881
—Revised to delete the text of 37 CFR 1.9 and to provide a cross-reference to 37 CFR 1.9 after the enumeration of the three types of U.S. national applications. Further revised to delete
1893
item (C), which contained cross-references to MPEP §§ 1895.01 and 1896 for special provisions that apply when the filing of an international application is taken into account in determining the patentability or validity of any application for patent or granted patent. —Revised to update 35 U.S.C. 371(c)(1), 35 U.S.C. 371(c)(4), and 37 CFR 1.491. Further revised to expand the discussion of 37 CFR 1.491(b) to clarify when entry into the national
1893.01
stage occurs for applications having an international filing date before September 16, 2012 and for international applications having an international filing date on or after September 16, 2012. —Revised to update 37 CFR 1.414(c)(2). Revised to move 37 CFR 1.495 and the discussion thereof from this section to MPEP § 1893.01(a)(1).
1893.01(a)
—Revised to include 37 CFR 1.495 and pre-AIA 37 CFR 1.495. Also revised to replace "To begin entry into the national stage " with "To avoid abandonment of an international application
1893.01(a)(1)
as to the United States," to replace "on or before" with "not later than the expiration of," and to replace "prior to" with "not later than the." —Revised to indicate it is preferable to file the required national stage items online using the EFS-Web system. —Revised to indicate the publication of an international application by the International Bureau within 30 months from the priority date is considered to satisfy the requirement of 37 CFR 1.495(b) for the USPTO to be furnished with a copy of the international application. —Revised to indicate that where the basic national fee has been paid and the copy of the international application (if required) has been received by expiration of 30 months from the priority date, but applicant has omitted any required item set forth in 37 CFR 1.495(c)(1), the Office will process the national stage application in accordance with the provisions of 37 CFR 1.495 in effect for that application. —Revised to explain that 37 CFR 1.495 was amended to permit postponement of the submission of the inventor's oath or declaration under certain conditions in national stage applications having an international filing date on or after September 16, 2012. —Revised to indicate that Article 19 amendments including a complete claim set in English will be entered and that Article 19 amendments filed before July 1, 2009 were not required
1893.01(a)(2)
to include a complete claim set. Further revised to include a website address where Form PTO-1390 can be found and to provide an indication that Form PTO-1390 includes a check box by which the applicant may expressly instruct the U.S. Designated/Elected Office not to enter the Article 19 amendment(s) in the United States national stage application. —Revised to include a website address where Form PTO-1390 can be found and to provide an indication that Form PTO-1390 includes a check box by which the applicant may expressly
1893.01(a)(3)
instruct the U.S. Designated/Elected Office not to enter the Article 34 amendment(s) in the United States national stage application.
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—Revised the discussion of substituting pages of the claims to discuss substituting pages "of the description or claims." —Section added to explain that for national stage applications having an international filing date on or after September 16, 2012, the applicant may be: (a) the inventor(s); (b) the legal
1893.01(b)
representative of a deceased or legally incapacitated inventor; (c) the assignee; (d) the obligated assignee (i.e., a person to whom the inventor is under an obligation to assign the invention); or (e) a person who otherwise shows proprietary interest in the application. —Revised to add an indication that the number of sheets of description for purposes of calculating the application size fee includes sequence listings in PDF, but not sequence listings
1893.01(c)
in .txt format. Further revised to delete discussion of tables related to sequence listings. Further revised to change the reference to 37 CFR 1.495(c)(3) to instead reference 37 CFR 1.495(c)(4). —Revised to change "after completion of the 35 U.S.C. 371 requirements for entry into the national stage" to "from the date the national stage is entered as set forth in 37 CFR 1.491."
1893.01(d)
—Changed the section title from "Oath/Declaration" to "Inventor's Oath or Declaration" and revised text to include 35 U.S.C. 371(c)(4) and a discussion thereof.
1893.01(e)
—Revised to include new subsection I, entitled "National Stage Applications Having An International Filing Date On Or After September 16, 2012." —Revised to include new subsection II, entitled "National Stage Applications Having An International Filing Date Before September 16, 2012." —Revised to delete the "CORRECTION OF INVENTORSHIP" heading and to reflect updated procedures for correcting inventorship, including an indication that effective September 16, 2012, the procedure set forth in 37 CFR 1.48(f) may be used to correct or update the name of an inventor in a nonprovisional application. —Revised to include a discussion of filing options when EFS-Web becomes unavailable and to include the website address of the USPTO's Legal Framework for EFS-Web.
1893.02
—Revised to remove a reference to discontinued Form PTO/SB/61/PCT. —Revised to update 37 CFR 1.496. Further revised to add a cross-reference to MPEP § 1893.01(a) for the date of entry into the national stage, and to provide an indication this date is commonly referred to as the "35 U.S.C. 371(c)" date.
1893.03
—Revised to add an indication that choosing the screen prompt "U.S. National Stage Under 35 U.S.C. 371" will serve to identify the submission as a national stage submission under 35 U.S.C. 371.
1893.03(a)
—Revised to delete the reference to 1077 O.G. 13 (14 April 1987). —Revised to include a new heading, "Conflicting Instructions" and to add a discussion of 37 CFR 1.495(g) indicating that for an application filed prior to September 16, 2012, an application submission containing conflicting instructions as to treatment under 35 U.S.C. 371 or 35 U.S.C. 111(a) was to be treated under 35 U.S.C. 111(a), but that for an application filed on or after September 16, 2012, such conflicting instructions will result in the application being treated as a national stage submission under 35 U.S.C. 371. —Revised to update 35 U.S.C. 363 by deleting "except as otherwise provided in section 102(e) of this title." Further revised to delete a reference to 37 CFR 1.496(a) and to provide
1893.03(b)
a description of the "371(c) date." Further revised to include a cross-reference to MPEP § 1893.01 for entry into the national stage. —Revised to include an indication that a Form PTO/DO/EO/903 in a national stage application having an international filing date prior to September 16, 2012 identifies the 371(c) date as the date of receipt of the 35 U.S.C. 371(c)(1), (c)(2), and (c)(4) requirements, and that a Form PTO/DO/EO/903 in a national stage application having with an international filing date on or after September 16, 2012 identifies the 371(c) date as the date of receipt of the 371(c)(1) and (c)(2) requirements.
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—Revised to delete an indication that for most legal purposes, the filing date is the PCT international filing date and to delete the exceptions to this general rule. —Revised to include an updated discussion of patent term adjustment under 35 U.S.C. 154(b)(1)(A)(i)(II) and to indicate that under the AIA Technical Corrections Act, the fourteen-month period in 35 U.S.C. 154(b)(1)(A)(i) for a national stage application is measured from the date of commencement of the national stage under 35 U.S.C. 371. —Subsection I was updated to include a discussion of petitions to accept delayed priority claims under 37 CFR 1.55(e) and petitions for restoration of the right of priority under 37
1893.03(c)
CFR 1.55(c). Subsection I further revised to add an indication that in U.S. national stage applications it is permissible, but not required, to present the claim for priority in an application data sheet. —Subsection II was updated to include a discussion of applicant satisfying the certified copy requirement of PCT Rule 17 by requesting the International Bureau to obtain the priority document from a digital library, to include an updated cover sheet example that makes reference to PCT Rule 17.1(b- bis), and to discuss some situations when the applicant will be unable to rely on the International Bureau to forward a copy of the priority document. —Subsection II was further revised to include updated instructions to examiners regarding what to do when a certified copy of the priority document is not in the national stage application file but applicant asserts that a certified copy of the priority document was timely furnished under PCT Rule 17. The instructions were previously found in MPEP § 1896. —Subsection III was revised to change references to MPEP § 201.11 to instead reference MPEP § 211 et seq. Further revised to include a discussion of restoration of the benefit of a provisional application under 37 CFR 1.78(b). Further revised to indicate the reference to a prior filed provisional application must be in an application data sheet for national stage applications having an international filing date on or after September 16, 2012, but that requirement will be satisfied by the presentation of the claim in the PCT Request form or by the presence of the claim on the front page of the published international application. —Revised to change "lack of unity of invention requirement" to "unity of invention requirement" and to change "the claims lack unity of invention" to "the claims do not meet
1893.03(d)
the unity of invention requirement." Added a WIPO website address and mention of the Patent Examiner's Toolkit for the International Search and Preliminary Examination Guidelines. Changed "lack unity of invention" to "do not meet the unity of invention requirement." —Changed "forwarded" to "communicated" and revised Subsection I to indicate that "The publication may also include other items as set forth in PCT Rule 48."
1893.03(e)
—Revised subsection II to remove an indication that a sample copy of PCT/DO/EO/903 is reproduced at the end of MPEP § 1893.03(a) and to remove the indication that with respect to annexes that have been entered, the National Stage Processing Division will write in pencil on any original sheet that it was replaced by an Article 34 amendment. —Revised the discussion to address supplementary international search reports under PCT Rule 45 bis.
1893.03(g)
—Revised to update the description of a "bypass application."1895 —Revised to indicate applications that are filed under 35 U.S.C. 111(a) and claim the benefit of the filing date of an international application which designates the United States are often
1895.01
referred to as "bypass" applications. Further revised to include an indication that the specific reference to the international application must be in an application data sheet for continuing applications having a filing date on or after September 16, 2012. Further revised to update cross-references to specific locations within 37 CFR 1.55, 37 CFR 1.78, and MPEP Chapter 200.
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—Revised to include references to the requirements of 37 CFR 1.55(h) and (i) and to include a discussion of restoration of the right of priority under 37 CFR 1.55(c). Pertaining to revisions made in the "Chart of Some Common Differences":1896 —For the filing date of national applications filed under 35 U.S.C. 111(a), the chart now indicates "see 37 CFR 1.53(b)." The row directed to the date the application was "filed in the United States" for prior art purposes under 35 U.S.C. 102(e) has been deleted. —Regarding claiming priority under 35 U.S.C. (a)-(d), the information for both 111(a) and 371 applications has been updated so it is consistent with revised 37 CFR 1.55. —The row that was directed to "Reference to Application in Declaration" has been deleted. —The row that was directed to "Copendency with International Application" has been deleted. Pertaining to revisions made in subsections I-VI:1896 —Revised subsection I to indicate "except as provided in 35 U.S.C. 111(c)." —Revised to delete subsection II, "Effective date as a reference," and to renumber former subsections III-V as II-IV. —Revised original subsection III (renumbered as subsection II) for consistency with revised 37 CFR 1.55 and to eliminate a discussion of the processing of paper copies of priority documents. —Revised original subsection III (renumbered as subsection II) to move to MPEP § 1893.03(c) the instructions about what to do when a certified copy of the priority document is not in the national stage application file but applicant asserts that a certified copy of the priority document was timely furnished under PCT Rule 17. —Revised original subsection IV (renumbered as subsection III) to delete "(which entered the national stage from international applications after compliance with 35 U.S.C. 371)" following "U.S. national stage applications" and to delete "(effective May 1, 1993)" after "1.499." —Original subsection VI, entitled "Reference to application in declaration," has been deleted.
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CHAPTER 2100 (November 2015):
—Revised title of subsection II to add the word "approaching" to clarify that the discussion therein pertains to prior art which teaches a range overlapping, approaching, or touching the claimed range.
2131.03
—Revised section title to read “Obviousness of Similar and Overlapping Ranges, Amounts, and Proportions.”
2144.05
—In subsection I, revised subsection title to read "Overlapping, Approaching, and Similar Ranges, Amounts, and Proportions." Added a quotation from Titanium Metals Corp. of America to the parenthetical that discusses the decision. Added citations to, and discussions of, Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997); In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955); In re Waite, 168 F.2d 104 (CCPA 1948); In re Scherl, 156 F.2d 72 (CCPA 1946); In re Swenson, 132 F.2d 1020 (CCPA 1942); In re Bergen, 120 F.2d 329 (CCPA 1941); In re Becket, 88 F.2d 684 (CCPA 1937); In re Dreyfus, 73 F.2d 931 (CCPA 1934); In re
Lilienfeld, 67 F.2d 920 (CCPA 1933); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. Appx. 906 (Fed. Cir. 2014); and Gentiluomo v. Brunswick Bowling and Billiards Corp., 36 Fed. Appx. 433 (Fed. Cir. 2002) (non-precedential). —In subsection II, revised subsection title to read "Routine Optimization." —In subsection II.A, added citations to, and discussions of, Smith v. Nichols, 88 U.S. 112 (1874); In re Williams, 36 F.2d 436 (CCPA 1929); and KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398
(2007). —In subsection II.B, revised subsection title to read “There is a Motivation to Optimize Result-Effective Variables,” revised the explanation of In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); deleted the citation to, and explanation of, In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA); and added a citation to, and explanation of, KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007). —In subsection III, added subsection heading "A. Showing That the Change is Critical" at the beginning of the subsection and added subsection heading "B. Showing That the Prior Art Teaches Away" preceding the final two paragraphs of subsection III. —In subsection III.A, added citations to, and explanations of, Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 (1916); In re Scherl; In re Becket; In re Lilienfeld; and In re Wells, 56 F.2d 674 (CCPA 1932). —In subsection II, clarified the explanation of Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 114 USPQ2d 1349 (Fed. Cir. 2015).
2161
—In subsection I, added a quotation from Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559 43 USPQ2d 1398,(Fed. Cir. 1997) in a parenthetical following the case citation.
2161.01
—In subsection III, expanded the explanation of MagSil Corp. v. Hitachi Global Storage Technologies, Inc., 687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012). Also revised parenthetical describing Convolve, Inc. v. Compaq Computer Corp., 527 F.App’x 910 (Fed. Cir. 2013) to explain that the decision affirmed a grant of summary judgment of invalidity due to lack of enablement. —Revised subsection I.A to add cross-references to MPEP § 2106 for guidance on subject matter eligibility of claims directed to genes or other biomolecule sequences.
2163
—In subsection II.A, in the second paragraph, added a citation to, and explanation of, Hyatt v. Dudas, 492 F.3d 1365, 1370, n.4 (Fed. Cir. 2007). In subsection II.A.1, first paragraph, clarified the parenthetical describing In re Katz Interactive Call Processing Patent Litigation. —In subsection II.A.3(a), replaced the example that followed the citation to Enzo Biochem, 323 F.3d at 964, 63 USPQ2d at 1613 with an expanded discussion of the Enzo Biochem decision. Also revised to clarify that the antibody at issue in Noelle v. Lederman was an unknown antibody,
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and that the antigen in Centocor Ortho Biotech, Inc. v. Abbott Laboratories was characterized in the prior art. —Revised to provide the full citation for Williamson v. Citrix Online, LLC, 792 F.3d 1339, 115 USPQ2d 1105 (Fed. Cir. 2015) and corrected the year in the citation to Watts v. XL Systems, Inc.
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CHAPTER 2100 (October 2015):
Corrected reproduced 35 U.S.C. 103 (pre-AIA) by removing "of this title."Passim —In subsection I.C, corrected the citation of Griffin v. Bertina.2103 —In subsection III.A, added discussion of and citations to Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 110 USPQ2d 1976 (2014) and Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012). Deleted discussion of and citations to Rubber Tip Pencil Co. v. Howard and Mackay Radio & Telegraph Co. Modified the discussion of Bilski v. Kappos to remind examiners that software and business methods are not excluded categories of subject matter. Deleted the cross-reference to MPEP § 2106.01. Modified the cross-reference to MPEP § 2107 to clarify that utility is a separate requirement from eligibility under 35 U.S.C. 101. —In subsection IV.A, in the third paragraph, clarified that the scope of a "means" limitation is defined by the inventor in the written description and equivalents thereof that perform the claimed function. —Revised to state that 35 U.S.C. 101 has four requirements. Added as a requirement that the inventor(s) must be the applicant in an application filed before September 16, 2012, and that
2104
the inventor or each joint inventor must be identified in an application filed on or after September 16, 2012. Added cross-reference to MPEP § 2137.01 for a detailed discussion of inventorship. Further added explanation that failure to identify the inventor(s) in an application filed on or after September 16, 2012 is a basis for a rejection under 35 U.S.C. 101 and 115. —Modified to include subsection headings. Revised and reorganized to set forth policies and procedures consistent with 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
2105
FR 74618 (December 16, 2014), 1410 OG 50 (January 6, 2015) and an Office memorandum "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," signed June 25, 2014. For example, added more explanation pertaining to the holding and scope of the Chakrabarty opinion and an explanation of and citation to In re Roslin Institute (Edinburgh), 750 F.3d 1333, 110 USPQ2d 1668 (Fed. Cir. 2014). —Revised to set forth policies and procedures consistent with 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 FR 74618 (December 16, 2014), 1410 OG 50 (January 6, 2015)
2106
and an Office memorandum "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al.," signed June 25, 2014. —In subsection I, revised the list of non-limiting examples of claims that are not directed to one of the statutory categories to delete "a naturally occurring organism …" and to add "data per se" with a citation to Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 111 USPQ2d 1717 (Fed. Cir. 2014). —Subsection II revised to include citations to Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 110 USPQ2d 1976 (2014); Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. _, 132 S. Ct. 1289, 101 USPQ2d 1961 (2012); and the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 FR 74618 (Dec. 16, 2014) and related materials available on the USPTO website. —In subsection II, added the subheading "Analysis of Subject Matter Eligibility" and an explanation that if a claim is directed to a judicial exception, it must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination, are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself. Deleted the citation to Ultramercial v. Hulu, 657 F.3d 1323 (Fed. Cir. 2011) and deleted the analysis previously set forth in subsections II.A and II.B in their entirety. Added an explanation that the 2014 Interim Guidance on Patent Subject Matter Eligibility and related
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materials provide a detailed discussion of the analysis required to determine whether a claim is directed to patent-eligible subject matter. —In subsection III, changed "physical phenomenon" to "natural phenomenon" and "a practical application of an abstract idea" to "significantly more than an abstract idea." Additional changes made to improve readability. —Section removed and reserved.2106.01 —Revised to state that 35 U.S.C. 101 has four requirements. Added as a requirement that the inventor(s) must be the applicant in an application filed before September 16, 2012, and that
2107.01
the inventors must be identified in an application filed on or after September 16, 2012. Added cross-reference to MPEP § 2137.01 for a detailed discussion of inventorship. —Added a supporting citation to In re Suitco Surface, Inc., 603 F.3d 1255, 1259, 94 USPQ2d 1640, 1643 (Fed. Cir. 2010).
2111
—Added a new paragraph to clarify the differences between claim interpretation made during examination and court proceedings, including supporting citations to In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1028 (Fed. Cir. 1997) and In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1321-22 (Fed. Cir. 1989). —Revised text to clarify that the broadest reasonable interpretation must be consistent with the ordinary and customary meaning of the term (unless there is an explicit special definition) as used in the specification and drawings. —In subsection I, deleted the first two sentences of the third paragraph that discussed broadest reasonable construction and moved the references to In re Zletz, 893 F.2d 319, 13 USPQ2d
2111.01
1320 (Fed. Cir. 1989) and Chef America, Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 69 USPQ2d 1857 (Fed. Cir. 2004) to the first paragraph. —In subsection II, corrected a citation of 35 U.S.C. 112(a) to 112(f) and clarified that the structure, material or acts corresponding to the function should determine the meaning of the claim limitation. In subsection IV, revised text to clarify that applicant must set forth any special definitions "in the specification at the time of filing." Deleted the reference to In re Weiss, 989 F.2d 1202 (Fed. Cir. 1993). —In subsection III, deleted text following the citation to, and explanation of, Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 67 USPQ2d 1132 (Fed. Cir. 2003), except for the citation to Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 39 USPQ2d 1573 (Fed. Cir. 1996). Added references to In re Abbott Diabetes Care Inc., 696 F.3d 1142, 104 USPQ2d 1337 (Fed. Cir. 2012); In re Suitco Surface, Inc., 603 F.3d 1255, 1260-61, 94 USPQ2d 1640, 1644 (Fed. Cir. 2010); and 3M Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 107 USPQ2d 1717 (Fed. Cir. 2013). —Revised title of subsection IV to read "Applicant May Be Own Lexicographer and/or May Disavow Claim Scope." Added paragraph explaining that the only exceptions to giving the words in a claim their ordinary and customary meaning in the art are (1) when the applicant acts as his own lexicographer; and (2) when the applicant disavows or disclaims the full scope of a claim term in the specification. Included supporting references to Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005); Starhome GMBH v. AT&T Mobility LLC, 743 F.3d 849, 109 USPQ2d 1885 (Fed. Cir. 2014); and Thorner v. Sony Computer Entertainment America LLC, 669 F.3d 1362, 101 USPQ2d 1457 (Fed. Cir. 2012). —In subsection IV, added new subsection heading "A. Lexicography" and revised text therein to add a discussion of Old Town Canoe Co. v. Confluence Holdings Corp., 448 F.3d 1309, 78 USPQ2d 1705 (Fed. Cir. 2006) and to clarify the explanation of Merck & Co. v. Teva Pharms. USA, Inc. —In subsection IV, added new subsection "B. Disavowal" to clarify disavowal or disclaimer of claim scope and to add citations to and explanations of SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed.Cir.2001); In re Am. Acad. Of Sci. Tech Ctr.,
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367 F.3d 1359 (Fed. Cir. 2004); and In re Abbott Diabetes Care Inc., 696 F.3d 1142, 104 USPQ2d 1337 (Fed. Cir. 2012). —Added new subsection V, including a flowchart to assist the examiner in proper claim interpretation decisions. —Added an explanation of, and citation to, In re Giannelli, 739 F.3d 1375, 109 USPQ2d 1333 (Fed. Cir. 2014) and moved the parenthetical quoting Minton v. Nat'l Ass'n of Securities Dealers, Inc., to the end of the last sentence.
2111.04
—Revised the titles of subsections I, I.A, and II to clarify that the functional relationship discussed is between printed matter and an associated product (or process).
2111.05
—In subsection III, added that a claim directed to computer readable medium storing instructions or executable code that recites an abstract idea must be evaluated under 35 U.S.C. 101. —In subsection II, added a citation to, and explanation of, In re Omeprazole Patent Litigation, 483 F.3d 1364, 82 USPQ2d 1643 (Fed. Cir. 2007).
2112
—In subsection IV, deleted the citation to, quote to, and explanation of, In re Robertson, 169 F.3d 743 (Fed. Cir. 1999). —Revised the title of subsection V to clarify that the burden of production shifts to the applicant when the examiner presents evidence or reasoning showing inherency, and added an additional citation to In re Best, 562 F.2d 1252 (CCPA 1977) in the first paragraph. —In subsection II, moved the citation to In re Spada, 911 F.2d 605 (Fed. Cir. 1990) to after the first sentence.
2112.01
—In subsection III, expanded the discussion of In re Ngai, 367 F.3d 1336 (Fed. Cir. 2004) and added citations to, and explanation of, In re Miller, 418 F.2d 1392 (CCPA 1969); In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947); In re Xiao, 462 Fed. Appx. 947 (Fed. Cir. 2011); and In re Bryan, 323 Fed. Appx. 898 (Fed. Cir. 2009) regarding printed matter. Also, added an explanation of, and citations to, King Pharmaceuticals, Inc. v. Eon Labs, Inc., 616 F.3d 1267, 95 USPQ2d 1833 (2010) and In re Kao, 639 F.3d 1057, 98 USPQ2d 1799 (Fed. Cir. 2011) pertaining to "instruction" limitations in method claims. —Revised to number the subsections "I" and "II," and in subsection II, added "obviousness" before "rejection of claims 2-5 and 7-10."
2112.02
—Revised title of subsection I to clarify that the text therein discusses inherency and functional limitations in apparatus claims. Subsection I further revised the discussion of In re Schreiber,
2114
explaining that to establish a prima facie case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus. Added supporting citations to Bettcher Industries, Inc. v. Bunzl USA, Inc., 661 F.3d 629,100 USPQ2d 1433 (Fed. Cir. 2011) and In re Swinehart, 439 F.2d 210, 169 USPQ 226 (CCPA 1971). —Quotation from Hewlett-Packard Co. v. Bausch & Lomb Inc. moved from subsection I to subsection II. —In subsection III, deleted the citation to In re Ruskin, 347 F.2d 843 (CCPA 1965). —In subsection IV added references to In re Translogic Technology, Inc., 504 F.3d 1249, 84 USPQ2d 1929 (Fed. Cir. 2007); Intel Corp. v. U.S. Int'l Trade Comm'n, 846 F.2d 821, 20 USPQ2d 1161 (Fed. Cir. 1991); Nazomi Communications, Inc. v. Nokia Corp., 739 F.3d 1339, 109 USPQ2d 1258 (Fed Cir. 2014); and Intel Corp. v. U.S. Int'l Trade Comm’n, 846 F.2d 821, 20 USPQ2d 1161 (Fed. Cir. 1991). —Revised the explanation of In re Otto, 312 F.2d 937 (CCPA 1963), including adding a new paragraph describing the claimed invention. Deleted the last sentence pertaining to the application of the discussed cases to product or kit claims.
2115
—Section removed and reserved.2116 —In subsection II.A, corrected the citation of 35 U.S.C. 102(a)(2) to 35 U.S.C. 102(a)(1).2127
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—In subsection IV, correct the quotation from footnote 4 in In re Klopfenstein at 380 F.3d, 1345, 1349. Added a citation to Diomed, Inc. v. Angiodynamics, 450 F.Supp.2d 130 (D. Mass.
2128.01
2006), wherein the court held that a video that accompanied oral presentations was not a printed publication. Moved text regarding oral presentations being prior art under 35 U.S.C. 102(a)(1) and the cross-reference to MPEP § 2125.02(e) to the last paragraph. —Replaced "Express Mail" with "Priority Mail Express®."2133 —Revised text in first two paragraphs to clarify the inventorship requirement for both AIA and pre-AIA applications. Changed cross-references to MPEP § 602.01(c) and MPEP § 706.03(a).
2137.01
—Corrected pre-AIA 35 U.S.C. 103 by deleting "of this title."2141 —Corrected the spelling of In re Lintner.2142 and
2144 —In subsection II.A.4(a), deleted the parenthetical about Baird, and in subsection II.A.4(d), corrected the spelling of In re Lintner.
2144.08
—Updated 37 CFR 1.130(d).2155 —Removed Editor Note, added cross references to MPEP § 602.01(c) et seq. and MPEP § 706.03(a), and added text to clarify that a rejection under pre-AIA 35 U.S.C. 102(f) should be
2157
not made if the application is subject to the first inventor to file provisions of the AIA and to cross-reference MPEP §§ 2159 and 2137. —Updated the website address for the Office's KSR training materials.2158 —In subsection II, added a citation to, and discussion of, Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 114 USPQ2d 1349 (Fed. Cir. 2015).
2161
—Revised the first paragraph to limit the cross-references to other MPEP sections to those necessary in the context of the subject matter of this section.
2161.01
—In subsection I, added a citation to LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 76 USPQ2d 1724 (Fed. Cir. 2005), reorganized the discussion of Ariad, and deleted the citation and discussion of In re Hayes Microcomputer Prods., Inc. Also, added new text at the end of subsection I to clarify that rejections under 35 U.S.C. 112(b) may be made in addition to a written description rejection, and included a supporting citation to In re Donaldson Co., 16 F.3d 1189,29 USPQ2d 1845 (Fed. Cir. 1994). —In subsection III, added citations to, and discussion of, Magsil Corp. v. Hitachi Global Storage Technologies, 687 F.3d 1377, 103 USPQ2d 1769 (Fed. Cir. 2012) and Convolve, Inc. v. Compaq Computer Corp., 527 F.App'x 910 (Fed. Cir. 2013). —In subsection I, added a citation to Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 94 USPQ2d 1161 (Fed. Cir. 2010) as additional support for the statement that the written description requirement is separate and distinct from the enablement requirement.
2163
—In the text preceding subsection I.A, deleted text that discussed new matter issues (such issues are discussed in more detail in subsection I.B) and deleted redundant text pertaining the question of adequate written description when a "claim limitation has been added or removed" in a new or amended claim. —In subsections I.A and II.A, deleted "strong" before presumption to more accurately reflect the supporting court citation. —In subsection II.A, added text to clarify that to make a prima facie case the examiner must point out the claim limitations that are not adequately supported and explain any other reasons the claim is not fully supported, including supporting citations to Hyatt v. Dudas, 492 F.3d 1365, 83 USPQ2d 1373 (Fed. Cir. 2007) and Stored Value Solutions, Inc. v. Card Activation Technologies, 499 Fed.App'x 5 (Fed. Cir. 2012). Also added a citation to AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014)
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as additional support for the statement that whether the written description requirement is satisfied is a question of fact. —In subsection II.A.1, added a citation to In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 97 USPQ2d 1737 (Fed. Cir. 2011). In subsection II.A.2, added a new last sentence to clarify that sufficient information must be provided to show that the inventor had possession of the invention as claimed. —In subsection II.A.3(a), deleted the citation to Fonar Corp. v. Gen. Elec. Co., and added references to Centocor Ortho Biotech, Inc. v. Abbott Laboratories, 636 F.3d 1341, 97 USPQ2d 1870 (Fed. Cir. 2011); Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 86 USPQ2d 1235 (Fed. Cir. 2008); Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 53 USPQ2d 1225 (Fed. Cir. 1999); and Biomedino, LLC v. Waters Technologies Corp., 490 F.3d 946, 83 USPQ2d 1118 (Fed. Cir. 2007). Also, added new text to clarify that when rejections under 35 U.S.C. 112(b) are made for means (or step) plus function claims based on failure of the specification to disclose sufficient corresponding structure, materials, or acts that perform the claimed function, a rejection for lack of adequate written description should also be made. —In subsection II.A.3(a)(i), in paragraph (C)(2), limited the example to the biotech art because the discussion therein regarding a structure-function correlation would not necessarily apply to other arts, such as some computer-related arts. Deleted citations to Fonar Corp. v. Gen. Elec. Co. and In re Hayes Microcomputer Prod., Inc. Patent Litigation. In subsection II.A.3(a)(ii), added citations to and explanation of AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014). Deleted the statement that what constitutes a representative number is an inverse function of the skill and knowledge in the art. —In the title of subsection II.A.3(b), changed "365(c)" to "365" and added "386" to address priority/benefit claims to international design applications. —Deleted the references to Regents of the Univ. of Cal. V. Eli Lilly, 119 F.3d 1559 (Fed. Cir. 1997) and In re Wertheim, 541 F.2d 257 (CCPA 1976). Added new subsections V. Original
2163.03
Claim not Sufficiently Described, and VI. Indefiniteness Rejection of a Means- (or Step-) Plus-Function Limitation. —In subsection I.B, added a citation to AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 111 USPQ2d 1780 (Fed. Cir. 2014). In subsection II, added a citation to Rozbicki v. Chiang, 590 Fed.App'x 990 (Fed. Cir. 2014).
2163.05
—In subsection I, added a new first paragraph discussing MagSil Corp. v. Hitachi Global Storage Technologies Inc., 103 USPQ2d 1769 (Fed. Cir. 2012) and Auto. Techs. Intl, Inc. v. BMW of N. Am., Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007).
2164.06(a)
—In subsection II, added text to clarify that programmed steps, algorithms or procedures that the computer performs to accomplish a claimed function can be described in any way that would be understood by one of ordinary skill in the art.
2164.06(c)
—In subsection I, added discussion of In re Bigio, 381 F.3d 1320, 72 USPQ2d 1209 (Fed. Cir. 2004).
2173.01
—In subsection I, revised subsection title and added discussions of and citations to Nautilus, Inc. v. Biosig Instruments, Inc., 527 U.S. __, 110 USPQ2d 1688 (2014); In re Packard, 751
2173.02
F.3d 1307, 110 USPQ2d 1785 (Fed. Cir. 2014); In re Buszard, 504 F.3d 1364 (Fed. Cir. 2007); In re Yamamoto, 740 F.2d 1569 (Fed. Cir. 1984); and In re Zletz, 893 F.2d 319, 13 USPQ2d 1320 (Fed. Cir. 1989). Also, added a cross reference to MPEP § 2111 et seq. —In subsection I, deleted citations to Ex parte Miyazaki, 89 USPQ2d 1207, 1212 (Bd. Pat. App. & Int. 2008); In re Am. Acad. Of Sci. Tech Center, 367 F.3d 1359 (Fed. Cir. 2004); Exxon
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Research and Eng'g Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001), and Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354 (Fed. Cir. 2004). —Subsection II revised to add the court's analysis in In re Packard of the particularity and distinctness requirement for claims as set forth in 35 U.S.C. 112(b). Deleted citation of Orthokinetics Inc. v. Safety Travel Chairs, Inc. Also deleted citation to and explanation of Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004) and the
discussion of the test for definiteness from the final paragraph of subsection II. —In subsection III.A, added "prima facie" before "indefinite" in the first paragraph. In subsection III.B, added citation to In re Packard in the context of making an indefiniteness rejection final and responding to indefiniteness rejections, and deleted reference to In re Skvorecz, 580 F.3d 1262 (Fed. Cir. 2009). Subsection III.B further revised to clarify that applicants should respond to rejections by explaining that claim language would be recognized by a person of ordinary skill in the art as definite, and that examiners are encouraged to suggestion changes to the claims to improve clarity or precision. —Deleted reference to Bancorp Services, L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367 (Fed. Cir. 2004).
2173.03
—Deleted reference to Ultimax Cement Mfg. v. CTS Cement Mfg., 587 F.3d 1339 (Fed. Cir. 2010) and inserted a citation to In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA
2173.04
1970) with text explaining that a broad claim is not indefinite merely because it encompasses a wide scope if it is clearly defined. —In subsections I and II, added citations to, and discussion of, In re Packard, 751 F.3d 1307, 110 USPQ2d 1785 (Fed. Cir. 2014).
2173.05(a)
—In subsection II, deleted citations to, and discussion of, Shatterproof Glass Corp. v. Libbey Owens Ford Co., 758 F.2d 613, 225 USPQ 634 (Fed. Cir. 1985) and Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 1986). —In subsection I, added "[t]erms of degree are not necessarily indefinite" as the first sentence, and added citations to, and explanation of, Eibel Process Co. v. Minnesota & Ontario Paper
2173.05(b)
Co., 261 U.S. 45 (1923); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 112 USPQ2d 1188 (Fed. Cir. 2014); and Ex parte Oetiker, 23 USPQ2d 1641 (Bd. Pat. App. & Inter. 1992). Deleted the citations to Young v. Lumenis, Inc., 492 F.3d 1336, 1346 (Fed. Cir. 2007); and Exxon Research and Eng'g Co. v. United States, 265 F.3d 1371, 60 USPQ2d 1272 (Fed. Cir. 2001). —In subsection II, moved former subsections II.A through II.E to new subsections III.A through III.E. Deleted subsection II.F and moved the discussion of Ex parte Oetiker to subsection I, the citation of Ex parte Anderson to subsection III, and the citation of Ex parte Caldwell to MPEP 2173.05(d). —Added new subsection heading III. Approximations and inserted thereunder the text of former subsections II.A through II.E. —Renumbered former subsection heading III as subsection IV and added citations to, and explanation of, Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 112 USPQ2d 1188 (Fed. Cir. 2014); Ex parte Anderson, 21 USPQ2d 1241 (Bd. Pat. App. & Inter. 1991); and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1261 (Fed. Cir. 2014). —Added new item (E), including a citation to Ex parte Caldwell, 1906 C.D. 58 (Comm'r Pat. 1906).
2173.05(d)
—Added citation to In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) after the first sentence. Deleted citation to, and explanation of, Energizer Holdings, Inc. v. Int'l Trade Comm'n, 435 F.3d 1366 (Fed. Cir. 2006).
2173.05(e)
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—Added a citation to, and discussion of, Datamize LLC v. Plumtree Software Inc., 75 USPQ2d 1801 (Fed. Cir. 2005) and changed "Keep in mind…" to read "Examiners should keep in mind…."
2173.05(g)
—In subsection I, added citation to, and discussion of, In re Packard, 751 F.3d 1307, 110 USPQ2d 1785 (Fed. Cir. 2014).
2173.06
—In subsection I, deleted the citations to Lighting World, Inc. v. Birchwood Lighting, Inc., and Inventio AG v. Thyssenkrupp Elevator Americas Corp. Revised text to state that the
2181
presumption that 35 U.S.C. 112(f) does not apply can be overcome when the claim fails to recite sufficient definite structure to accomplish the function. Added supporting citations to Williamson v. Citrix Online, LLC, ___F.3d ____, 115 USPQ2d 1105, 2015 WL 3687459, at *6-7 (Fed. Cir. 2015); Watts v. XL Systems, Inc., 232 F.3d 877 (Fed. Cir. 2001); and Personalized Media Communications, LLC v. International Trade Commission, 161 F. 3d 696 (Fed. Cir. 1998). Also added text setting forth the standard to determine if the claim has a sufficiently definite meaning, with supporting citations to Williamson and Greenberg v. Ethicon Endo-Surgery, Inc. —In subsection I.A, second paragraph, revised the phrase "understand the term to be the name" to read "understand the term to have a sufficiently definite meaning as the name." Added a discussion of Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 80 USPQ2d 1225 (Fed. Cir. 2006). In the fifth paragraph, deleted the last two sentences, including a reference to In re Morris. In the sixth paragraph, added "or other linking word" after "word 'for'". —In subsection I.C, revised "sufficient structure" to read "sufficiently definite structure." Also added a discussion of Mass. Inst. of Tech., and a reference to Williamson v. Citrix Online, LLC.
—Added new paragraph (B) indicating that if a means- (or step-) plus-function limitation in a claim is not supported by corresponding structure, material or acts in the specification disclosure,
2185
a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as lacking adequate written description should be considered. Redesignated paragraphs (B) and (C) to (C) and (D), respectively.
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CHAPTER 2200:
—Revised cross-reference description to read "See MPEP Chapter 2800 for guidance on the procedures for supplemental examination proceedings, and for procedures regarding the order
2201
and first Office action mailed in any ex parte reexamination proceeding ordered as a result of a supplemental examination proceeding." —In the penultimate paragraph, deleted the word "original" modifying "requests." —Corrected 37 CFR 1.902.2202 —In the fourth paragraph, deleted the second and third sentences discussing keeping identity confidential and modified the last sentence to clarify that it applied to persons other than reexamination requesters.
2203
—Added a new paragraph to clarify the procedures for keeping a requester's identity confidential and to mirror language in MPEP § 2214. —Revised the first paragraph to insert "generally" prior to "the length of the term of the patent," and to replace "citations" with "submissions."
2204
—Deleted the last sentence in the first paragraph because it discussed discontinued procedures. —Revised to indicate that no fee is required for a submission under 37 CFR 1.501 (rather than "a submission of citations"); submissions under 37 CFR 1.501 are no longer limited to citations under 35 U.S.C. 301.
2205
—In the paragraph before the examples, added "discarded, or closed" after "returned to the sender" to reflect current Office procedures for handling an improper submission. —Modified text regarding a submission after the date an order for reexamination is granted to state that such a submission will be stored until reexamination is concluded.
2206
—Revised to replace "citation(s)" with "submission(s)" throughout section in order to apply requirements to both prior art citations and written statement filings. —In subsection I.A.1, revised "reexamination file" to "patent file" to reflect current processing. In subsection I.A.2, deleted the example as outdated. —In subsections II.A.1 and II.A.2, revised text by adding "discarded, or closed if advertently entered into the file" as alternatives to returning the submission to sender to reflect current Office procedures for handling an improper submission. —In the second paragraph, deleted the text "It is to be understood that highlighting" and inserted "Highlighting" in the same place.
2207
—Added "and written statements under 35 U.S.C. 301" at the end of the sentence cross-referencing MPEP § 2206.
2208
—In the second paragraph, deleted the last sentence about prosecution being reopened as it reflected outdated procedures.
2209
—In the listing of the basic characteristics of ex parte reexamination, modified text in item (B) to clarify that the Office may also consider double patenting issues as discussed in MPEP § 2258 and added a parenthetical about ex parte reexamination ordered under 35 U.S.C. 257; in item (E) added a parenthetical about supplemental examination and ex parte reexamination ordered under 35 U.S.C. 257; and in item (I) added text to explain that images of non-patent literature are not viewable through Public PAIR and that such copies are available from the Office of Public Records and may be ordered online. —Added a cross reference to MPEP § 2803.02. —Added "AIA" prior to the citation to 35 U.S.C. 315 to clarify that it is the provision in effect on or after September 16, 2012.
2210
—Clarified text by moving text from the last paragraph into the middle of the first paragraph.2211
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—Added "AIA" prior to the citation to 35 U.S.C. 315 to clarify that it is the provision in effect on or after September 16, 2012. Added cross-references to MPEP §§ 1401-1403 and §§ 2801-2803.
2212
—Deleted the third paragraph "If an attorney or agent files a request for reexamination …" because it inaccurately implied that the attorney or agent is estopped, rather than the real party in interest for the request.
2213
—In the discussion about the requirement for a copy of every patent or printed publication, added a sentence to clarify that there is a waiver for copies of U.S. patents and U.S. patent application publications.
2214
—Added "AIA" prior to the citation to 35 U.S.C. 315 to clarify that it is the provision in effect on or after September 16, 2012. —In the penultimate paragraph, deleted "since a reexamination proceeding is not an 'application'" and inserted in its place "except as provided in MPEP § 2258.02" because the current rules pertaining to foreign priority and domestic benefit require an application data sheet in some situations. —Inserted an updated version of PTO/SB/57. —Modified text to clarify that only a patent owner requester can establish micro entity status.2215 —Revised to include written statements under 37 CFR 1.501 in the reference to prior art citations by replacing "prior art citations" with "submission under 37 CFR 1.501" and similar corresponding changes. —In the first paragraph, clarified that the substantial new question of patentability must be in view of patents and printed publications cited under the provisions of 35 U.S.C. 302.
2216
—Inserted "inventor" in the phrase "the first-inventor-to-file."2217 —Deleted paragraph that stated it is helpful to include copies of prior art considered during earlier prosecution as no longer necessary.
2218
—Revised text to clarify that the waiver of the copy requirement in 37 CFR 1.510(b)(3) brings the regulation in line with 37 CFR 1.98. —Added "or derivation" after "interference" to include derivation proceedings created by the AIA.
2219
—Added the phrase "of a request filed under 35 U.S.C. 302" after "requester" in the first sentence.2220 —Added the phrase "Filed under 35 U.S.C. 302" in the section title.2221 —Updated 37 CFR 1.33(c). Added text indicating that there is one power of attorney form for patent owners and another form for third party requesters. Included updated samples of both forms.
2222
—Updated sample of form PTO/SB/83.2223 —Removed the citation to 37 CFR 1.915 because inter partes reexaminations can no longer be filed.
2225
—Added the phrase "Filed under 35 U.S.C. 302" in the section title.2226 —In subsection A.2, deleted "third party" modifying requesters in two places because the policy applies to both third party and patent owner requesters.
2227
—In subsection B, revised language in two places to remove reference to a "memo" drafted by an examiner and instead state that the examiner will communicate with his or her supervisor, who will discuss the issues with a legal advisor in the Office of Patent Legal Administration (OPLA). Clarified text that the Central Reexamination Unit will draft a Decision Vacating the Proceeding, which will be reviewed and signed by the Office of Patent Legal Administration. —Deleted sentence regarding the location of requests filed because such procedures are discontinued.
2229
—Added "filed under 35 U.S.C. 302" after "a request for reexamination" in the second sentence.2230
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Deleted references to "the preprocessing area" and "reexamination preprocessing" staff as outdated.
2231
—Revised text to update instructions for searching for a reexamination proceeding in Public PAIR.
2232
—Modified text to delete outdated instructions on how to access PAIR using the Internet.2232.01 —In subsection I, added a citation to 37 CFR 1.20(c)(6) for petition fees and added text to clarify that micro entity reductions are only available for patent owners.
2233
—Deleted text, including items (A)-(G), that describes the entry of amendments because such procedures have been discontinued.
2234
—In item (A), deleted the intranet address as it is subject to change and to add "PTOWeb" as the name for the intranet site.
2235
—In item (B), deleted the phrase "while patent applications have status codes ranging from '020' to over '100'" because it no longer accurately reflects current status codes. —In item (C), text is revised to indicate that any paper patent file will be ordered and scanned into the Image File Wrapper; deleted text concerning the location of the physical files. —In item (D), clarified that the items provided are examples of reported events and added a parenthetical regarding the PALM system or the Office of Petitions tracking system. —In item (E), deleted most of the listed reports because they are no longer generated and added two new reports in addition to adding that PALM reports are provided to the CRU and appropriate Technology Centers. —Clarified that in the rare situation where a reexamination has been assigned to an assistant examiner, a primary examiner must sign all actions, conference all actions with a SPRS or manager and another examiner, and take responsibility for all actions taken.
2236
—In subsection I, clarified that the CRU Director's approval may be indicated by his or her signature at the end of the order or Office action. Added "generally" in stating that the same examiner will generally be assigned the new reexamination to allow for some flexibility for managers in assigning work load. —In subsection I, revised text to eliminate certain references to the "TC" because reissues are handled by the Central Reexamination Unit in addition to the TCs. —In subsection I, modified text to reflect electronic processing. For example, replaced the application "reaches the TC" with "is available for docketing" in step (B)(1) in subsection I. —Deleted the sentence stating SPRS should hand carry any paper patent file to the transferee because it reflects discontinued paper processing procedures.
2237
—Modified text to reflect electronic processing. For example, deleted the phrase "patent file is then forwarded to the" CRU.
2239
—Updated text to reflect that OPLA and the CRU or TC work cooperatively to determine whether the Director should order reexamination under the provisions of 35 U.S.C. 303 and deleted guidance as to a "disk" containing the memorandum. —Deleted the phrase "or 37 CFR 1.915" at the end of the section because inter partes reexamination requests can no longer be filed. —Revised to reflect current policy that examiners do not typically have to request litigation search at the time of assignment of a reexamination proceeding.
2240
—In subsection II, clarified text that a second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer or certificate that has issued. —Deleted the sentences that described time frames for when an examiner takes up a proceeding and when any action should be mailed in order to give supervisors more flexibility in assigning and monitoring work load.
2241
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—Changed "previous examination" to "earlier concluded examination or review" and expanded definition to include new proceedings, such as supplemental examination and post-grant reviews by the Board. Similar changes also made to form paragraph 22.01.01.
2242
—In subsection I, second paragraph, modified text to identify the different proceedings or examinations in which the same question of patentability may have already been decided or raised. —In subsection I, clarified text that a second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer or certificate that had issued. —In subsections I and II, added a sentence reading "Issues involving 35 U.S.C. 325(d) must be referred to the Director of the CRU." —Deleted sentence in the last paragraph pertaining to amended claims in copending proceeding because such merger policies are covered in MPEP §§ 2283-2285.
2243
—Added "under 35 U.S.C. 303(a)" after "determination" in the first sentence to distinguish from determinations made in supplemental examination.
2244
—Deleted the second paragraph which contained steps of discontinued paper processing.2245 —Deleted "original" modifying "signed copy" in the last paragraph. —In item (D), modified "prior examination" to "earlier concluded examination or review" and "the Federal Courts" to "a federal court, and was not raised to or by the Office in a pending
2246
reexamination or supplemental examination of the patent" to include new proceedings, such as supplemental examination and post-grant reviews by the Board. —In the paragraph starting with "The decision granting the request …" deleted the phrase "is made on a decision form and" because the decision is more than just a form. —Modified text to reflect electronic processing. For example, replaced the examiner's decision is "hand-carried … to the CRU support staff for processing and mailing" with "processed and mailed" in subsection I. —In subsection II, in the penultimate paragraph, changed policy of filing the opposition "by facsimile transmission" to "electronically." —In subsection III, revised text regarding prior art citations submitted after the order for reexamination to refer to prior art citations and written statements and deleted the indication that they be stored as a separate file in a physical location (because this does not account for electronic processing). —In item (A), modified "earlier examination" to "earlier concluded examination or review of the patent, or raised to or by the Office in a pending reexamination or supplemental examination of
2247
the patent" to include new proceedings, such as supplemental examination and post-grant reviews by the Board. —In example 1, replaced copy of former form PTO-471 with updated form PTO-471G. In example 2, replaced copy of former form PTO-471 with updated form PTO-471D.
2247.01
—Modified text to reflect electronic processing. For example, replaced the examiner's decision is "forwarded … to the Office of the CRU Director for decision" with "brought to the attention of the CRU Director or his/her designee for decision."
2248
—Changed the first sentence in paragraph starting with "Reassignment will be …" to "In the situation in which the examiner's determination failed to find any SNQ, reassignment will be the general rule" in order to distinguish procedures from situations in which the examiner's determination is only a partial denial of some SNQs. —Revised the last paragraph to clarify that a petition under 37 CFR 1.181 may be filed within one month of the mailing date of the order if the examiner's determination partially denies the request based on any advanced SNQ, that a decision on such a petition is final and non-appealable, and that if no timely petition is filed, the examiner's determination is final and non-appealable. Added a citation to Belkin Int'l, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir. 2012).
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—In the paragraph beginning with "If reexamination is ordered…," deleted the last sentence stating that extensions of time will be granted only under extraordinary circumstances because
2249
such a statement fails to account for the new no-cause extensions of time for patent owners. Inserted a cross-reference to MPEP § 2265. —Updated 37 CFR 1.52 as amended by the PLT implementation rule. In subsection I.A, added the word "single" before "brackets" to clearly distinguish this requirement from reissue amendment
2250
practice. Also added a new sentence in the second paragraph indicating that presentation of the text of the paragraph to be deleted will assist the Office in proper entry of the amendment. Also added explanation of the importance of stating the precise point where each amendment is to be made. Deleted text that discussed discontinued paper processing. —In subsection I.D, revised form paragraph 22.13 so that the examiner will enter in the proper time period for response depending on whether the request was filed by a third party requester or the patent owner. —In subsection III, deleted text that discussed discontinued paper processing. —In subsection IV, under (A)(1) and (2), added "single" before "bracketing" to clarify proper amendment practice. Under (D) and (E), at the end of the first sentence, added "including the claim number and status indicator" to clarify that all text must be underlined for a new claim. —In the last paragraph, added text to explain that the time period for filing new drawing sheets depends on whether the request was filed by a third party requester or the patent owner. Clarified
2250.01
that the last sentence addresses the situation in which new drawing sheets are not filed "in response to the Quayle action." —Updated 37 CFR 1.530(l).2250.02 —In subsection I, added a cross-reference to 37 CFR 1.20(c)(3) and (c)(4) following the first sentence. Revised the last paragraph to apply to responses to non-final actions, added text to
2250.03
explain that the time period for filing a correction depends on whether the request was filed by a third party requester or the patent owner, and added a sentence to address responses to final actions. —Inserted "under 35 U.S.C. 304" after "ordered" in the first sentence.2253 —Updated 37 CFR 1.550 as amended by the PLT implementation rule. 37 CFR 1.550(c) was amended to provide for a no cause extension of time for patent owner requested or Director ordered examination.
2254
—In the second paragraph, added the phrase "after an examiner's determination that found the request did not raise any SNQ" and changed "will normally" to "will generally."
2255
—Changed "items of information" to "documents" because the former phrase is now used in supplemental examination and might be confusing.
2256
—Added "(B)" to the phrase "As to (B), (C) and (F) above." —Revised policies regarding the submission of prior art after a Notice of Intent to Issue ex parte Reexamination Certificate (NIRC) is mailed to reflect the Office's more recent publication procedures, i.e., the proceeding generally begins the publication (issue) cycle immediately after NIRC. To obtain entry, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. These requirements are similar to the requirements to withdraw an application from issue under 37 CFR 1.313(c)(1) and help the Office comply with the statutory mandate of special dispatch for reexaminations. —Revised to delete the statement that references will be printed on the reexamination certificate and instead state that a notice is printed on the reexamination certificate that the list of prior art documents is available via PAIR, which is in accord with current practice.
2257
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—Added 37 CFR 1.625 as the basis to discuss ex parte reexamination procedures following a supplemental examination request.
2258
—In the first paragraph, added a sentence to indicate that double patenting issues may also be considered during reexamination. Following the first paragraph, added text to address the scope of reexamination ordered under 35 U.S.C. 257. —In subsection I, added text to clarify that the first-to-invent prior art regime may apply under the specified conditions if a benefit claim is made under reexamination to a prior application with a filing date before March 16, 2013. Deleted "in the chart" in the sentence prior to subsection I.A because no chart is presented. —In subsection I.B, added "(with respect to original subject matter)" after "insufficiency of disclosure" to clarify that issues under 35 U.S.C. 112 may be raised for new or amended subject matter. —In subsection I.C, added a citation to In re NTP, Inc., 654 F.3d 1268, 99 USPQ2d 1500 (Fed. Cir. 2011), which held that the Office is not prohibited from performing a 35 U.S.C. 112 written description priority analysis during reexamination. —In subsection I.D, in the third paragraph, added the clause "over prior art patents or non-prior art patents" in the second sentence. Added a new fourth paragraph that states that double patenting issues may be addressed in reexaminations ordered under 35 U.S.C. 257. —In subsection I.F.2, added a new last paragraph that reexaminations ordered under 35 U.S.C. 257 may involve an admission by the patent owner. —In subsection I.G, first paragraph, added text regarding claim construction where there is related litigation and a federal court has made a judicial interpretation of a disputed claim term. In the first sentence of the last paragraph, added the phrase "ordered under 35 U.S.C. 304, and also during reexamination ordered under 35 U.S.C. 257" to clarify that the broadest reasonable interpretation applies to both proceedings. —In subsection II, first paragraph, added text pertaining to a determination of whether the claimed invention is entitled to a particular priority date and a citation to In re NTP, Inc. Added a new second paragraph to state that reexaminations ordered under 35 U.S.C. 257 may involve any issues under 35 U.S.C. 112. —In subsection IV.A, in the second paragraph, clarified the text by replacing "a 'live' claim" with "a claim under reexamination which is." —In subsection IV.E, deleted the text and replaced with a cross-reference to MPEP § 2258.02. —In subsection IV.G, added "or derivation" after "interference" to provide for the new derivation proceedings. —In subsection IV.H, added "pre-AIA" before "35 U.S.C. 102(c)" to clarify which provision applies and deleted the clause suggesting the patent owner may file a reissue application because the clause gave an erroneous impression that reissues can always be filed to resolve issues outside the scope of reexamination. Similarly, revised form paragraph 22.03 to clarify text and to remove the suggestion to file a reissue application. —In form paragraph 22.01.01, changed "earlier examination" to "earlier concluded examination or review" and added "or has been raised to or by the Office in a pending reexamination or
2258.01
supplemental examination" to include new proceedings, such as supplemental examination and post-grant reviews by the Board. —New section added to describe procedures for correcting claims for foreign priority or domestic benefit during a reexamination proceeding.
2258.02
—Deleted the last sentence, inserted two new sentences regarding the application of claim preclusion (res judicata) to the Office in reexamination proceedings, and added references to In
2259
re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007) and In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011). —Inserted "in reexaminations ordered under 35 U.S.C. 304" after "issued" in the second sentence.2260
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—In the first paragraph, added, in two instances, a phrase pertaining to a claim no longer subject to reexamination. Also, in the first sentence, added the phrase "undergoing reexamination" after "any claim."
2260.01
—Deleted text that described time frames for when an examiner takes up a proceeding and when any action should be mailed in order to give supervisors more flexibility in assigning and monitoring work load.
2261
—In subsection I, added a cross-reference to MPEP § 2271.01 for more detailed information on conferences.
2262
—Deleted the second paragraph and revised the first paragraph to state that a shortened statutory period of two months will generally be set and extensions of time may be requested under 37 CFR 1.550(c) with a cross-reference to MPEP § 2265.
2263
—Revised the first paragraph to clarify mailing procedures to the patent owner and to delete the statement that multiple patent owners are each mailed a copy of the Office action because such
2264
statements are inconsistent with standard Office practice of only corresponding with a single representative or a single patent owner. In addition, deleted the reference to the PALM printer because such printers are no longer used. In the second paragraph, added a sentence to describe the mailing procedures when there is more than one third party requester for a request and if any requester failed to designate a mailing address of a registered practitioner as the correspondence address. In the third paragraph, deleted reference to "additional partial patent owner." —Updated 37 CFR 1.550(c) as amended by the PLT implementation rule2265 —Added subsections I-VI. Subsection I contains former text explaining that the provisions of 37 CFR 1.136 are not applicable to ex parte reexamination proceedings. Subsection II explains the fees required for an extension of time. Subsection III provides general guidance on extensions of time, including the sufficient cause extension and automatic extension for patent owner requested reexaminations. Subsection IV discusses procedures for extensions of time in third party requested reexaminations. Subsection V explains extensions of time for patent owner requested and director ordered reexaminations, which have been revised to include an automatic two month extension as a result of implementation of the Patent Law Treaty (PLT). Subsection VI discusses the requirements for a showing of sufficient cause. —Renumbered former subsections I and II as subsections VII and VIII, respectively. —Renumbered subsection VII was modified to include the automatic two month extension of time for patent owner requested and director ordered reexaminations. —Updated 37 CFR 1.550 as amended by the PLT implementation rule.2266 —Revised to clarify that the provisions of 37 CFR 1.136 do not apply in reexamination proceedings. —Revised the last paragraph to state that patent owners cannot submit an application data sheet (ADS) except as provided in MPEP § 2258.02 because an ADS is required in certain situations in order to claim foreign priority or domestic benefit as modified by the PLT implementation rule. —In item (B), added the phrase "including any extensions of the response period pursuant to 37 CFR 1.550(c)" to modify the response period to account for the no cause extension under 37 CFR 1.550(c).
2266.01
Revised references to time periods for response for consistency with response time changes in the implementation of the PLT. —Amended form paragraph 22.14 so that the examiner will enter in the proper time period for response depending on whether the request was filed by a third party requester or the patent owner. —In the last paragraph, deleted "closing prosecution" after "an action" because ex parte reexamination does not include "an action closing prosecution." —Revised text to discuss new form PTO-2311, which provides notification of a defect in submissions filed in a patent owner requested reexamination.
2266.02
—Modified the time period for response set in the final rejection from one month to two months.
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—Added text to clarify that form PTOL-475 is not mailed if an after-final response lacks proof of service. Instead, an advisory Office action will notify the patent owner of the lack of proof of service.
2266.03
—In subsection I, deleted text that pertains to discontinued paper processing procedures and revised text to explain that papers will be expunged from the official file by marking the papers "closed" and "non-public."
2267
—Subsection II title revised to read "Types of Papers Expunged With Approval of the Director of the USPTO or CRU/TC Director or SPRS." Revised text of subsection II to replace "returned" with "expunged" and to delete the penultimate sentence which referred to the return of papers. Clarified text in the last chart by adding "or if inadvertently entered, it will be expunged from the file." —In subsection IV, revised title to read "Papers Located in the Patent File." Deleted indication that citations by third parties are placed in the reexamination file because current processing places the citations in the patent file instead. —Added 35 U.S.C. 27, and updated 35 U.S.C. 41(a)(7) and 133; updated 37 CFR 1.137. Specifically, the statute and regulations were changed to only provide for revival under the
2268
unintentional standard and to provide for the extension of the 12-month period for filing a subsequent application. —In subsection I, rewrote text to state that a petition based on unavoidable delay is no longer available and to clarify that the amendments to 37 CFR 1.137 apply to any reexamination proceeding resulting from a supplemental examination proceeding filed before, on, or after December 18, 2013. —In subsection II, deleted former text and inserted text that explains the requirements for a petition to revive under the statute and regulations for consistency with the PLTIA and the PLT implementation rule. Also added an indication that questions had been raised concerning the Office's authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations, citing to Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech, 543 f.3D 657 (Fed. Cir. 2008) as an example. —In subsection III, changed the time period for submitting a reconsideration request from one month to two months, in accordance with the implementation of the PLT. Clarified that the extension of time provisions of 37 CFR 1.550(c) also apply to any reexamination proceeding ordered under 35 U.S.C. 257. —Added text to clarify that amendments submitted with a request filed under 35 U.S.C. 302, or after reexamination is ordered under 35 U.S.C. 304 or under 35 U.S.C. 257, and that are compliant with 37 CFR 1.530(d)-(j) are generally entered if submitted prior to a final action.
2270
—In subsection II, modified form paragraphs 22.09 and 22.10 to account for the no cause extension of time in 37 CFR 1.550(c)(3).
2271
—In subsection I, changed "manager will" to "manager may" to allow for some flexibility for managers.
2271.01
—In subsection I, changed the time period for submitting a response from one month to two months, in accordance with the implementation of the PLT. Clarified that the same time period
2272
also applies to any reexamination proceeding ordered under 35 U.S.C. 257. Added text that explains the no cause extension of time in patent owner requested and director ordered reexaminations newly provided for by 37 CFR 1.550(c) is in conformance with the minimum reply provisions of the PLT and thus additional "no cause" extensions are not available for a response to a final Office action. —In subsection II, added a reference to new form PTO-2311.
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—Deleted text discussing ex parte reexaminations filed before November 29, 1999 because such reexaminations are no longer pending. Deleted the word "current" before "version" in the sentences discussing 35 U.S.C. 134 as amended by Public Laws 106-113 and 107-273.
2273
—Changed the time period for extension given upon the timely filing of a first response to a final rejection from one month to two months, in accordance with the implementation of the PLT. —Added text to discuss new form PTO-2311, which provides notification of a defect in the notice of appeal filed in patent owner requested reexaminations (including reexaminations ordered under 35 U.S.C. 257) or Director ordered reexaminations and clarified that form PTOL-475 is used in third party requested reexaminations. —Clarified that form PTOL-468 "may" be used to provide notification that an appeal is dismissed because notification could also be provided as part of a Notice of Intent to Issue Ex Parte Reexamination Certificate. —In subsection III, modified text to explain that the no cause extension of time in patent owner requested and Director ordered reexaminations newly provided for by 37 CFR 1.550(c) is available for filing the appeal brief. Added a cross-reference to MPEP § 2265.
2274
—In subsection IV, clarified that form PTOL-468 "may" be used to provide notification that an appeal is dismissed because notification could also be provided as part of a Notice of Intent to Issue Ex Parte Reexamination Certificate. —Deleted the sentence that stated the determination should be completed within approximately one month from the filing of the appeal brief to give flexibility to the Board in managing their work load. Modified "an appeal conference" to "a conference" because reexamination proceedings are not required to have "appeal conferences" like patent applications. —In the first paragraph, inserted a sentence to explain that there is no requirement for a pre-appeal conference but there is a requirement for a panel review of an examiner's answer in reexamination proceedings.
2275
—Deleted text discussing ex parte reexaminations filed before November 29, 1999 because such reexaminations are no longer pending. Deleted the word "current" before "version" in the sentences discussing 35 U.S.C. 141 and 145 as amended by Public Laws 106-113 and 107-273.
2279
—Added a sentence to discuss that 35 U.S.C. 141(b) was further amended by Public Law 112-29. —Modified title to add "Filed under 35 U.S.C. 302" at the end. Revised to state that the material to patentability standard set forth in 37 CFR 1.56(b) is applicable to reexamination proceedings
2280
ordered as a result of supplemental examination under 35 U.S.C. 257 and added cross-references to MPEP § 2818.01 and chapter 2000. —Revised to incorporate by reference the procedures set forth in MPEP § 713.01 to provide guidelines for conducting interviews via electronic means.
2281
—Deleted the statement that the Office of Patent Legal Administration needs to authorize anything other than an in person interview at headquarters or a satellite office. —Revised to indicate that an interview initiated by the examiner to obtain an amendment to render the reexamined claims patentable might not have the panel members participating in the interview. —Modified to clarify that only publicly available information may be discussed by the examiner when a third party requests information. Added another example regarding claim interpretation and publicly available information. —Clarified that a copy of the interview summary form PTOL-474 should be mailed to the patent owner, if not already provided with a copy. —Revised text to clarify that notice of concurrent proceedings includes notification of any supplemental examination and any review before the Patent Trial and Appeal Board.
2282
—Amended form paragraph 22.07 to add the phrase "or reexamination ordered under 35 U.S.C. 257" at the end.
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—In subsection II, deleted as outdated policy the sentences regarding suspending the second proceeding where the first proceeding is on appeal before a federal court and requiring the express written approval of the CRU or TC Director for suspensions.
2283
—In subsection III, clarified the guidelines given in the second paragraph. —In subsection IV, modified text to remove reference to discontinued paper processing procedures. —In subsection VII, in the last sentence of the first paragraph, changed "returning" to "expunging" and deleted the clause "but no copy of the petition will be retained by the Office" because the prior sentences already cover the procedures. Added "or subsequent thereto" after "37 CFR 1.530" in the second paragraph. —Subsection II.A clarified by adding "(e.g., within three months from the request's filing date)" in the first sentence.
2285
—In subsection II.B, deleted as no longer applicable the paragraph regarding procedures to follow if the stay of a reexamination has been removed following a reissue application examination. —In subsection V, in the last sentence of the first paragraph, changed "returning" to "expunging" and deleted the clause "but no copy of the petition will be retained by the Office" because the prior sentences already cover the procedures. —In subsection I, deleted text that described time frames for when an examiner takes up a proceeding and when any action should be mailed in order to give supervisors more flexibility in
2286
assigning and monitoring work load. Also, deleted text that stated a one month time response is set because such policy is discontinued in light of the PLT implementation. Finally, deleted case law citations to In re Vamco Machine and Tool, Inc., 752 F.2d 1564, 224 USPQ 617 (Fed. Cir. 1985); Gould v. Control Laser Corp., 705 F.2d 1340, 217 USPQ 985 (Fed. Cir. 1983); Loffland Bros. Co. v. Mid-Western Energy Corp., 225 USPQ 886 (W.D. Okla. 1985); The Toro Co. v. L.R. Nelson Corp., 223 USPQ 636 (C.D. Ill. 1984); Digital Magnetic Systems, Inc. v. Ansley, 213 USPQ 290 (W.D. Okla. 1982); Raytek, Inc. v. Solfan Systems Inc., 211 USPQ 405 (N.D. Cal. 1981); and Dresser Industries, Inc. v. Ford Motor Co., 211 USPQ 1114 (N.D. Texas 1981) because none of the decisions related to the Office's policy regarding reexaminations. —In subsection V, deleted "by the STIC" at the end of the first paragraph because CRU staff performs most litigation searches. —Inserted " ex parte" prior to reexamination, two occurrences, because amended 35 U.S.C. 315(d) and 325(d) do not apply to inter partes reexamination.
2286.01
—Moved references to examiner's amendments from the introductory text to subsection V. Revised to amend procedural steps referring to discontinued paper processing to be applicable to current electronic processing throughout section.
2287
—In subsection I, revised the list of items to review in the reexamination and patent files by adding "such as the certificate number, e.g., 'C1' or 'C2'" following "thereon" in item (B), and by amending item (D) to indicate that the examiners should enter the current classification in the Issue Classification boxes, cross-referencing MPEP §§ 903.07 and 902.03(e). —In subsection III, example claim 2 under reexamination, "the sintered preform is machined into a lens" was changed to "a pressure of 300-400 psi is applied during the heating steps." —In subsection V, revised "a formal examiner's amendment" to read "an examiner's amendment" for consistency with the terminology in MPEP Chapter 1300. Added indication that any examiner's amendment to the title or abstract must be authorized by the patent owner. —In subsection VI, deleted the last paragraph because the same text appears more appropriately in MPEP § 2287.01. —Corrected the rule citation from 37 CFR 1.182 to 37 CFR 1.312 in the second sentence.2287.01 —Deleted the second paragraph pertaining to a screening process performed by OPLA because such procedures have been discontinued.
2289
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—Clarified text by making the sentence that discussed the ordinal sequence of inter partes reexamination certificates its own paragraph. Added a paragraph to discuss certificates issued from reexaminations ordered under 35 U.S.C. 257.
2290
—Deleted text that referred to "international and U.S. classification" and inserted "the current classification" in its place. —Modified "the list of prior art documents" to "the notice regarding the list of prior art documents" to more accurately reflect the current practice in which the list of documents is not printed on the certificate. —In the second item (A), added text to describe that the filing date and number of the request is preceded by "Supplemental Examination Request" if reexamination was ordered under 35 U.S.C. 257. —Updated the example certificates provided at the end of the section to reflect a certificate that does not list the prior art citations. —Modified the last paragraph to state that the Official Gazette notice will clearly indicate the type of certificate, e.g., ex parte reexamination certificate (for proceedings ordered under 35
2291
U.S.C. 304), an inter partes reexamination certificate, or an ex parte reexamination certificate from reexamination ordered under 35 U.S.C. 257. —Deleted text that stated that the proceedings are forwarded to OPLA after a NIRC is processed or for reissue review because such procedures have been discontinued.
2294
—In the second paragraph, modified the second sentence to state that the CRU technical support staff will print out a copy of the reexamination certificate and make it of record in the second
2295
reexamination file as a preliminary amendment to more accurately reflect current processing procedures. —In subsection II, added a reference to new form PTO-2311 and changed the 1 month time period to "an appropriate" time period to reflect changes in response time due to implementation of the PLT. —In subsection III, changed "Upon conclusion of the reexamination proceeding" to "After mailing of the NIRC" to more clearly reflect current procedures. —Added new forms PTOL-471D and PTOL-471G that replaced form PTOL-471, updated the title for form PTOL-475, and added new forms PTO-2311and PTO-2293.
2296
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CHAPTER 2400:
—Updated references to 35 U.S.C. 112, first and second paragraphs, to 35 U.S.C. 112(a) and (b) to reflect changes made in the AIA.
Passim
—Revised the word "code" to read "symbol" in the context of the description of nucleotide bases and amino acids to improve clarity and for consistency with the tables in ST.25.
Passim
—Replaced the phrase "Sequence Listing" with the same words without quotation marks or initial capital letters (i.e., sequence listing).
Passim
—Rewritten to delete historical background pertaining to the development of the deposit rules and sequence rules. This information can be accessed in MPEP § 2401 in the MPEP Ninth
2401
Edition (March 2014)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/old/index.htm). —Revised to insert 37 CFR 1.801(defining biological information) at the beginning of the section. Replaced citation to a district court case with a citation to Enzo Biochem, Inc. v.
2402
Gen-Probe, Inc., 323 F.3d 956, 63 USPQ2d 1609 (Fed. Cir. 2002)(deposit may satisfy the written description requirement). —Deleted historical information pertaining to effective date of the deposit rules and added notation to see PCT Rule 13 bis and MPEP § 1823.01 for the requirements under the PCT for a reference to a deposited biological material in an international application. —Revised to delete 37 CFR 1.801. Added caution to examiners against requiring that a specific biological material be deposited where a deposit of starting material would allow the skilled artisan to make and use the claimed invention; also added an example of such a situation.
2403
—Revised to indicate that the Office will consider 2500 to be an optimum number of seeds to deposit in the normal case, rather than the minimum number to deposit.
2403.02
—Revised the "Board of Patent Appeals and Interferences" to read "the Board."2404.01 —Revised to account for acceptable non-Budapest treaty deposits. Added paragraph explaining that with regard to such deposits, in reply to a request made under 37 CFR 1.808(c), the Office will not certify that a deposit has been stated to have been made under conditions which make it available to the public as of the issue date unless the record otherwise clearly indicates that an acceptable non-Budapest Treaty deposit was made and that all restrictions imposed by the depositor on the availability to the public of the deposited material will be irrevocably removed upon the granting of the patent (with the possible exception of requiring the request for the deposit to be in the format specified in 37 CFR 1.808(b)). —Replaced list of International Depositary Authorities (IDAs) with a reference to the WIPO website where a list of current IDAs under the Budapest Treaty is maintained (www.wipo.int/treaties/ en/registration/budapest).
2405
—Replaced sentence indicating that the deposit rules are equally applicable in international and national stage applications filed under the PCT with the explanation that while 37 CFR
2406
1.804 permits making a deposit after the filing date of an application, in many countries the deposit must be made before the filing date. —Deleted "the first paragraph of" before 35 U.S.C. 112.2406.01 —Replaced the phrase "foreign to the United States" with "other than the United States" and replaced the phrase "is sufficient to comply with 35 U.S.C. 112" with "may be relied upon to comply with 35 U.S.C. 112."
2406.03
—Revised first paragraph to clarify that pursuant to 37 CFR 1.805(a), an applicant is required to notify the Office when it obtains information that a depository cannot furnish samples of a
2407.01
deposit referenced in a pending application, and that a replacement or supplemental deposit
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must be made if access to the deposited material is necessary to satisfy the requirements for patentability under 35 U.S.C. 112. —Revised to add a new first paragraph stating the requirement for a patent owner to notify the Office when it obtains information that a depository cannot furnish samples of a deposit
2407.02
referenced in a patent and the consequences of failing to so notify the Office and diligently replace a deposit. —Revised to explain that a replacement or supplemental deposit made in connection with a patent, whether or not made during the pendency of an application for reissue patent or a reexamination proceeding or both, will not be accepted unless a certificate of correction under 37 CFR 1.323 is requested which meets the terms of 37 CFR 1.805(b) and 37 CFR 1.805(c) for replacement or supplemental deposits. Also added cross-references to MPEP §§ 1411.01 and 2219. —Added text explaining that a request for a certificate of correction of a patent under 37 CFR 1.805(b) and 37 CFR 1.805(c) will not be granted where no original deposit was made before or during the pendency of the application which matured into the patent. —Revised to delete "Finally," from the first sentence.2407.06 —Revised to add cross-reference to MPEP § 2701 for an explanation of the term of a patent. Revised the final sentence to clarify that a specific statement that the deposit would be stored
2408
under agreements that would make them available beyond the enforceable life of the patent for which the deposit was made is required only where the 30-year term of deposit would terminate within the enforceable life of the patent. —Revised to explain that there is a distinction between a statement by the applicant that the deposit has been made under the Budapest Treaty and one in which the deposit has been made
2409
and accepted under the Budapest Treaty. Where a statement is merely an indication that a deposit has been made (with no indication as to whether it has been accepted), there is no assurance that the requirements under 35 U.S.C. 112 have been satisfied. —In the final paragraph, revised to add "and accepted" after "a deposit had been made" to the discussion of the conditions prescribed by the Bupdapest Treaty.
2410.01
—Revised to indicate that persons requesting a certificate of statement of availability of deposit should contact the TC 1600 Director's office and should not submit the request via the examiner
2410.02
of record. Also revised to indicate that Form BP-12, which may be used for requests pertaining to deposits made pursuant to the Budapest Treaty, is available on the WIPO website. —Added paragraph explaining that the Office will not certify whether a deposit has been made under conditions which would make it available to the public until the issuance of a U.S. Patent referencing the deposit. —Updated 37 CFR 1.809(c).2411 —Revised to clarify description of possible rejections under 35 U.S.C. 112(a) or (b) in the context of the deposit of biological materials, and added indication that a lack of written description can arise in the context of original claims.
2411.01
—Added a cross-reference to 37 CFR 1.802 which describes when a deposit of biological material is needed. —Deleted citation of two cases in which the Federal Circuit resolved best mode issues in the litigation context. —Revised to add a reference to a supplemental deposit.2411.02 —Revised to indicate that where an application is otherwise in condition for allowance except for a required deposit, the Office may notify the applicant in a notice of allowability and set a
2411.03
three month time period within which the deposit must be made in order to avoid abandonment. This time period is not extendable under 37 CFR 1.136 (see 37 CFR 1.136(c)).
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—Removed and reserved. Information relevant to replacement or supplemental deposits after a patent has issued is set forth in MPEP § 2407.02.
2411.04
—Rewritten to delete historical background pertaining to the development of the sequence rules. This information can be accessed in MPEP § 2420 in the MPEP Ninth Edition (March
2420
2014)(available on the USPTO website at www.uspto.gov/web/offices/pac/mpep/old/index.htm). —Added cross-references to PCT Rule 5 and Rule 13 ter , and MPEP § 1823.02 and § 2422, for the requirements under the PCT for international applications that disclose nucleic acid or amino acid sequences. —Section title and text therein rewritten to set forth the definition of "sequence listing" and "CRF." Deleted previous text, which set forth background information as to the applicability date of the sequence rules, in its entirety.
2421.01
—Added explanation that for purposes of the sequence rules and the discussion in MPEP Chapter 2400, the phrase "disclose(d) (or disclosure(s) of) nucleic acid or amino acid sequences" is intended to refer to those nucleic acid or amino acid sequences that are described in the patent application by enumeration of their residues and that meet the length thresholds of 37 CFR 1.821(a). —Added explanation that the "Sequence Listing" part of the disclosure required by 37 CFR 1.821(c) is the official copy of the sequence listing, and may be submitted as an ASCII text file via EFS-Web, on compact disc, as a PDF submitted via EFS-Web, or on paper. Also added cross-reference to MPEP § 2422.03 for additional information. —Added explanation that 37 CFR 1.821(e) requires that a copy of the sequence listing referred to in 37 CFR 1.821(c) must also be submitted in computer readable form (CRF) as an ASCII text file in accordance with the requirements of 37 CFR 1.824 (hereinafter "CRF of the sequence listing" or "CRF"). The computer readable form may be submitted on the electronic media permitted by 37 CFR 1.824 , or may be submitted as an ASCII text file via EFS-Web. Also added cross-reference to MPEP § 2422.04 for additional information. —Revised to clarify that the sequence rules define a set of symbols and procedures that are both mandatory and the only way that an applicant is permitted to describe information in the sequence listing.
2421.02
—Corrected description of the sequences that the sequence rules embrace (i.e., all unbranched nucleotide sequences with ten or more nucleotide bases and all unbranched, non-D amino acid sequences with four or more amino acids, provided that there are at least 10 "specifically defined" nucleotides or 4 "specifically defined" amino acids). —Revised description of initial treatment of noncompliant sequence listings in the Office of Patent Application Processing (OPAP) to reflect current procedures, i.e., OPAP will mail a
2421.03
Notice to Comply to applicant listing the requirements that have not been met and setting a two month time period within which to comply with the sequence rules, 37 CFR 1.821 - 1.825. Failure to comply with these requirements will result in abandonment of the application under 37 CFR 1.821(g). Extension of time may be obtained by filing a petition accompanied by the extension fee under the provisions of 37 CFR 1.136. —Added paragraph explaining that patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, may be subject to reductions in patent terms adjustment pursuant to 37 CFR 1.704(c)(13) if they are not in condition for examination within eight months from the filing date or date of commencement, respectively. "In condition for examination" includes compliance with 37 CFR 1.821 - 1.825 (see 37 CFR 1.704(f)). —Revised to indicate that inquiries regarding a specific CRF that has been processed by the Office should be directed to the Sequence Systems Service Center.
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—Revised to delete references to general changes that may occur in the future. Added indication that the Office will continue work on the preparation of a new World Intellectual Property
2421.04
Organization (WIPO) standard on the presentation of nucleotide and amino acid sequence listings using eXtensible Markup Language (XML) with the members of the Task Force on Sequence Listings created by the Committee on WIPO Standards. —Revised to add subsection title "I. Incorporation by Reference of WIPO ST.25 (1998) in 37 CFR 1.821." Subsection I revised to indicate where a copy of the 1998 version of ST.25 is available online and to explain that ST.25 was updated in December 2009.
2422
—In subsection I, added explanation that modifications not listed in WIPO Standard ST.25 (1998) Appendix 2, Tables 2 and 4, may also be represented as the corresponding unmodified base or unmodified amino acid in the sequence itself, and the modification should be described using its full chemical name in the Feature section of the sequence listing. —Revised to add subsection title "II. Filing Internationally." Updated the considerations that applicants who wish to file internationally in countries which adhere to WIPO Standard ST.25 should take into account. In particular, references to the 1998 version of the standard have been revised to correspond to the language of the 2009 update to the standard, and the explanation regarding free text in numeric identifier <223> has been clarified. —Paragraph added to subsection II to explain that requirements related to the submission of sequence listings may also differ between filing in the United States and filing internationally. For example, where an international application is filed in paper, the sequence listing part of the international application must also be provided in paper, although the search copy must be filed in electronic form, e.g. on a CD or, in the RO/US, as an ASCII text file via EFS-Web. Also, any tables filed in an international application must be an integral part of the application, i.e., cannot be submitted as a separate file in text format. —Revised section title to read "Nucleotide and/orAminoAcid Disclosures Requiring a Sequence Listing" to more accurately reflect the content of the section.
2422.01
—Added subsection title "I. Length Thresholds," and revised the text therein to correctly indicate that sequences with fewer than ten specifically defined nucleotides are specifically excluded. —Added subsection title "II. Representation of Nucleic Acids and Amino Acids" and revised the text therein to delete the discussion pertaining to the limitation of the sequence rules to L-amino acids because D-amino acids are not precluded from representation in a sequence listing and the Office encourages voluntary compliance for D-amino acids. —Subsections III - V added to relocate information previously in MPEP § 2422.03. —Subsection III explains that in general, any sequence that is disclosed and/or claimed as a sequence, i.e., as a string of particular nucleotide bases or amino acids, and that otherwise meets the length thresholds of 37 CFR 1.821(a), must be set forth in the sequence listing. —Subsection IV explains that it is generally acceptable to present a single, primary sequence in the specification and sequence listing by enumeration of its residues in accordance with the sequence rules ("primary sequence") and to discuss and/or claim variants of that primary sequence without presenting each variant as a separate sequence in the sequence listing. However, the primary sequence should be annotated in the sequence listing to reflect such variants. Added sentence to strongly recommend that any sequences appearing in the claims, or sequences that are considered essential to understanding the invention, be included in the sequence listing as a separate sequence. —Subsection V explains the requirement for a sequence identifier for each sequence set forth in the sequence listing, and the use of sequence identifiers in the specification, claims, or drawings to reference sequences set forth in the sequence listing in accordance with 37 CFR 1.821(c) and (d).
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—Revised first paragraph to clarify that for all applications that disclose nucleic acid and/or amino acid sequences that fall within the definition set forth in 37 CFR 1.821(a), 37 CFR
2422.02
1.821(b) requires exclusive conformance to the requirements of 37 CFR 1.821 through 37 CFR 1.825 with regard to the manner in which the disclosed nucleic acid and/or amino acid sequences are presented and described. —Revised second paragraph to clarify when it may be appropriate to depict a sequence in a drawing figure. Deleted references to relaxing the exclusive conformance requirement for drawing figures. Clarified that when a sequence is presented in a drawing, the sequence must still be included in the sequence listing if the sequence falls within the definition set forth in 37 CFR 1.821(a), and the sequence identifier ("SEQ ID NO:X") must be used, either in the drawing or in the Brief Description of the Drawings —Rewritten to set forth the manner in which a sequence listing required pursuant to 37 CFR 1.821(c) may be submitted. Subject matter previously in this section relocated to MPEP § 2422.01, subsections III - V.
2422.03
—Revised to explain that the sequence listing required pursuant to 37 CFR 1.821(c) may be submitted as an ASCII text file via EFS-Web, on compact disc, as a PDF submitted via EFS-Web, or on paper. Also revised to clarify that the sequence listing required by 37 CFR 1.821(c) is the official copy of the sequence listing, and that 37 CFR 1.821(e) requires that a copy of the sequence listing referred to in 37 CFR 1.821(c) must also be submitted in computer readable form (CRF) in accordance with the requirements of 37 CFR 1.824. Further revised to explain the basic requirements for identifying ASCII text files and incorporating such files by reference in the specification. —New section added to explain that pursuant to the EFS-Web Legal Framework, applicants may submit a sequence listing under 37 CFR 1.821 as an ASCII text file via EFS-Web instead
2422.03(a)
of on compact disc, and to provide detailed information pertaining to the submission of such sequence listings. —Added subsection I to explain the implications of filing an ASCII text file sequence listing via EFS-Web in a variety of situations (e.g., on the filing date with or without a paper or PDF copy of the sequence listing, or in reply to a requirement under 37 CFR 1.821(g) or (h)). Includes specific note that the USPTO prefers the submission of a sequence listing in an ASCII text file via EFS-Web on the application filing date, and that submission of the sequence listing in a PDF file on the application filing date is not recommended. —Added subsection II to explain that a sequence listing submitted as a text file via EFS-Web will be excluded when determining the application size fee, whereas a sequence listing submitted as a PDF file will not be excluded. Also discusses application size fee as it relates to tables. —Added subsection III to discuss the size limit for text files submitted via EFS-Web and explain how to file an application that includes a sequence listing that is over 100 megabytes. —Added subsection IV to discuss filing sequence listings in international applications (PCT) via EFS-Web. —Subsection IV.A explains the preference for submission of the sequence listing part of the description as an ASCII text file and not as a PDF file, and discusses the international filing fee implications. —Subsection IV.B sets forth the file size and quantity limits for filing international applications via EFS-Web, and explains how to file an application that includes a sequence listing that is over 100 megabytes. —Subsection IV.C explains that tables related to a sequence listing must be an integral part of the description of the international application (PCT), and that when applicant submits tables related to a sequence listing in an international application (PCT) via EFS-Web, the tables must be in a PDF file.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Revised to indicate that the computer readable form required by 37 CFR 1.821(e) may be submitted on the electronic media permitted by 37 CFR 1.824 or may be submitted as an ASCII
2422.04
text file via EFS-Web. Updated information pertaining to providing published sequence data to NCBI. —Revised to add explanation that if a new application is filed via EFS-Web with a compliant ASCII text file sequence listing, and applicant has not filed a sequence listing in a PDF file, the text file will serve as both the paper copy required by 37 CFR 1.821(c) and CRF required by 37 CFR 1.821(e), eliminating any chance for discrepancies between the official copy and the CRF. —Section rewritten to clarify the procedure for requesting transfer of a computer readable form. Added text of 37 CFR 1.821(e) and explanation that the rule provides a mechanism to
2422.05
request the transfer of a CRF from an application already on file to a new application in limited circumstances. Added explanation of how applicant may be able to retrieve a copy of the sequence listing in ASCII text format in another application, and strong recommendation that applicant submit an ASCII text copy of a sequence listing in the new application rather than request a transfer to avoid possible application size fees and possible delays that may be introduced by defective transfer requests. —Deleted sample letter requesting transfer, and added indication that Form PTO/SB/93 should be used to request a transfer of a CRF under 37 CFR 1.821(e) to facilitate processing of the request. —Added subsection I to clearly set forth the requirements of a transfer request, and subsection II to describe a proper reply to a defective transfer request notice. —Revised to indicate that a statement under 37 CFR 1.821(f) that the content of the official and computer readable copies of a sequence listing are the same may be made by a registered
2422.06
practitioner, the applicant, an inventor, or the person who actually compares the sequence data on behalf of the aforementioned. —Added paragraph explaining when a statement under 37 CFR 1.821(f) is not required. —Revised to add explanation that when an amendment to comply with the requirements of 37 CFR 1.821(g) adds or amends a compact disc(s) or ASCII text file submitted via EFS-Web,
2422.07
applicant is required to update or insert in the specification an appropriate incorporation by reference statement. —Revised to indicate that the no new matter statement which must accompany submissions under 37 CFR 1.821(g) may be made by a registered practitioner, the applicant, an inventor, or the person who actually compares the sequence data on behalf of the aforementioned. —Added note that patent applications filed under 35 U.S.C. 111 on or after December 18, 2013, and international patent applications in which the national stage commenced under 35 U.S.C. 371 on or after December 18, 2013, may be subject to reductions in patent terms adjustment pursuant to 37 CFR 1.704(c)(13) if they are not in condition for examination within eight months from the filing date or date of commencement, respectively. "In condition for examination" includes compliance with 37 CFR 1.821 through 1.825 (see 37 CFR 1.704(f)). —Revised to clarify the circumstances under which an applicant will be sent a notice requiring compliance with 37 CFR 1.821(b)-(f) in an international application. —In the final paragraph, deleted sentence regarding treatment of errors prior to the implementation date of the sequence rules. —Revised to delete indication that correspondence relating to the sequence rules may be hand-delivered to the Technology Center. Further revised to delete references to compact disc, floppy disk, tape, and magnetic media.
2422.09
—Revised to clarify language pertaining to the notation of modified bases or amino acids in a sequence listing. Also revised to clarify that applicants are encouraged to use the three-letter
2423.01
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MANUAL OF PATENT EXAMINING PROCEDURE
symbols for amino acids throughout the disclosure, instead of the one-letter symbols, for easier reading of the application and any patent issuing therefrom. —Revised to replace the final three sentences of the section with the simplified explanation that when the coding parts of a nucleotide sequence and their corresponding amino acids have
2423.02
been enumerated by their residues, those amino acids must also be set forth as a separate sequence if the amino acid sequence meets the length thresholds in 37 CFR 1.821(a). —Replaced the term "enumeration" with "numbering" for consistency with 37 CFR 1.822. Deleted background information regarding the basis for the numbering procedures.
2423.03
—Revised to rewrite the final paragraph of the section to clarify the procedures for presenting and numbering hybrid and gapped sequences. —Revised to generally explain that 37 CFR 1.823 sets forth the informational requirements for the sequence listing that must be submitted under 37 CFR 1.821(c) as part of the application.
2424.01
—Revised to specify that a CRF of a sequence listing submitted on compact disc cannot include table information, and that a sequence listing or CRF of a sequence listing is submitted as an ASCII text file via EFS-Web cannot contain information other than the sequence listing. Added cross-reference to MPEP § 608.05(b) for information regarding submission of large tables in ASCII text format via EFS-Web or on compact disc. —Replaced the table of numeric identifiers and accompanying information with a citation to 37 CFR 1.823(b) (reproduced in MPEP § 2424) which includes the same information.
2424.02
—Revised to explain proper citation of unpublished and published PCT applications, and to indicate that questions regarding the proper citation of patent documents should be directed to staff in the Office of International Patent Cooperation.
2424.03
—Revised to update the source of the controlled vocabulary that should be used in the numeric identifiers relating to features of a given sequence in the sequence listing. —Revised to indicate that if the sequence listing required by 37 CFR 1.821(c) cannot be submitted via EFS-Web because it is larger than 100 megabytes, and it is impractical to provide
2425
the sequence listing on compact discs or other electronic media as set forth in 37 CFR 1.824 due to the size of the sequence listing, an exception via a non-fee petition to waive this provision will be considered. —Revised to add information pertaining to amending a sequence listing or CRF thereof by submission of an ASCII text tile via EFS-Web.
2426
—Revised to delete "Notice to Comply" from the title, and to delete the associated text previously in MPEP § 2427.02 in its entirety. Information relevant to a Notice to Comply is set forth in MPEP § 2421.03.
2427
—Text previously set forth in the first two paragraphs of MPEP § 2427.01 with regard to certain minor errors pertaining to compliance with the sequence rules has been relocated to this section and further revised to describe some minor errors pertaining to compliance with the sequence rules that may be discovered after examination has begun. Form paragraphs 24.01 - 24.05.01 and the associated discussion thereof previously in MPEP § 2427.01 have been deleted in their entirety. —Deleted. See the discussion of the changes to MPEP § 2427, above, for additional information.2427.01 -
2427.02 —Revised to add a significant number of helpful hints for compliance with the sequence rules, including information pertaining to filing sequence listings via EFS-Web, filing sequence
2429
listings in international applications, fees implications, consequences of failing to reply to compliance issues in a timely manner, the mandatory items of information that must be included in a sequence listing, information specific to several numeric identifiers, and contact information for assistance from the Sequence Systems Service Center.
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—Revised section title to "PatentIn Information." Revised to delete historical background pertaining to the development of, and updates to, PatentIn, and to describe PatentIn version
2430
3.5.1 (November 2010). Added information regarding help related to downloading or using PatentIn, and deleted references to hands-on training. Also added a discussion of the Checker software that may be used to check a sequence listing for compliance with the requirements of 37 CFR 1.824, and a suggestion to consult the User Notes on the Checker website for an explanation of errors that are not indicated, and content that is not verified, by the Checker software. —Revised to indicate that in 2007, the Office rescinded the 1996 partial waiver of the requirements of 37 CFR 1.141 et seq. with regard to restriction requirements in certain
2434
applications claiming polynucleotide molecules. Added that for national applications filed under 35 U.S.C. 111(a), polynucleotide inventions will be considered for restriction, rejoinder, and examination practice in accordance with the standards set forth in MPEP Chapter 800. —Revised to explain that copies of patents and patent application publications that include sequence listings are available for sale through the Office of Public Records, Certification
2435
Division, on paper, on a CDROM, or in PDF format via the Internet. However, these copies will not include a sequence listing if the sequence listing is not included in the composed electronic image (page image) version of the patent or patent application publication. Applicants and members of the general public can obtain an electronic copy of a sequence listing through the Certification Division for a separate fee as set forth in 37 CFR 1.19(b)(3).
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CHAPTER 2500:
—Revised to update 35 U.S.C. 41(b). Deleted note about the administration of 35 U.S.C. 41(b) during 2005-2008. Further revised to remove discussion of Public Law 96-517 and subsequent Public Laws modifying the statutory provisions regarding maintenance fees.
2501
—Revised subsection I to refer to "entity status" rather than "small entity status" and removed indication regarding expired patents. Revised subsection II to remove reference to withdrawals of attorneys and agents. —Revised to remove reference to 35 U.S.C. 41 and multiple reissues.2504 —Revised to add reference to USPTO website page for payment options and mailing addresses.2510 —Revised subsection I to add reference to USPTO website for the Office of Finance Online Shopping Page in place of outdated steps to find the maintenance fee status information from the USPTO homepage. —Revised to update 37 CFR 1.366. Also revised to refer to changes in "entity status" rather than "small entity status."
2515
—Revised to include reference to fees for micro entities and to add a reference to current USPTO website page for USPTO Fee Schedule.
2520
—Deleted text that stated the maintenance fee amount is set by statute. —Revised to replace reference to "37 CFR 1.378(c)" with "37 CFR 1.378(a)-(c)."2530 —Revised to state that if a discounted fee (small or micro) is received without the entitlement to an entity status being established, the Office will mail an Underpayment Notice or Non-Acceptance Notice to the fee submitter.
2531
—Revised to remove references to unavoidable delay as the basis for petitions to accept late payment of a maintenance fee.
2540
—Revised to include reference to both pre-AIA 37 CFR 1.33(a) and current 37 CFR 1.33(a).2542 —Section retitled "Entity Status Discounts" and rewritten to provide more detailed information pertaining to maintenance fee payments and entity status. Added subsections I-III. New subsection
2550
I concerns claiming entitlement to small entity status and micro entity status. New subsection II concerns removal of either small entity status or micro entity status. New subsection III concerns payments which do not match the entity status of record. —Revised to add indication that post issuance revocation and withdrawal of attorney requests are not regularly processed.
2560
—Deleted text regarding outdated paper processing steps by the Office of Patent Application Processing. —Revised to include reference to USPTO website page for determining status of maintenance fee payments in place of outdated steps to find the maintenance fee status information from the USPTO homepage.
2570
—Revised subsection IV to reflect that a receipt of payment for a maintenance fee will only be made upon request.
2575
—Revised to indicate that pre-AIA 37 CFR 3.73(b) applies to pre-AIA applications and 37 CFR 3.73(c) applies to AIA applications. Added cross-reference to MPEP § 325.
2580
—Revised to update 37 CFR 1.378.2590 —Revised to indicate that a separate petition fee and a separate statement of unintentional delay are required for each delayed maintenance fee payment, to specify the signing requirements for pre-AIA and AIA applications, to remove the reference to 37 CFR 1.378(c), to replace the reference to 37 CFR 1.378(e) with 37 CFR 1.378(d), and to remove reference to a petition fee for reconsideration of a decision.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Subsection I concerning the unavoidable delay basis for petitions to accept late payment of a maintenance fee was deleted. —Renumbered subsection II as subsection I. Revised subsection to replace 37 CFR 1.138(c) with 37 CFR 1.138(b) and 37 CFR 1.20(i)(2) with 37 CFR 1.17(m). Revised to provide information as to whether the EFS-web version of Form PTO/SB/66 or the non-EFS-web version of this form should be used in certain situations. —Revised to update title of Form PTO/SB/66 and to include updated versions of relevant forms.2595 —Revised to replace 37 CFR 1.138(c) with 37 CFR 1.138(b).
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CHAPTER 2600:
—Deleted the word "original" modifying "requests" in the fourth and ninth paragraphs as the modifier is not necessary.
2601
—Clarified that the first flowchart shows a reexamination filed prior to September 16, 2012, which would be subject to the SNQ standard.
2601.01
—Added a sentence after the description of the first flow chart explaining that except for the standard for instituting reexamination, the same procedure pertains for an inter partes reexamination filed from September 16, 2011 through September 15, 2012. —Moved the text specifying that the AIA amendment to 35 U.S.C. 301(a)(2) is not applicable to an ongoing inter partes reexamination no matter when the prior art citation was filed from item (B) to the end of the section.
2602
—In item (C), deleted "in the Central Reexamination Unit or Technology Center (in which the reexamination proceeding is being examined)" after "stored" because it reflected an outdated procedure. —Added ", prior to September 16, 2012," after "requester" in paragraph (A) as a reminder that inter partes reexamination was discontinued.
2609
—Updated 37 CFR 1.33(c).2622 —Added forms PTO/AIA/81B and PTO/SB/81C and deleted outdated form PTO/SB/81. —Updated form PTO/SB/83.2623 —Deleted the reference to 37 CFR 1.915 in two places in the first paragraph after the rules because requests for inter partes reexamination can no longer be filed.
2625
—Entire text deleted and replaced by the following notice: "No requests for inter partes Reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."
2627
—Entire text deleted and replaced by the following notice: "No requests for inter partes Reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."
2630
—Entire text deleted and replaced by the following notice: "No requests for inter partes Reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."
2631
—Deleted outdated instructions pertaining to accessing Public PAIR.2632 —Deleted outdated instructions pertaining to accessing a reexamination file via Public PAIR.2632.01 —Clarified that micro entity reductions are only available for patent owners and not third party requesters.
2634
—Deleted an outdated intranet address for PALM, the phrase that stated the status codes for applications ranging from "020" to over "100," and instructions pertaining to discontinued paper processing.
2635
—Clarified that the stated reports from PALM are examples. —Revised to state that reexamination requests "are" assigned to the CRU. Clarified that in the rare situation where a reexamination has been assigned to an assistant examiner, a primary examiner
2636
must sign all actions, conference all actions with a SPRS or TC Quality Assurance Specialist (QAS) and another examiner, and take responsibility for all actions taken. —In the "Copending reissue and reexamination proceeding" subsection, text is revised to eliminate reference to the "TC" because reissue applications are assigned to examiners in the TC as well as the CRU.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—Revised text to indicate that the CRU support staff or STIC will perform a litigation search report prior to action by the examiner. Modified text to indicate that litigation information must be brought to the attention of a CRU SPRS.
2640
—Added a sentence to clarify that "… the second or subsequent request must be directed to the claims of the patent, as modified by any disclaimer, or by any reexamination certificate that has issued as of the time of the determination." —Entire text deleted and replaced by the following notice: "No requests for inter partes reexamination may be filed on or after September 16, 2012. Guidance on the former practice is available in the 9th Edition of the MPEP."
2641
—Revised text to clarify what Office proceedings are considered by the examiner in determining whether the same question of patentability has already been raised and to define "earlier concluded
2642
or pending examination or review" to include review of the patent in a trial by the Patent Trial and Appeal Board and other contested proceedings in addition to prior examinations. —Changed form paragraph 22.01.01 to specify "in an earlier concluded examination or review of the patent being reexamined, or has been raised to or by the Office in a pending reexamination or supplemental examination of the patent." —Deleted the last sentence of the section because it does not reflect current policies.2643 —In subsection I, in the last paragraph, two occurrences, changed form PTOL- "501" to "2070" to reflect current practice.
2646
—In subsection II, in the first paragraph, clarified that there is no right to petition "as an 'ultra-vires' action by the Office" a finding of a SNQ or RLP based on reasons other than those advanced by the requester. —In subsection II, in third to last paragraph, deleted "the extremely rare" and inserted "a" in its place. —In subsection II, in second to last paragraph, changed policy of filing the opposition "by facsimile transmission" to "electronically." —In subsection III, revised text regarding prior art citations submitted after the order for reexamination to delete the indication that they be stored as a separate file in a physical location (because this does not account for electronic processing). Added a sentence to note that written statements under 37 CFR 1.501 are not permitted in inter partes reexaminations. —In the last paragraph, two occurrences, changed form PTOL-"501" to "2070" to reflect current practice.
2647
—In the second paragraph, two occurrences, changed form PTOL-"501" to "2070" to reflect current practice.
2647.02
—Changed text that stated reassignment to another examiner is the general rule to limit the general rule to the situation in which the examiner's determination failed to find any SNQ or RLP in order
2648
to distinguish procedures from situations in which the examiner's determination is only a partial denial of some SNQs or RLPs. In last paragraph, two occurrences, added "or RLP(s)" after "SNQ(s)" to clarify that a petition may be filed when the reexamination is subject to the RLP standard. —Clarified the text of the Editor Note for 35 U.S.C. 314.2654 —In the second paragraph, added the phrase "of all the claims requested to be reexamined" after "a refusal to order reexamination" in the first sentence in order to distinguish procedures from situations in which the examiner's determination is only a partial denial of some SNQs or RLPs.
2655
—Changed "items of information" or "information" to "document(s)" in several locations because "items of information" is now a phrase associated with supplemental examination.
2656
—Revised text regarding the submission of prior art after a Notice of Intent to Issue Inter Partes Reexamination Certificate (NIRC) was mailed to reflect the Office's more recent publication procedures, i.e., the proceeding generally begins the publication (issue) cycle immediately after
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NIRC. To obtain entry, the submission must be accompanied by (A) a factual accounting providing a sufficient explanation of why the information submitted could not have been submitted earlier, (B) an unequivocal statement that one or more claims are unpatentable, and (C) an amendment to such claim or claims, and an explanation as to how the amendment causes such claim or claims to be patentable. These requirements are similar to the requirements to withdraw an application from issue under 37 CFR 1.313(c)(1) and help the Office comply with the statutory mandate of "special dispatch" for reexaminations. —Revised to indicate a notice will be present on the certificate indicating that the list of cited prior art documents will be available via PAIR. Text was deleted regarding the discontinued practice of listing the references on the reexamination certificate.
2657
—Added "ordered under 35 U.S.C. 304" after " ex parte reexamination" in the last sentence before subsection I to distinguish from reexaminations ordered from a supplemental examination request.
2658
—In subsection I, in the first sentence, added "inter partes" before "reexamination" and added "under the first-to-invent prior art regime" after "publications" to clarify that all inter partes reexaminations are subject to this prior art regime. —In subsection II, added "ordered under 35 U.S.C. 304" after " ex parte reexamination" to distinguish from reexaminations ordered from a supplemental examination request. —In subsection IV.E, existing text was deleted and replaced by a reference to MPEP § 2258.02, which sets forth the applicable policies as to claiming foreign priority or domestic benefit in light of changes made by the PLTIA. —In subsection IV.H, added "pre-AIA" before "35 U.S.C. 102(c)" to clarify which provision applies and deleted text that suggested the filing of a reissue application to address questions outside the scope of reexamination. Similar text also deleted in form paragraph 26.03. —Deleted the last two sentences, inserted two new sentences regarding the application of claim preclusion (res judicata) to the Office in reexamination proceedings, and added references to In
2659
re Trans Texas Holdings Corp., 498 F.3d 1290, 83 USPQ2d 1835 (Fed. Cir. 2007) and In re Construction Equipment Company, 665 F.3d 1254, 100 USPQ2d 1922 (Fed. Cir. 2011). —In subsection I, in the first paragraph, deleted text that discusses a ten-week deadline.2660 —In subsection V, updated the text of the sample Office action to reflect current text in form paragraphs 7.20.fti, 7.21.fti, and 26.03. —Clarified the first sentence by adding "undergoing reexamination" after "any claim."2660.03 —Added an Editor Note to state the limited applicability of 35 U.S.C. 314(c) as reproduced.2661 —In item (B), added "except as provided in MPEP §§ 2666.40 and 2666.60" to clarify when a third party requester may file comments on a patent owner's supplemental response.
2662
—In item (F)(1), added a reference to MPEP § 2674 et seq. —In item (L), deleted text referring to reexamination resulting from a court order, litigation concurrent with an inter partes reexamination proceeding, and reexamination proceedings pending for more than one year. —Revised the second paragraph to clarify the Office's current policy on correspondence address used for the mailing of Office actions and to delete reference to the PALM printer because such printers are no longer used.
2664
—Deleted the reference to PTOL-2070 in the second and fourth paragraphs. —In the third paragraph, added a sentence to describe the mailing procedures when there is more than one third party requester for a request and if any requester failed to designate a mailing address of a registered practitioner as the correspondence address. —In the fourth paragraph, deleted "each additional partial patent owner as discussed above." —Added that CRU SPRS can also decide whether a request for an extension of time will be granted. Changed reference to the automatic extension of time in ex parte reexamination to be
2665
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
"two" months instead of one month to be consistent with changes due to implementation of the PLT. See MPEP § 2265. —In subsection I, after the reference to 37 CFR 1.111, added "other than the provision in 37 CFR 1.111(a)(1) to 'see …. [37 CFR] 1.136 for time for reply to avoid abandonment" to clarify that the extension of time provisions of 37 CFR 1.136 are not applicable to inter partes reexamination.
2666
—In subsection III, added "(i.e., closed)" after "sealed" in the first paragraph and changed the last paragraph to state that patent owners cannot submit an application data sheet (ADS) except as provided in MPEP § 2258.02 because an ADS is required in certain situations in order to claim foreign priority or domestic benefit as modified by the PLT implementation rule. —Added a reference to MPEP § 2667 at the end of the first paragraph after 37 CFR 1.530.2666.01 —In subsection I, in the fourth paragraph, added text to advise that a requester should file comments in the 30 day time period even if patent owner's response is filed with a petition under 37 CFR 1.183 requesting waiver of the page length requirement of 37 CFR 1.943(b).
2666.05
—In subsection II, seventh paragraph, added a clause to clarify that a requester is provided with a time period to supply corrected comments if the comments were in response to a non-final Office action. —Modified text in the second paragraph to clarify when a requester can file comments based on a patent owner's supplemental response.
2666.20
—Added a cross-reference to MPEP § 2682 after the sentence discussing 37 CFR 41.77(c) and (e) in the third paragraph. —Revised text under "Discussion of Option (B)" to state that the requester may file comments within 30 days of the date of service of patent owner's corrected or supplemental response.
2666.30
—Clarified text in regard to when a requester can and cannot file comments if patent owner files a corrected response in response to a defect in their original response.
2666.40
—Revised penultimate paragraph to provide an exception to the one month or thirty day time period as provided in MPEP §§ 2666.05 and 2667.
2666.50
—Updated final paragraph to reflect current procedures wherein the technical support staff of the CRU reviews papers filed by the patent owner and requester. —Revised the first paragraph to provide an exception to the one month or thirty day time period as provided in MPEP §§ 2666.05 and 2667.
2666.60
—Clarified text in the second and third paragraph about when a requester may file comments in response to a patent owner correcting an informal response. —Modified text regarding the procedures of the return of inappropriate papers to eliminate procedures for discontinued paper processing and to state that inappropriate papers are expunged by marking the papers "closed" and "non-public."
2667
—Revised the title for subsection I to read "Types of Papers Expunged with Approval of the Central Reexamination Unit Director or SPRS." —Throughout subsection I, replaced "returned" with "expunged." —In subsections I.A.2 and I.B.2, after "37 CFR 1.957(d)," added the clause "if the submission is made prior to the mailing of an ACP" to clarify that the stated procedures to file a corrected submission do not apply to submissions after an ACP. —In subsections I.A.1, I.A.3, and I.B.1, replaced "RLA" with "SPRS." —In subsection I.B.3, in the third paragraph, clarified text about when a requester may file comments in response to a patent owner correcting an informal response by adding the phrase "unless patent owner's submission correcting the defect is directed to form and does not go to the merits of the case (e.g. payment of a fee other than an excess claims fee)." —In subsection I.C, removed text that inappropriate papers are returned "to an identified third party or destroyed if the third party submitter is unidentified" and reference to a storage area to cover procedures for electronic as well as paper processing.
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—In subsection III, revised the title to "Papers Located in the Patent File," removed all reference to the "storage area" to cover procedures for electronic as well as paper processing, added a reference to 37 CFR 1.902 and deleted the last sentence because proper timely prior art submissions are placed in the patent file and not the reexamination file. —Added 35 U.S.C. 27, updated 35 U.S.C. 41(a)(7) and 133, and updated 37 CFR 1.137. Specifically, the statute and regulations were changed to only provide for revival under the
2668
unintentional standard and to provide for the extension of the 12-month period for filing a subsequent application. —Modified the text to make it clear that a petition based on unavoidable delay is no longer available and to discuss the requirements under revised 37 CFR 1.137(a) for a petition to revive. Also added an indication that questions had been raised concerning the Office's authority to revive an unintentionally abandoned application (without a showing of unavoidable delay) in certain situations, citing to Aristocrat Techs. Australia Pty Ltd. V Int'l Game Tech, 543 f.3D 657 (Fed. Cir. 2008) as an example. —In the first paragraph, clarified that only claims undergoing reexamination and under a rejection may be cancelled if the patent owner fails to file a timely and appropriate response to an Office action. —Changed "clerical staff" to "technical support staff" for consistency with current position titles and modified text (e.g., making copies) that referred to discontinued paper processing.
2670
—In subsection II, revised text to eliminate discontinued processing steps of consultation with a RLA in OPLA and modified text that referenced discontinued paper processing.
2671
—In subsection V, modified the text in form paragraph 26.03 to eliminate the suggestion to file a reissue for issues raised that exceed the scope of reexamination.
2671.01
—In subsection X, deleted "as the action that does not close prosecution." —In the second paragraph, the end of the first sentence was changed to "issues should be clearly developed."
2671.02
—In subsection I, last paragraph, "single" was deleted before "previous" in the first sentence. —In subsection IV, modified the text in form paragraph 26.03 to eliminate the suggestion to file a reissue for issues raised that exceed the scope of reexamination. —In subsection VIII, revised text by deleting the step of hand carrying actions to the support staff to eliminate processing steps that are drawn towards discontinued paper processing. —In subsection I, changed "manager will" to "manager may" to reflect current procedures that the manager may let the examiner select the third member.
2671.03
—In subsection III, second to last sentence, "the ACP and" was added after "comments responding to" and in the last sentence "replacement" was changed to "corrected."
2672
—In subsection IV, deleted ", and/or the issues raised in the ACP" in the third sentence because the ACP is not "served" on the requester. In subsection V, two instances, "and/or" was changed to "or." —In subsection III, added a new penultimate paragraph that states affidavits or declarations are treated the same as amendments. This text was copied from MPEP § 2265.
2673
—Added a new third paragraph stating "Note that a requester is not entitled to file an appeal or cross appeal for proposed rejections which were determined to not raise a substantial new question
2674
of patentability or a reasonable likelihood of prevailing. Such a decision is final and nonappealable. See 35 U.S.C. 312(c) and 37 CFR 1.927." —Added text reading "The respondent's brief may include any arguments previously made of record that support the examiner's finding with respect to any claim addressed in the opposing party's appellant brief. See MPEP § 2675.01." —Changed "corrected" brief or briefs to "amended" brief or briefs to make terminology consistent in all appeal sections.
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CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
—In item (B) following the reproductions of the rules, added "Note that a party is not always entitled to file an appeal or cross appeal. See MPEP §§ 2674 and 2674.01."
2675
—Revised to delete text indicating that the examiner reviews the appellant brief for compliance because the Board currently reviews the brief for compliance. —Inserted text copied from MPEP § 2677 which states that examiners are not required to make any determination if fewer than all of the rejected claims are identified as being appealed and will treat all pending claims in the proceeding as being on appeal. —Revised first paragraph to add indication that "[i]f an appellant brief was not properly filed and a notice of non-compliance is mailed to the appellant, the party opposing the appellant may file
2675.01
a respondent brief within one month from the date of service of the amended appellant's brief filed in response to the non-compliance notice." Also added explanation that "[t]he respondent's brief may include any arguments previously made of record that support the examiner's finding with respect to any claim addressed in the opposing party's appellant brief." Added citation to Tempo Lighting, Inc. v. Tivoli, LLC, 742 F.3d 973, 109 USPQ2d 1599 (Fed. Cir. 2014) as support for the text. —Revised to delete text indicating that the examiner reviews the respondent brief for compliance because the Board currently reviews the brief for compliance. —Deleted the indication that an "examiner will have two weeks following the appeal conference to prepare the examiner's answer" to allow the examiner's manager flexibility in assigning work tasks.
2676
—Changed "clerical staff" to "technical support staff" and "Reexamination Legal Advisor (RLA)" to "CRU SPRS" for consistency with current position titles and practice.
2677
—Modified text (e.g., making copies) that referred to discontinued paper processing. In the penultimate paragraph, deleted the phrase "no later than two weeks from the date of the appeal conference (unless otherwise authorized by the CRU director)" to allow the examiner's manager flexibility in assigning work tasks. —Revised to replace "Board of Patent Appeals and Interferences" with "Board."2681 —Deleted paragraph discussing suspension of action because it reflects discontinued practice. —In subsection I, clarified the text to state that the Board has "discretionary" authority to issue a new ground of rejection and to explain when the Board may use that authority. —Subsection II revised to limit the title and text to discussing that a Board decision containing a new ground of rejection is a non-final decision. —In subsection III, clarified that the rules do not provide for the Board to include in its decision a statement that a claim may be allowable in amended form. —In subsection IV, modified text to clarify that petitions on a Board decision are very limited (e.g., to procedural matters) and that disagreements with the merits of a Board decision cannot be petitioned. —In subsection V, revised text to simply state that Board decisions are published at the discretion of the Office. —Modified to remove language that described discontinued paper processing steps and to include language that describes current electronic processing steps. For example, deleted the second paragraph after the rule reproductions because it reflected outdated paper processing steps.
2682
—In subsection I, amended the title and text to clarify that the subsection discusses a Board decision in which there are no new grounds of rejection. Added text to define a final Board decision and to clarify the procedures if no further action is taken by any party after a Board decision. —In subsection I.A, clarified text as to the procedures followed when no action is taken by any party to the appeal. —In subsection I.B, revised text to clearly state when a request for rehearing must be filed and what happens if a request for rehearing is not timely filed.
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—In subsection II, modified text to provide more detailed guidance on procedures regarding practice under 37 CFR 41.77 when a new ground of rejection is made in a Board decision. For example, added text to clearly state that the patent owner must either request rehearing or reopening of prosecution or the appeal may be terminated. Also, added a paragraph that states when jurisdiction remains with the Board and a paragraph to discuss procedures when there is a new ground of rejection in addition to rejections or findings of patentability that are affirmed. —Revised the title of subsection II.A to clarify that it is drawn to a proceeding under 37 CFR 41.77(b)(2). —In subsection II.B, modified the title and the text to clarify that the subsection is drawn to when the patent owner requests that prosecution be reopened under 37 CFR 41.77(b)(1). Specifically, added and reorganized text to be in subsections that address paragraphs (b)(1), (c), (d), and (e) of 37 CFR 41.77. Text in subsections II.B.2 through II.B.4 is new. —Added new subsection II.C, to clarify procedures when no submission is made under 37 CFR 41.77(b)(1) or (2). —Deleted former subsection III as the material is now covered in subsection II. —Former subsection IV renumbered as subsection III. In subsection III.A, clarified procedures about when CRU director approval is needed to reopen prosecution after a Board decision. —Deleted 37 CFR 90.2 and 90.3; added former 37 CFR 1.302 and 1.304 as these provisions are still effective for appeals in inter partes reexaminations and are referenced in this MPEP section.
2683
—In subsection I.A, added a citation to Consumer Watchdog v. Wisconsin Alumni Research Foundation, 111 USPQ2d 1241, 753 F.3d 1258 (Fed. Cir. 2014) with an explanation that court dismissed a third party's appeal because it lacked Article III standing. —Revised first paragraph such that the interviews prohibited by 37 CFR 1.955 are not limited to telephonic interviews.
2685
—Clarified language regarding "any prior or concurrent proceedings" by deleting the examples given in the first sentence and adding a new third sentence to state that prior or concurrent
2686
proceedings include supplemental examination and reviews before the PTAB in addition to the examples provided in 37 CFR 1.985(a). —In subsection II, deleted the third sentence pertaining to the example of suspending the second proceeding when the first proceeding is awaiting appeal before a Federal court.
2686.01
—In subsection III, clarified that it is the third party in an " inter partes" proceeding that will have an opportunity to comment and deleted "hand-carried" and inserted "forwarded" to remove reference to discontinued paper processing. —Subsection III.A modified to remove language that described discontinued paper processing steps and to include language that describes current electronic processing steps. —In subsection VI, in the last sentence of the first paragraph, changed "returning" to "expunging" and deleted the clause "but no copy of the petition will be retained by the Office." —In subsection IV, inserted ", or it will be expunged, if the petition has been scanned into the Office's IFW system prior to its discovery" at the end of the first sentence. The second sentence
2686.02
was amended to read "[t]he decision returning or expunging such a premature petition will be made of record in the reexamination file." —In subsection I, in the first sentence of the second paragraph, deleted "the reissue application reaches the Technology Center (TC), that" to reflect that current procedures that reissue applications
2686.03
are also handled by the CRU. Similar phrase deleted in the first two paragraphs of subsection II.C. —In subsection III, revised text in first paragraph to eliminate reference to a RLA because that practice is discontinued. —In subsection IV, modified to remove language under (A) that described discontinued paper processing steps and to include language that describes current electronic processing steps.
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—In subsection V, first paragraph, inserted "(or it will be expunged, if the petition has been scanned into the Office's IFW system prior to its discovery)" after "CRU" in the first sentence. The last sentence was amended to read "[t]he decision returning or expunging such a premature petition will be made of record in both the reexamination file and the reissue application file." —Subsection VII revised to remove reference to specific interview types. —In subsection I, deleted case law citation regarding the response times set in reexaminations when litigation is pending and revised text to simply state that all aspects of the reexamination
2686.04
proceeding will be expedited to the extent possible and deleted text that stated the request will be taken up by the examiner for decision in 6 weeks after the request is filed. —In subsection II, in the first paragraph of item (B), inserted "pre-AIA" before "35 U.S.C. 317(b)," deleted the parenthetical "(as to those asserted by the patent owner, and/or challenged by the third party requester, and resolved in favor of the patent owner in the civil action)" and added a reference to subsection V of this section. In item (B)(3), deleted the sentence "[i]f the answer to each of questions (1)-(3) is 'yes'. . .," revised the sentences beginning "[i]f the examiner subsequently . . . subsection V. below" to reflect current practice, and inserted "or reasonable likelihood of prevailing" after "patentability" in the last sentence. —In subsection III, deleted the last sentence of the third to last paragraph because that practice is discontinued. —In subsection IV, third paragraph, revised text to reflect current practice. In the fourth paragraph, clarified text by adding "(and) if the Office is notified of the final court decision" and deleting "and the reexamination prosecution will be terminated." In the fifth sentence, "or reasonable likelihood of prevailing" was added after "patentability." In the penultimate paragraph, revised text to reflect current practice by replacing the language after "validity holding" in the first sentence with ", if a grantable petition under 37 CFR 1.182 to terminate reexamination of those claims is filed in accordance with the guidelines set forth in subsection V" and by deleting "the order to reexamine is vacated by the CRU Director if the decision was rendered prior to the order. If the decision was rendered subsequent to the order,". —In subsection V, added subsections A, B, and C to reflect current practice. —In subsection VI, deleted reference to the Scientific and Technical Information Center (STIC) because most litigation search reports are performed by the technical support staff in the CRU. —Deleted the phrase ", including providing for stay, transfer, consolidation or termination of such matter or proceeding."
2686.05
—In subsection II.B, modified text that "[t]he CRU SPRS/TC QAS will convene a panel review conference" to "[a] panel review conference will be convened" to reflect current practice that the examiner may convene a conference with the approval of the CRU SPRS or TC QAS.
2687
—Subsection III revised to remove reference to specific interview types. —In subsection V, deleted the phrase "via the appropriate Office" in the last sentence. —Subsection VI revised to reflect current electronic processing practice. —In subsection VII, added the phrase "that requires a response" after "an Office action" in the first sentence to clarify this situation from a failure to respond to an Office action that does not require a response, such as an Action Closing Prosecution. —Revised to remove reference to specific interview types.2687.01 —In item (F), inserted "(e.g., by checking Box 9 'Other' on form PTOL-2068 and describing the status and Box 16 'Other' on the examiner's checklist form PTO-1516)" to clarify how examiners can indicate this status when preparing the NIRC.
2688
—In the seventh paragraph, changed "international and U.S. classification" to "current classification" to reflect changes to the CPC system and changed "list of prior art documents" to
2690
"notice regarding the list of prior art documents" to more accurately reflect the current practice in which the list of documents is not printed on the certificate.
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—In the last sentence, deleted "forwarded to the Office of Patent Legal Administration in accordance with MPEP" to reflect current practice.
2694
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CHAPTER 2700:
—Added text to briefly explain that effective May 13, 2015, international design applications may be filed under the terms of the implementation of the Hague Agreement as to the U.S. and clarified
2701
that the term "design patents" includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385. —In subsection V, added citation to Bayer AG and Bayer Corporation v. Carlsbad Technology Inc., 298 F.3d 1377, 64 USPQ2d 1045 (Fed. Cir. 2002) to support the existing statement that a certificate of correction may be used to correct the date a patent is expiring due to the 1995 change in 35 U.S.C. 154(c), which provides a term of 17 years from grant or 20 years from filing, whichever is greater. Also added a citation to Merck & Co. v. Hi-Tech Pharmacal Co., 482 F.3d 1317, 82 USPQ2d 1203 (Fed. Cir. 2007) to support the existing statement that patents subject to a terminal disclaimer may receive term extension under 35 U.S.C. 156. —Clarified that the term "design patents" includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385.
2710
—Added Editor Notes to explain the limited applicability of some paragraphs of the rules reproduced herein.
2730
—Modified to include text that summarizes 37 CFR 1.702(d), 1.703, 1.704, and 1.705, as set forth in the final rule Changes to Implement Patent Term Adjustment Under Twenty-Year Patent Term, 65 FR 56366 (September 18, 2000)(PTA implementation rule). —Added text that defines "original application" as set forth in the PTA implementation rule and supporting citation to Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 87 USPQ2d 1705 (Fed. Cir. 2008). Revised text to explain that the term "design patents" includes patents issued from design applications filed under 35 U.S.C. 111 and international design applications filed under 35 U.S.C. 385. —Updated 37 CFR 1.704 to include changes effective December 18, 2013 and added text to describe the December 18, 2013 amendments to 37 CFR 1.704(c)(12) and 1.704(f) with regard to possible PTA reduction if the application is not in condition for examination within 8 months of its filing date or commencement of the national stage under 35 U.S.C. 371(b) or (f). —Updated 37 CFR 1.703(b)(1) and 37 CFR 1.704(c)(10), (12), (13), and (14) and (d)(1) to include changes effective either January 9, 2015 or March 10, 2015. The changes pertain to patent term adjustment calculations when a request for continued examination is filed. Added text that briefly summarizes the regulatory changes. —Modified text to clarify the multiple amendments over the last three years to the provision that defines further prosecution via a continuing application as a circumstance constituting a failure of an applicant to engage in reasonable efforts to conclude processing or examination of an application. —Added an Editor Note to explain the limited applicability of some paragraphs of 37 CFR 1.703.2731 —Modified text to clarify that the recent changes to 37 CFR 1.703(a)(1) apply to patents granted on or after January 14, 2013. —Updated 37 CFR 1.703(b)(1) to include changes effective January 9, 2015. The changes pertain to patent term adjustment calculations when a request for continued examination is filed and are set forth in the final rule Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, 80 FR 1346 (January 9, 2015). Added text that further explains the regulatory change. Specifically, provided several paragraphs that discuss what the Office deems "time consumed by continued examination." —Revised to discuss Novartis AG v. Lee, 740 F.3d 593, 109 USPQ2d 1385 (Fed. Cir. 2014) which pertain to PTA calculations when a request for continued examination is filed. —Clarified that under 37 CFR 1.703(e), the provisions of 37 CFR 41.31 are applicable if the notice of allowance was issued prior to September 17, 2012 in order to define when jurisdiction passes from the Board.
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Added an Editor Note to explain the limited applicability of some paragraphs of 37 CFR 1.704.2732 —Updated 37 CFR 1.704 to include changes effective December 18, 2013 and added text to describe the December 18, 2013 amendments to 37 CFR 1.704(c)(12) and 1.704(f) with regard to possible PTA reduction if the application is not in condition for examination within 8 months of its filing or commencement of national stage under 35 U.S.C. 371(b) or (f). —Updated 37 CFR 1.704(c)(10), (12), (13), and (14) and (d)(1) to include changes effective March 10, 2015. The changes pertain to patent term adjustment calculations when a request for continued examination is filed and are from the final rule Changes to Patent Term Adjustment in view of the Federal Circuit Decision in Novartis v. Lee, 80 FR 1346 (January 9, 2015). Added text that discusses the regulatory changes. Specifically, modified the paragraphs discussing 37 CFR 1.704(c)(10) to indicate whether certain papers filed after a notice of allowance will or will not result in a reduction of any earned adjustment under 37 CFR 1.703; added several paragraphs to explain the new provision in 37 CFR 1.704(c)(12); and added a paragraph to explain the changes made to 37 CFR 1.704(d)(1). —Added reference to Gilead Sciences Inc. v. Lee, 778 F.3d 1341, 113 USPQ2d 1837 (Fed. Cir. 2015), which held that submission of an information disclosure statement after a reply to a restriction requirement and prior to an Office action, without a safe harbor statement under 37 CFR 1.704(d), is an applicant delay under 37 CFR 1.704(c)(8). —Modified to clarify that under 37 CFR 1.704(c)(10), the applicant delay (if any) would end on the date the patent issues if the Office does not mail a response to the applicant's post-allowance paper and the patent issues in less than four months from the applicant's post-allowance paper. —Added reference to Mohsenzadeh v. Lee, 115 USPQ2d 1483 (Fed. Cir. 2015) which held that PTA accrued in a parent application does not carry over to a continuing or divisional application. —Added an Editor Note to state the applicability of 37 CFR 1.705(a) based upon the effective date of the AIA Technical Corrections Act (Public Law 112-274).
2733
—Included a citation to Treatment of Letters Stating That the USPTO's Patent Term Adjustment Determination Is Greater Than What the Applicant or Patentee Believes Is Appropriate, 75 FR 42079 (July 20, 2010), 1357 OG 262 (August 24, 2010) to support the already stated policy that the Office will not act on letters from patentees stating that the patent term adjustment is greater than what they expected. —Added an Editor Note to state the applicability of 37 CFR 1.705(b) and (c) based upon the effective date of the AIA Technical Corrections Act (Public Law 112-274).
2734
Redesignated the former introductory text as subsection I. Office Procedure for the Treatment of Requests for Reconsideration of Patent Term Adjustment. In subsection I, added text to explicitly explain the Office's procedure of handling requests for reconsideration of patent term adjustment. For example, the text discusses the possible actions if the Office finds that the patent term adjustment printed on the patent is correct or incorrect. In addition, added a discussion of Novartis AG v. Lee, 740 F.3d 539, 109 USPQ2d 1385 (Fed. Cir. 2014), which held that there was not equitable tolling of the 180 day period to file a civil action in district court and Bristol-Myers Squibb Co. v. Kappos, 891 F.Supp.2d 135 (D.D.C. 2012), which did toll the same 180 day period because patentee timely requested reconsideration of the PTA determinations by the Office. —Redesignated former subsection I as subsection II. In subsection II, added text to clarify when a request for reinstatement under 37 CFR 1.705(c) must be filed in comparison to a request for reconsideration under 37 CFR 1.705(b). —Added new subsection III to describe an optional procedure to request recalculation of the patent term adjustment for patents that meet the following criteria: (1) issued between January 14, 2013 and May 20, 2014; and (2) resulted directly from international applications (e.g., applications that entered the national stage under 35 U.S.C. 371). Any requests under this optional procedure must have been filed prior to July 31, 2014. Form PTO/SB/132 can be used to make a request under this optional procedure and a copy of the form is reproduced.
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—Added an Editor Note to state the applicability of 37 CFR 1.705(d) is based upon the effective date of the AIA Technical Corrections Act (Public Law 112-274).
2736
Clarified text in regard to which provision of 37 CFR 1.705 applies depending on whether the patent was granted on/after January 14, 2013 or prior to January 14, 2013. —Corrected 35 U.S.C. 156 by adding the phrase "which claims … the approved product" in paragraph (d)(1)(B) and the last two sentences in paragraph (d)(1)(E) regarding the date on which a product receives permission.
2752
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CHAPTER 2800:
—Replaced form PTO/SB/81B and references thereto with form PTO/AIA/81B, which is an updated version of form PTO/SB/81B.
2805
—In the second paragraph, changed "supplemental reexamination" to "supplemental examination" in order to use proper nomenclature.
2806
—Added subsections I and II. Text previously in the section is moved to new subsection I. Added subsection II to discuss policies and procedures on making a determination on the request for supplemental examination when litigation is copending.
2816
—Changed "SNQ" to "substantial new question of patentability" in several locations.2816.02 —In subsection I, modified text to make the SNQ determination discussion consistent with MPEP § 2242 as amended in this revision of the MPEP. For example, changed "earlier examination" to "earlier concluded examination or review" and expanded its definition to include new proceedings, such as supplemental examination and post-grant reviews by the Board. —Updated form PTO-2302 to the current version.2818.01 —In the first sentence, changed "supplemental reexamination" to "supplemental examination" in order to use proper nomenclature.
2821
—Changed "SNQ" to "substantial new question of patentability."
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CHAPTER 2900:
Chapter 2900 is newly added to the MPEP and provides guidance related to international design applications.
—Provides a general overview of the Hague Agreement Concerning the International Registration of Industrial Designs. Discusses the flow of an international design application
2901
from filing to formal examination, registration, and publication by the International Bureau, and examination by the Offices of the designated Contracting Parties. —References 35 U.S.C. 381, 37 CFR 1.9 and 1.1011, Article 1 of the Hague Agreement, and Rule 1 of the Common Regulations Under the 1999 Act and the 1960 Act of the Hague
2902
Agreement for definitions of relevant terms. States that within the context of Chapter 2900, "Article" means an article of the Hague Agreement; "Rule" means a rule under the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement and "Administrative Instruction" means the Administrative Instruction for the Application of the Hague Agreement referred to in Rule 34. —Discusses the specific declarations made by the United States under the Hague Agreement where the United States is designated in an international design application.
2903
—Reproduces and discusses Hague Article 3 regarding who is entitled to file an international design application.
2904
—Reproduces and discusses Hague Article 4, which indicates that an international design application may be filed either directly with the International Bureau or indirectly with an applicant's Contracting Party.
2905
—Reproduces 35 U.S.C. 382, and 37 CFR 1.1002, 1.1011, 1.1012, and 1.1045 and discusses procedures for filing through the USPTO as an office of indirect filing.
2905.01
—Explains that international design applications may be filed via EFS-Web, mail, or hand delivery to the Customer Service Window at the USPTO Alexandria headquarters. Explains
that the Priority Mail Express® provisions of 37 CFR 1.10 apply to international design applications, but international design applications are excluded from Certificate of Mailing or Transmission procedures of 37 CFR 1.8. —Reproduces Hague Article 9, Hague Rules 6, 13 and 14, and discusses the requirements for according a filing date to an international design application.
2906
—Reproduces relevant portions of Hague Articles 5 and 10, Hague Rule 15, and discusses international registration and date of international registration.
2907
—Reproduces and discusses 35 U.S.C. 381 and 384, and 37 CFR 1.1023, directed to the filing date of an international design application in the United States.
2908
—Reproduces Hague Article 5, Hague Rule 7, 35 U.S.C. 383, and 37 CFR 1.1021, directed to the contents of the international design application.
2909
—Subsection I discusses mandatory contents required in all international design applications. —Subsection II discusses additional mandatory contents required by certain Contracting Parties. —Subsection III discusses optional contents as addressed in Hague Rule 7(5) and 37 CFR 1.1021(c). —Subsection IV is directed to the contents required of international applications designating the United States. —Reproduces 37 CFR 1.1022, sets forth relevant portions of Hague Rules 1 and 7, and discusses the requirement that international design applications must be presented on the forms established
2909.01
by the International Bureau, an electronic interface made available by the International Bureau, or any form or electronic interface having the same contents and format.
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—Discusses the requirements of reproductions (drawings) in the context of 37 CFR 1.1026, Hague Rule 9 and Hague Administrative Instructions 401-405.
2909.02
—Discusses the filing of reproductions, including drawings, photographs, or combinations thereof, with the USPTO through EFS-Web.
2902.02(a)
—Discusses where annex forms may be accessed and that annex forms specific to the designation of the USPTO include those for submitting the inventor's oath or declaration, information disclosure statements, and certification of micro entity status.
2909.03
—Reproduces and discusses 37 CFR 1.1031 and Hague Rule 12 as related to the payment of fees. Subsection I discusses the transmittal fee. Subsection II discusses payment of the basic
2910
fee, publication fee, designation fee, and individual designation fee required by the USPTO. Subsection III discusses the payment of fees payable to the International Bureau through the USPTO as an office of indirect filing. —Reproduces and discusses 37 CFR 1.1041 and Hague Rule 3 with respect to who may represent an applicant before the International Bureau. Emphasizes that a representative of an
2911
applicant before the USPTO as an office of indirect filing must be a practitioner registered in compliance with 37 CFR 11.6 or granted a limited recognition to practice under 37 CFR 11.9(a) or (b). —Reproduces and discusses 37 CFR 1.1042 and Hague Administrative Instruction 302 with respect to establishing a correspondence address for the applicant.
2912
—Reproduces 35 U.S.C. 387 and 37 CFR 1.1051. Discusses the manner by which an applicant may petition to excuse, with respect to the United States, applicant's failure to act within
2913
prescribed time limits under the Hague Agreement where the delay in applicant's failure to act was unintentional. —Reproduces 35 U.S.C. 384 and 37 CFR 1.1052. Discusses the process by which an applicant may petition for the conversion of an international design application designating the United States to a design application filed under 35 U.S.C. chapter 16.
2914
—Reserved for future use.2915-2919 —Reproduces 35 U.S.C. 389, and select paragraphs of 37 CFR 1.9, Hague Article 10, Hague Article 12, and Hague Article 14. Explains that upon receipt of the publication under Hague
2920
Article 10(3), the Office will establish an application file for an international design application which designates the United States and examine said application in due course. —Reproduces 37 CFR 1.41(f). Discusses the requirements under 37 CFR 1.48 for requests for correction of inventorship and requests to correct or update the name of the inventor or a joint inventor, or the order of the names of joint inventors.
2920.01
—Explains that the rules governing the applicant set forth in 37 CFR 1.42-1.46 are generally applicable to nonprovisional international design applications.
2920.02
—Reproduces 37 CFR 1.1066 and discusses how the Office will establish a correspondence address.
2920.03
—Section title only.2920.04 —Discusses the requirements for the specification of a nonprovisional international design application.
2920.04(a)
—Subsection I discusses the requirements for the title and reproduces form paragraphs 15.05.01 and 15.59 for use by examiners. —Subsection II discusses description requirements and explains that statements in the specification of a design application filed under 35 U.S.C. chapter 16 are also generally permissible in the specification of a nonprovisional international design application. Also discusses the use of broken lines in nonprovisional international design applications.
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—Subsection III reproduces and discusses 37 CFR 1.1025. Explains that a design application may only include one claim and explains the proper terminology required for the claim. —Reproduces 37 CFR 1.1026. Discusses the formal requirements for reproductions in nonprovisional international design applications. Explains that reproductions may be submitted
2920.04(b)
in either black and white or color. Sets forth form paragraphs for use by examiners when reproductions are objected to or include matter not forming part of the claimed design. —Reproduces 37 CFR 1.1021(d)(3) and 37 CFR 1.1067(b). Explains that international design applications that designate the United States are required to contain an inventor's oath or
2920.04(c)
declaration. The International Bureau reviews the international design application designating the United States to ensure that the required inventor's oath or declaration is provided. —Reproduces 35 U.S.C. 389 and 37 CFR 1.1062 and 1.1063. Discusses similarities and differences in examination practice for nonprovisional international design applications and design applications filed under 35 U.S.C. chapter 16.
2920.05
—Reproduces portions of Hague Rules 12 and 18, and 37 CFR 1.1063. Discusses the Notification of Refusal.
2920.05(a)
—Reproduces Hague Article 13 and 37 CFR 1.1064. Explains that only one independent and distinct design may be claimed in each nonprovisional international design application.
2920.05(b)
—Explains that the requirements of 35 U.S.C. 112(a) and (b) apply to nonprovisional international design applications. Sets forth form paragraphs for use by examiners when making rejections under 35 U.S.C. 112(b).
2920.05(c)
—Reproduces 35 U.S.C. 386 and 37 CFR 1.55, and discusses foreign priority claims.2920.05(d) —Reproduces 35 U.S.C. 386(c) and 37 CFR 1.78(a), (d), and (e), and discusses domestic benefit claims.
2920.05(e)
—Explains that applicants for international design applications are subject to the duty to disclose information material to patentability as defined in 37 CFR 1.56, and discusses filing of an information disclosure statement in an international design application.
2920.05(f)
—Explains the procedure to be followed when a nonprovisional international design application is in condition for allowance.
2920.06
—Reserved for future use.2921-2929 —Reproduces Hague Rule 22, Hague Article 16, and 37 CFR 1.1065. Explains the process by which an applicant may request correction or other change in an international design registration.
2930
—Reserved for future use.2931-2939 —Reproduces Hague Rule 18 bis and 37 CFR 1.1068 and explains that upon issuance of a patent on a nonprovisional international design application, the Office will send to the International Bureau a statement that protection has been granted in the United States.
2940
—Reserved for future use.2941-2949 —Reproduces 35 U.S.C. 389, 35 U.S.C. 173, 37 CFR 1.1071 and 37 CFR 1.1031. Explains that a grant of protection for an industrial design that is the subject of an international
2950
registration shall only arise in the United States through the issuance of a patent pursuant to 35 U.S.C. 389(d) or 171, and in accordance with 35 U.S.C. 153.
124Rev. 07.2015, November 2015
MANUAL OF PATENT EXAMINING PROCEDURE
CHAPTER FPC:
Chapter FPC is newly added to the MPEP and provides a consolidated listing of the form paragraphs of the MPEP. The FPC sections within this chapter are organized by form paragraph number, and do not necessarily correspond to the chapters of the MPEP in which the form paragraphs appear.
Rev. 07.2015, November 2015125
CHANGE SUMMARY FOR THE NINTH EDITION, REVISION 07.2015
Manual of PATENT EXAMINING PROCEDURE
Original Ninth Edition, March 2014
Latest Revision November 2015 [R-07.2015]
U.S. DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Rev. 07.2015, November 2015
AVAILABILITY
The paperbound format of the Manual was discontinued by the Government Publishing Office effective December 13, 2012. The Manual is available electronically in html and PDF renderings on the USPTO website at www.uspto.gov/web/offices/pac/mpep/. The Office also provides a search engine for searching the full text of the Manual at http://mpep.uspto.gov/RDMS.
Most hyperlinks from the Manual to internal and external websites are active. For particularly long website addresses (URLs), an extra space has been added to the rendered text for readability (especially in the PDF rendering). Clicking on a hyperlink will direct the user to the referenced website because the reference link data in the source document includes the URL without the extra space; however, copying text that includes the extra space and thereafter pasting it in a browser will result in an error.
Previous editions and revisions of the Manual are available from the MPEP Archives page on the USPTO website at www.uspto.gov/web/offices/pac/mpep/old/index.htm.
EXPLANATION OF NOTATIONS
Revision Date Indicator. Each section within an MPEP Chapter includes a revision date indicator, e.g., [R-07.2015]. The numbers within the bracket indicate the date the revision cycle for that section was completed, which would be July 2015 in the example above. Note that the publication date of the Manual as indicated on the title page and on the bottom of the PDF renderings may be later than the date the revision cycle was completed because of the time required for clearance processes.
"Pre-AIA." Where the phrase "pre-AIA" is associated with a law or rule, it means that version which was in force before the date of the change necessitated by the Leahy-Smith America Invents Act (AIA), Public Law 112-29, 125 Stat. 284.
"Pre-PLT" or pre-PLT (AIA)." Where the phrase "pre-PLT" or "pre-PLT (AIA)" is associated with a law or rule, it means that version which was in force before the date of the change necessitated by the Patent Law Treaties Implementation Act of 2012, Title II (Patent Law Treaty Implementation (PLT)), Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012). Note that the "pre-PLT (AIA)" designation is used when there is also a "pre-AIA" version of the law or rule that still has applicability in limited circumstances.
Five Asterisks. The use of 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
Final Revision, August 2012 Ninth Edition, March 2014 [R-11.2013]
Revised, October 2015 [R-07.2015] Revised, November 2015 [R-07.2015]
Rev. 07.2015, November 2015
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 information 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.
Subsequent changes in practice and other revisions will be incorporated in the form of revisions to sections of chapters and/or to appendices of 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
March 2014
INTRODUCTION
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 discoveries.”
Statutes
Pursuant to the provision of the Constitution, Congress 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 established. 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. 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 patent laws is available on t h e U S P T O w e b s i t e a t w w w. u s p t o . g ov / w e b / o f fi c e s / p a c / m p e p / 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 independent control of its budget allocations and expenditures, personnel decisions and processes, procurements, and other administrative and management functions in accordance with this title and applicable 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 operating units within the Office.
(b) OFFICES.— The United States Patent and Trademark Office shall maintain its principal office in the metropolitan Washington, 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 policy direction of the Secretary of Commerce, to establish 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 Official Gazette. In the Federal Register and in the Code of Federal Regulations the rules pertaining to patents are in Parts 1, 3, 4, 5, 11, 41, 42, and 90 of Title 37, Patents, Trademarks, and Copyrights. In referring to a particular section of the rules the citation is given, for example, as 37 CFR 1.31. A booklet entitled “Code of Federal Regulations, Title 37, Patents, Trademarks, and Copyrights,” published by the Office of the Federal 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 consolidated patent rules is available on the USPTO website at w w w. u s p t o . g ov / w e b / o f fi c e s / p a c / m p e p / 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 followed before the USPTO. The rules govern the examiners, as well as applicants and their attorneys
Rev. 07.2015, October 20151
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 Under Secretary of Commerce for Intellectual Property and Director of the USPTO, formerly the Commissioner of Patents and Trademarks, has issued Orders and Notices relating to various specific 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 giving examiners instruction, information, interpretations, 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 applications 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 general, 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 pertaining to the rejection of claims on the merits may be reviewed by appeal to the Patent Trial and Appeal Board (see MPEP § 1201). The distinction is set forth in 37 CFR 1.181 and 1.191. In citing decisions 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 Publishing Office
For current price and availability information, visit the U.S. Government Publishing Office (GPO) web site (http://bookstore.gpo.gov), call the GPO Order
Desk (202-512-1800 or 1-866-512-1800), or 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 on the electronic data products page of the USPTO’s website (www.uspto.gov/learning-and-resources/ electronic-bulk-data-products).
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 further information on electronic information products, contact:
Electronic Information Products Division EIPD, Randolph Square 2800 S. Randolph Street Arlington, VA 22206Telephone: 571-272-5600 Fax: 571-273-0110 E-mail: ipd@uspto.gov
For further information on patent and trademark copy/document 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 Website: http://ebiz1.uspto.gov/oems25p/index.html
See MPEP § 1730 for additional information sources.
2Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE
-1Change Summary ..............................................................................................................................................
-1Title Page ...........................................................................................................................................................
-1Foreword ............................................................................................................................................................
-1Introduction .......................................................................................................................................................
100-1Secrecy, Access, National Security, and Foreign Filing ..............................................................................................................100
200-1Types, Cross-Noting, and Status of Application ..........................................................................................................................200
300-1Ownership and Assignment .........................................................................................................................................................300
400-1Representative of Applicant or Owner ........................................................................................................................................400
500-1Receipt and Handling of Mail and Papers ...................................................................................................................................500
600-1Parts, Form, and Content of Application .....................................................................................................................................600
700-1Examination of Applications .......................................................................................................................................................700
800-1Restriction in Applications Filed Under 35 U.S.C. 111; Double Patenting ................................................................................800
900-1Prior Art, Classification, and Search ...........................................................................................................................................900
1000-1Matters Decided by Various U.S. Patent and Trademark Office Officials ................................................................................1000
1100-1Statutory Invention Registration (SIR); Pre-Grant Publication (PGPub) and Preissuance Submissions ..................................1100
1200-1Appeal ........................................................................................................................................................................................1200
1300-1Allowance and Issue ..................................................................................................................................................................1300
1400-1Correction of Patents .................................................................................................................................................................1400
1500-1Design Patents ...........................................................................................................................................................................1500
1600-1Plant Patents ..............................................................................................................................................................................1600
1700-1Miscellaneous ............................................................................................................................................................................1700
1800-1Patent Cooperation Treaty .........................................................................................................................................................1800
1900-1Protest ........................................................................................................................................................................................1900
2000-1Duty of Disclosure .....................................................................................................................................................................2000
2100-1Patentability ...............................................................................................................................................................................2100
2200-1Citation of Prior Art and Ex Parte Reexamination of Patents ...................................................................................................2200
2300-1Interference Proceedings ...........................................................................................................................................................2300
2400-1Biotechnology ............................................................................................................................................................................2400
2500-1Maintenance Fees ......................................................................................................................................................................2500
2600-1Optional Inter Partes Reexamination .........................................................................................................................................2600
2700-1Patent Terms and Extensions .....................................................................................................................................................2700
2800-1Supplemental Examination ........................................................................................................................................................2800
2900-1International Design Applications .............................................................................................................................................2900
FPC-1Form Paragraphs Consolidated ...................................................................................................................................................FPC
I-1Appendix I: [Reserved] ....................................................................................................................................I
II-1Appendix II: List of Decisions Cited ..............................................................................................................II
L-1Appendix L: Patent Laws ................................................................................................................................L
R-1Appendix R: Patent Rules ...............................................................................................................................R
T-1Appendix T: Patent Cooperation Treaty and Regulations Under the PCT ......................................................T
AI-1Appendix AI: Administrative Instructions Under the PCT ...........................................................................AI
P-1Appendix P: Paris Convention ........................................................................................................................P
Rev. 07.2015, November 2015
Table of Contents
PageChapter
Subject Matter Index ................................................................................................................................Index-1Index
Rev. 07.2015, November 2015
Table of Contents
PageChapter
Chapter 100 Secrecy, Access, National Security, and Foreign Filing
General101 Information as to Status of an Application
102
Right of Public To Inspect Patent Files and Some Application Files
103
Power to Inspect Application104 Suspended or Excluded Practitioner Cannot Inspect
105
Control of Inspection by Assignee106 Rights of Assignee of Part Interest106.01
[Reserved]107-109 Confidential Nature of International Applications
110
[Reserved]111-114 Review of Applications for National Security and Property Rights Issues
115
[Reserved]116-119 Secrecy Orders120 Handling ofApplications under Secrecy Order and/or Bearing National Security Markings
121
[Reserved]122-129 Examination of Secrecy Order Cases130 [Reserved]131-139 Foreign Filing Licenses140 [Reserved]141-149 Statements to DOE and NASA150 Content of the Statements151
101 General [R-07.2015]
35 U.S.C. 122 Confidential status of applications; publication of patent applications.
(a) CONFIDENTIALITY.— Except as provided in subsection (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 determined 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 application may be published earlier than the end of such 18-month period.
(B) No information concerning published patent applications 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 information concerning a published patent application shall be final and nonreviewable.
(2) EXCEPTIONS.—
(A) An application shall not be published if that application is—
(i) no longer pending;
(ii) subject to a secrecy order under section 181 ;
(iii) a provisional application filed under section 111(b); or
(iv) an application for a design patent filed under chapter 16.
(B)(i) If an applicant makes a request upon filing, certifying 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 publication 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.
(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 accordance 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 international agreement, and such foreign filed applications corresponding 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 invention in the application filed in the Patent and Trademark Office, the applicant may submit a
Rev. 07.2015, October 2015100-1
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 foreign 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 ensure that such applications are promptly identified and the secrecy of such inventions is maintained in accordance with chapter 17 .
(e) PREISSUANCE SUBMISSIONS BY THIRD PARTIES.—
(1) IN GENERAL.—Any third party may submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other printed publication of potential relevance to the examination of the application, if such submission is made in writing before the earlier of—
(A) the date a notice of allowance under section 151 is given or mailed in the application for patent; or
(B) the later of—
(i) 6 months after the date on which the application for patent is first published under section 122 by the Office, or
(ii) the date of the first rejection under section 132 of any claim by the examiner during the examination of the application for patent.
(2) OTHER REQUIREMENTS.—Any submission under paragraph (1) shall—
(A) set forth a concise description of the asserted relevance of each submitted document;
(B) be accompanied by such fee as the Director may prescribe; and
(C) include a statement by the person making such submission affirming that the submission was made in compliance with this section.
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, proceeding, 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.
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 application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; and the application is still pending. See § 2.27 of this title for trademark files.
*****
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 paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
(i) Patented applications and statutory invention registrations. 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 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).
100-2Rev. 07.2015, October 2015
MANUAL OF PATENT EXAMINING PROCEDURE§ 101
(ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published 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 specific document in the file of a pending published application 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, drawings, 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 (i) 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 application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. 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 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, 365(c), or 386(c) 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, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). 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 provisional 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 appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-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 application, except as provided in paragraph (c) or (i) of this section.
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise 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 otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) 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, 365(c), or 386(c) 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, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, 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 (i)) or a power to inspect (see paragraph (c) of this section) 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 a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public ( i.e., status information) 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
Rev. 07.2015, October 2015100-3
§ 101SECRECY, ACCESS, NATIONAL SECURITY, AND FOREIGN FILING
(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, 365, or 386 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 application is pending, abandoned or patented, and whether the application 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 in accordance with 35 U.S.C. 122 and 37 CFR 1.14. 35 U.S.C. 122 and 18 U.S.C. 2071 impose statutory requirements which cover the handling of patent applications and related documents. Suspension, removal, and even criminal penalties may be imposed for violations of these statutes.
Any employee having custody of a patent application or related documents will be responsible for maintaining confidentiality and otherwise conforming with the requirements of law. No part of any application or paper related thereto should be reproduced or copied except for official purposes. Application files must not be displayed or handled so as to permit perusal or inspection by any unauthorized member of the public.
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. Applications, artifact files, and official papers for which there is no electronic file must not be placed in desk drawers or other locations where they might be easily overlooked or are not visible to authorized personnel. Interoffice mail must be sent in appropriate envelopes.
Official papers are accepted only at the Customer Service Window, except for certain papers that have been specifically exempted from the central delivery policy. See MPEP § 502. Appropriate corrective
action for IFW messages with faulty identifications or incorrect routing should be taken at once to ensure the prompt receipt thereof at the appropriate destination.
All U.S. Patent and Trademark Office employees should bear in mind at all times the critical importance 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 assistance. See MPEP § 1701. Statutory requirements and curbs regarding the use of information obtained by an employee through government employment are imposed by 5 U.S.C. 2635.701- 2635.703 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 inadvertent 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 in the file or in the artifact folder of IFW applications.
TELEPHONE AND IN-PERSON REQUESTS FOR INFORMATION CONCERNING PENDING 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.
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(2) Information concerning a patent application may be communicated to the public if the patent application is identified in a published patent document or in an application
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as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public ( i.e., status information) 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, 365, or 386 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 application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).
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Except as provided in 35 U.S.C. 122(b), no information concerning pending or abandoned patent applications (except applications which have been published, reissue applications and reexamination proceedings) may be given to the public without appropriate written authorization. See 35 U.S.C. 122 and 37 CFR 1.14.
When handling an incoming telephone call or an in-person request for information regarding an unpublished 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, an inventor, 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 telephone:
(A) Obtain the caller’s full name, the application number, and the caller’s telephone number. Ask the caller if there is a patent practitioner (attorney or agent) of record.
(1) If there is a patent practitioner of record, ask for his or her registration number. If the registration number is not known, ask for the name of the patent practitioner of record. Inform the caller that a patent practitioner of record will be called after verification of his/her identity and that information concerning the application will be released to that patent practitioner.
(2) If there is no patent practitioner of record, ask the caller why he or she is entitled to information concerning the application. If the caller identifies himself or herself as inventor, 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 inventor, 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 application can be released by checking PALM or the application file.
(1) If the caller stated there was a patent practitioner of record, PALM intranet should be used to verify the registration number given or to obtain the registration number of a patent practitioner of record. Then PALM intranet (using the registration number) should be used to obtain a telephone number for a patent practitioner of record.
(2) If the caller identified himself or herself as an inventor, 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 a patent practitioner of record. If there is a patent practitioner of record, their telephone number can be obtained from PALM intranet.
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(C) Return the call using the telephone number as specified below.
(1) If a patent practitioner is of record in the application, information concerning the application should only be released by calling the patent practitioner's telephone number obtained from PALM intranet.
(2) If the inventor, applicant or an authorized representative of the assignee of record requests information, and there is no patent practitioner of record and the correspondence 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 concerning 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-07.2015]
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 paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
(i) Patented applications and statutory invention registrations. 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 published application is available to the public as set forth in §1.11(a) . A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published 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 specific document in the file of a pending published application 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, drawings, 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 (i) 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 application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. 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 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 , 365(c), or 386(c) 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, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). 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 provisional 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 appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-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 application, except as provided in paragraph (c) or (i) of this section.
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(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise 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 otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) 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, 365(c), or 386(c) 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, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, 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 (i)) or a power to inspect (see paragraph (c) of this section) 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 a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this section. The information that may be communicated to the public ( i.e., status information) 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, 365, or 386 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 application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).
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Status information of an application means only the following information:
(A) whether the application is pending, abandoned, 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 application, the international filing date or the date of entry into the national stage; and
(D) 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, 365, or 386 of the application), and if there are any such applications, status information therefor as set forth in 37 CFR 1.14(a)(2)(iv).
A requester seeking status information regarding an application should check the Patent Application Information Retrieval (PAIR) system on the USPTO website at www.uspto.gov/learning-and-resources/ support-centers/patent-electronic-business-center. 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:
(1) the applicant;
(2) a patent practitioner of record;
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(3) the assignee or an assignee of an undivided part interest;
(4) the inventor or a joint inventor; or
(5) a registered attorney or agent named in the papers accompanying the application papers filed under 37 CFR 1.53 or the national stage documents filed under 37 CFR 1.495, if a power of attorney has not been appointed under 37 CFR 1.32.
If the requester is any of (1) - (5) as set forth above, or if the application contains written authority granting access to the requester signed by any of (1) - (5) as set forth above, then the requester is entitled to status information. See 37 CFR 1.14(c) and MPEP § 104 for additional information pertaining to who can provide written authority granting access to such information. 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 any of (1) - (5) or a person with written authority from any of (1) - (5) 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 application identified by application number (or serial number 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 application. 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, an international application publication or an international design application), 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 benefit of the filing date of the identified application. The requester should be informed of the national applications 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 any of (1) - (5) or a person with written authority from any of (1) - (5) 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 international application and the United States of America has been indicated as a Designated State in the international application, pursuant to 37 CFR 1.14(a)(2)(iv), the requester is entitled to status 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 application or of the corresponding page of the PCT Gazette must be supplied with the status request.
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The status request should be made in writing to the International Patent LegalAdministration (see MPEP § 1730). Alternatively, inquiries relating to applications claiming the benefit of the filing date of a published international application may be directed to the PCT Help desk. Only the serial number and filing date, or application 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 referenced published international application. Other information contained on the continuity data screen, such as whether the application is a CIP, continuation or divisional application, the date of abandonment of the application and issue date may be confidential information and should not be communicated.
If the requester is not any of (1) - (5) or a person with written authority from any of (1) - (5) as set forth above, but the application is an international design application maintained by the Office in its capacity as a designated office (37 CFR 1.1003) for national processing, pursuant to 37 CFR 1.14(a)(2)(iv), the requester is entitled to status information for the international design application as well as any application claiming the benefit of the filing date of the published international design application. With respect to an international design application maintained by the Office in its capacity as an office of indirect filing (37 CFR 1.1002), status information may be made available where contained in the file of the international design application maintained by the Office for national processing.
STATUS LOCATION INFORMATION FOR OFFICE 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 Wrapper (IFW) application, no location is associated with the file.
Office personnel requesting status/location information on applications prior to 07 series applications that are not in the PALM system should contact the FIU (see MPEP § 1730) where the
numerical index records of the above mentioned applications are maintained.
103 Right of Public To Inspect Patent Files and Some Application Files [R-07.2015]
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 application will not be available if: The requirements of paragraphs (d)(1), (d)(2), and (d)(3) of § 1.217 have been met in the application; 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 requirements 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), § 42.14 or § 42.410(b), the file of any interference or trial before the Patent Trial and Appeal Board 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.
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(1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
(i) Patented applications and statutory invention registrations. 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 published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published 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 specific document in the file of a pending published application 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, drawings, 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 (i) 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 application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. 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 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, 365, or 386(c) 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, an international publication of an international application underPCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). 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 provisional 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 appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application underPCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-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 application, except as provided in paragraph (c) or (i) of this section.
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise 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 otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) 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, 365, or 386(c) 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, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, 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 (i)) or a power to inspect (see paragraph (c) of this section) 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 a published patent document or in an application as set forth in paragraphs (a)(1)(i) through (a)(1)(vi) of this
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section. The information that may be communicated to the public ( i.e., status information) 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, 365, or 386 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 application is pending, abandoned or patented, and whether the application has been published under 35 U.S.C. 122(b).
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I. ACCESS TO IMAGE FILE WRAPPER (IFW) APPLICATIONS
The Image File Wrapper (IFW) system uses image technology to replace the paper processing of patent applications in the Office. Paper components of these application files (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) have been scanned to create electronic image files. For patent applications in the IFW system, the IFW file is the Official file and no access is granted to the original paper document sheets used to create the IFW file. All processing and examination is conducted using the electronic images instead of the paper source documents.
If an IFW file has been created for a patented application, published application, or an application to which a patented or published application claims domestic priority, the IFW file (with the exception of non-patent literature) is accessible through public PAIR. All patent applications filed after June 30, 2003, have been scanned into the IFW system are available in public PAIR upon publishing or
patenting. Pending applications filed before June 30, 2003, are scanned into IFW as incoming papers are received in the Office.
II. PUBLISHED 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.
(1) Records associated with patent applications (see paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
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(ii) Published abandoned applications. The file of an abandoned published application is available to the public as set forth in § 1.11(a). A copy of the application-as-filed, the file contents of the published application, or a specific document in the file of the published 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 specific document in the file of a pending published application 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, drawings, 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 (i) of this section.
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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 pending) 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). Pursuant to 35 U.S.C. 374 and 35 U.S.C. 390, the publication by the International Bureau of an international application under the PCT or an international design application designating the United States under the Hague Agreement is deemed to be a publication under 35 U.S.C. 122(b). Note that the U.S. is automatically designated in all
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international applications under the PCT filed on or after January 1, 2004.
If a redacted copy of the application was used for the patent application publication, the copy of the application 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 system are available on the USPTO 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 application 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 paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
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(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 application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. 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 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, 365, or 386(c) 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, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). 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 provisional 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 appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3). A copy of the application-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 application, except as provided in paragraph (c) or (i) of this section.
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise 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 otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2), or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
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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 File Information Unit (FIU) without the specific
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written authority of the inventor, applicant in an application filed on or after September 16, 2012, 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 Continuation 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 application 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 confidence.
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. See 37 CFR 1.14(j) for access to international design applications. If an abandoned application is referred to in an international publication of an international application under PCT Article 21(2), or in a publication of an international registration under Hague Agreement Article 10(3), 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 application 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 application in a U.S. patent application publication, a U.S. patent, a published international application
published in accordance with PCT Article 21(2), a publication of an international registration under Hague Agreement Article 10(3), 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)(vi). In addition, if a U.S. patent application publication, a U.S. patent, a published international application, or a published international registration claims benefit under 35 U.S.C. 119(e), 120, 121, 365, or 386 to a U.S. patent application, a copy of that application-as-filed may be provided upon written request (see 37 CFR 1.14(a)(1)(v)), or be available through the public PAIR system if the application is maintained in the IFW system. A benefit claim in an international design application that does not designate the United States is not a claim under 35 U.S.C. 119(e), 120, 121, 365 or 386. The written request, including a copy of the page of the patent application publication, U.S. patent, published international application, or published international registration including the incorporation by reference or specific reference under 35 U.S.C. 119(e), 120, 121, 365, or 386 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 application, 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 circumstances 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 contents of a patent application file wrapper may be ordered on-line or requested by facsimile from the Certification Division. Payment of the appropriate fee under 37 CFR 1.19(b) may be made 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 applications.
Form PTO/SB/68 may be used to request access.
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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 application 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 circumstances 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 confidentiality 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, applicant must file two copies of the information incorporated by reference along with the objection. In the example given, applicant would be required to provide two copies of page 5, lines 5-35 of the XX/YYY,YYY application. Failure to provide the material within the time period provided will result in the entire application content (including prosecution history) 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 BY THIRD PARTY
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 paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
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(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 under35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) 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, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3), or are not identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States, 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 (i)) or a power to inspect (see paragraph (c) of this section) is necessary to obtain the application, or a copy of the application.
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(i) 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.
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Any interested party may file a petition, accompanied 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 petitioner, it should always be included complete with ZIP Code number. In addition, telephone and facsimile 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
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in an interference, derivation proceeding, or trial before the Patent Trial and Appeal Board. See MPEP § 1002.02(b), item 21.
The petition may be filed either with proof of service of copy upon the inventor, applicant in an application filed on or after September 16, 2012, assignee of record, or attorney or agent of record in the application to which access is sought, or the petition may be filed in duplicate, in which case the duplicate copy will be sent by the Office to the inventor, applicant in an application filed on or after September 16, 2012, assignee of record, or attorney or agent of record in the application (hereinafter “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 normally 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 be denied. If applicant states that he or she has no objection 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 petitioner 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 circumstances” 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 earlier 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 application as a means to interfere with a competitor’s business or customers. See, e.g., In re Crossman, 187 USPQ 367 (PTO Solicitor 1975); and In re Trimless Cabinets, 128 USPQ 95 (Comm’r Pat. 1960). 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, 365(c), or 386(c) 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 paragraph (g) of this section for international applications and paragraph (j) of this section for international design applications) may be available in the following situations:
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(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 application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. 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 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, 365(c), or 386(c) 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, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3). 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 provisional 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 appropriate fee (§ 1.19(b)), if the benefit of the application is claimed under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) in an application that has issued as a U.S. patent, or in an application that has published as a statutory invention registration, a U.S. patent application publication, an international publication of an international application underPCT Article 21(2) , or a publication of an international
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registration under Hague Agreement Article 10(3). A copy of the application-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 application, except as provided in paragraph (c) or (i) of this section.
(vi) Unpublished pending applications (including provisional applications) that are incorporated by reference or otherwise 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 otherwise identified in a U.S. patent, a statutory invention registration, a U.S. patent application publication, an international publication of an international application under PCT Article 21(2) , or a publication of an international registration under Hague Agreement Article 10(3) of an international design application designating the United States. The Office will not provide access to the paper file of a pending application, except as provided in paragraph (c) or (i) of this section.
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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 a U.S. patent, a U.S. patent application publication, a statutory invention registration, an international application under PCT Article 21(2), or an international registration under Hague Agreement Article 10(3), 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 benefit of the application is claimed pursuant to 35 U.S.C.119(e), 120, 121, 365(c), or 386(c) 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 system if the application is maintained in the IFW system.
VII. ACCESS TO PROVISIONAL APPLICATIONS
In provisional applications, access or certified copies will only be given to parties with written authority
from a named inventor, the assignee of record, the attorney or agent of record, or, for an application filed on or after September 16, 2012, an applicant other than an inventor. Since provisional applications 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 provisional application papers will be supplied to the correspondence 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 THE PATENT TRIAL AND APPEAL BOARD
The Patent Trial and Appeal Board handles all requests for access to, or copies of Office records directly related to, applications involved in interferences, derivation proceedings, or trials. See 37 CFR 41.109 and 37 CFR 42.3. See also MPEP Chapter 2300.
IX. DEFENSIVE PUBLICATIONS
The entire application file of a defensive publication is available to the public for inspection and obtaining copies. See MPEP § 711.06.
X. REISSUE APPLICATIONS
37 CFR 1.11(b) opens reissue applications to inspection by the general public. 37 CFR 1.11(b) also provides for announcement of the filings of reissue applications in the Official Gazette (except for continued prosecution applications filed under 37 CFR 1.53(d)). This announcement gives interested members of the public an opportunity to submit to the examiner information pertinent to patentability of the reissue application.
IFW reissue application files are open to inspection by the general public by way of Public PAIR via the USPTO Internet site. In viewing the images of the files, members of the public will be able to view the
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entire content of the reissue application file history. To access Public PAIR, a member of the public would (A) go to the USPTO website at www.uspto.gov, (B) click on “Check Status” under the “Patents” column, (C) click on Public PAIR, and (D) enter the reissue application number.
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 IFW system, at which point the file is open to inspection by the public by way of Public PAIR via the USPTO Internet site. In viewing the images of the reexamination proceedings, members of the public will be able to view the entire contents of the reexamination file with the exception of non-patent literature. 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 published or made available for public inspection if:
(1) The Director believes the decision involves an interpretation of patent laws or regulations that would be of precedential value; and
(2) The applicant is given notice and an opportunity to object in writing within two months on the ground that the decision discloses a trade secret or other confidential information. Any objection must identify the deletions in the text of the decision considered necessary to protect the information, or explain why the entire decision must be withheld from the public to protect 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
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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 application 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 Director 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 information. 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 before any contested portion of the action is made public over its objection.
(b) Record of proceeding.
(1) The record of a Board proceeding 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 public if any involved file is or becomes open to the public under § 1.11 of this title or an involved application is or becomes published 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 Patent Trial and Appeal Board available to the public. These sections are applicable to decisions deemed by the Director to involve an interpretation of patent laws or regulation that would be of significant precedential value, where such decisions are contained in either pending or abandoned applications or in Board records not otherwise open to the public. 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 considered 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
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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 informational 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 envelope should be marked “Freedom of Information Act Request.” For requests for records about oneself, § 102.24 contains additional requirements. For requests for records about another individual, 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 certificate 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 general, 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 USPTO website at www.uspto .gov/ learning-and-resources /ip-policy/electronic-freedom-information-act-e-foia. See 37 CFR Part 102, Subpart A, “Freedom of
Information Act,” for rules pertaining to FOIA requests.
104 Power to InspectApplication [R-07.2015]
I. AUTHORITY TO GRANT ACCESS - APPLICATION FILED ON OR AFTER SEPTEMBER 16, 2012
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) The applicant;
(2) A patent practitioner of record;
(3) The assignee or an assignee of an undivided part interest;
(4) The inventor or a joint inventor; or
(5) 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 a power of attorney has not been appointed under § 1.32.
*****
For applications filed on or after September 16, 2012, the applicant, a patent practitioner of record, the assignee or an assignee of an undivided part interest, or an inventor may provide a written authority for access to a pending or abandoned application kept in confidence under 35 U.S.C. 122(a), except as provided in 37 CFR 1.11, 1.14, 41.6, or 42.412. The written authority must identify the application to be inspected and the name of the person authorized to have access, and will be made of record. Access provided upon the written order of the Director 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 patent practitioner 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 a power of attorney has not been appointed under 37 CFR 1.32. Once a power of attorney has been filed, any previously filed power
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to inspect signed by a patent practitioner who does not have a power of attorney will cease to have effect. For a discussion of power of attorney in an application, see MPEP § 402.
II. AUTHORITY TO GRANT ACCESS - APPLICATION FILED BEFORE SEPTEMBER 16, 2012
37 CFR 1.14 (pre-AIA) 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.
*****
For applications filed prior to September 16, 2012, 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. 122(a), except as provided for under 37 CFR 1.11, 1.14, 41.6, or 42.412, 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 a 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 application, see MPEP § 402.
III. POWER TO INSPECT
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 attorney has access to Private PAIR for the customer number). In addition, IFW application files of published applications or patents are available at least through Public PAIR. If for some reason an applicant, inventor, assignee, or attorney or agent of record cannot 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. Such permission is via petition for access under 37 CFR 1.14(i).
An unrestricted power to inspect given by an applicant or inventor 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 application.
Permission to inspect given by the Director, however, is not of a continuing nature, since the conditions that justified the permission to inspect when given may not apply at a later date.
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IV. ACCESS TO PATENT APPLICATIONS (PROVISIONAL AND NONPROVISIONAL) AND BOARD RECORDS
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 Board records are 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 following 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, inventor, patentee, assignee, or attorney or agent of record in an application or patent only upon proof of identity or upon recognition 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 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 written 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 application. An associate or representative of the named person 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 application. 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 applicant, 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, the applicant, assignee of record, or an attorney or agent of record, the requested certified copy will be supplied to the correspondence address of the provisional application
105 Suspended or Excluded Practitioner Cannot Inspect [R-11.2013]
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 an inventor or the applicant. Power to inspect given to such an attorney or agent will not be accepted.
106 Control of Inspection by Assignee [R-11.2013]
The applicant or assignee of record of the entire interest in an application may file an application or intervene in the prosecution of the application, appointing an attorney or agent of his or her own choice. See 37 CFR 1.46 and 3.71. Such an application filing or intervention, however, does not exclude the inventor from access to the application to see that it is being prosecuted properly, unless the applicant or assignee makes specific request to that effect. Any request to prevent the inventor from obtaining access to the file should be filed as a separate 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. Of course, after the application has published 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 previously granted will no longer be in effect.
106.01 Rights of Assignee of Part Interest [R-11.2013]
While it is only the assignee of record of the entire interest who can intervene in the prosecution of an
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application or interference to the exclusion of the applicant (or, for applications filed on or after September 16, 2012, can prosecute the application after becoming the applicant under 37 CFR 1.46), an assignee of a part interest or a licensee of exclusive right is entitled to inspect the application. For information pertaining to prosecution by the assignee, see MPEP § 324 (for applications filed before September 16, 2012) and MPEP § 325 (for applications filed on or after September 16, 2012).
107-109 [Reserved]
110 Confidential Nature of International Applications [R-07.2015]
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 international 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 Authority, to transmittals provided for under Article 13, and to communications provided for under Article 20.
(2)(a) No national Office shall allow access to the international 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 international application,
(ii) date of receipt of the communication of the international application under Article 20,
(iii) date of receipt of a copy of the international application 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 publication may, however, contain only the following data: identification 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, including individual communication and general publication, provided, however, that no national Office shall generally publish an international application or its translation before the international publication or, if international publication has not taken place by the expiration of 20 months from the priority date, before the expiration 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 authorized 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 examination 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 Trademark Office shall be subject to the provisions of chapter 17.
(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, 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 International Preliminary ExaminingAuthority, may not disclose the contents of such application to anyone not authorized to receive such disclosure.
Although most international applications are published soon after the expiration of 18 months from the priority date, PCT Article 21(2)(a), such
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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 international 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 accordance 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 application 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 publication 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 international 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 accordance with PCT Articles 30 and 38 and PCT Rules 44 ter .1, 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.
(4) In accordance with PCT Article 30, copies of an international 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 paragraphs (a)(1)(i) through (a)(1)(vi) and (g)(3) of this section
will not be permitted with respect to the Examination Copy in accordance with PCT Article 38.
*****
37 CFR 1.14(g) 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 international 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 International 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 International 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 examination 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 acting in its capacity as an elected Office, will provide a copy of the examination file in an international application 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 international application file under 37 CFR 1.14(g)(1) must be in the form of a written request sent to the International Patent Legal Administration and must include a showing that the international application has been published and that
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the U.S. was designated. 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 applications, which were published in a non-English language 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.
111-114 [Reserved]
115 Review of Applications for National Security and Property Rights Issues [R-07.2015]
35 U.S.C. 181 Secrecy of certain inventions and withholding of patent.
Whenever publication or disclosure by the publication of an application or by the grant of a patent on an invention in which the Government has a property interest might, in the opinion of the head of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of an application or the grant of a patent therefor under the conditions set forth hereinafter.
*****
All provisional applications filed under 35 U.S.C. 111(b), nonprovisional applications filed under 35 U.S.C. 111(a), international applications filed
under the PCT, and international design applications filed under the Hague Agreement, 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 applications 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 on disclosure of the subject matter as provided for in 35 U.S.C. 181.
If a defense agency concludes that disclosure of the invention would be detrimental to the national security, a secrecy order is recommended to the Commissioner 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 indicating national security classified subject matter), responsibility for notifying the Commissioner for Patents 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 Licensing and Review or mailed to the Office in compliance with 37 CFR 5.1(a) and Executive Order 13526 of December 29, 2009. However, the Office will accept such applications filed with the USPTO via the Department of Defense Secret Internet Protocol Router Network (SIPRNET) and consider them as filed via the USPTO’s electronic filing system for purposes of 37 CFR 1.16(t) and 37 CFR 1.445(a)(ii). 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 Licensing and Review.
A second purpose for the screening of all applications, with an exception for provisional applications, is to identify inventions in which DOE
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or NASA might have property rights. See 42 U.S.C. 2182, 51 U.S.C. 20135, 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 language 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 are required to be cleared from secrecy review before forwarding to issue. If the L&R code on the general information display does not equal 1, then in an IFW application, a message should be sent to LREVINCOMINGDOCS.
The Patent Application Locating and Monitoring (PALM) System'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 indicators “Third Level Review” and “Secrecy Order” display the historical status of the application. An L&R code of “3” or a “Third Level Review” of “Yes” indicates that application is/has been considered for security screening.
An L&R code of “4” indicates that application is currently under Secrecy Order. In this case, the application 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 responsibility to be alert for obviously sensitive subject matter either in the original disclosure or subsequently introduced, for example, by amendment. If the examiner 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 examiners (SPEs) of Technology Center Working Group 3640.
116-119 [Reserved]
120 Secrecy Orders [R-07.2015]
37 CFR 5.1 Correspondence.
(a) All correspondence in connection with this part, including petitions, should be addressed to: Mail Stop L&R, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
(b) Definitions.
(1) Application as used in this part includes provisional applications (§ 1.9(a)(2) of this chapter), nonprovisional applications (§ 1.9(a)(3)), international applications (§ 1.9(b)), or international design applications (§ 1.9(n)).
(2) Foreign application as used in this part includes, for filing in a foreign country, foreign patent office, foreign patent agency, or international agency (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications (35 U.S.C. 361, § 1.412) or as an office of indirect filing for international design applications (35 U.S.C. 382, § 1.1002)) any of the following: An application for patent, international application, international design application, or application for the registration of a utility model, industrial design, or model.
(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., “Confidential,” “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 relevant 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 prevent abandonment of the application.
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(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 subject 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 pursuant 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 application 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 or derivation will not be instituted 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 application 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 notified. 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 and international design 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 transmitted to the international authorities or the applicant.
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 petition. 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 Government 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 proposed disclosee is known to be cleared by a defense agency to receive classified information, adequate explanation of such clearance 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
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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 manner disclosing material beyond the modification granted in the first application.
(e) Organizations requiring consent for disclosure of applications under secrecy order to persons or organizations in connection 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 disclosees 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 (Type I secrecy order)— to be used for those patent applications that disclose critical technology with military or space application in accordance with DoD Directive 5230.25 “Withholding of Unclassified Technical Data From Public Disclosure,” based on 10 U.S.C. 130 “Authority to Withhold From Public Disclosure Certain Technical Data.”
(B) Secrecy Order and Permit for Disclosing Classified Information (Type II secrecy order)— to be used for those patent applications which contain data that is properly classified or classifiable under a security guideline where the patent application owner has a current DoD Security Agreement, DD Form 441. If the application is classifiable, this secrecy order allows disclosure of the technical information as if it were classified as prescribed in the National Industrial Security Program Operating Manual (NISPOM).
(C) General Secrecy Order (Type III secrecy order)— to be used for those patent applications that contain data deemed detrimental to national security if published or disclosed, including that data properly classifiable under a security guideline where the patent application owner does not have a DoD Security Agreement. The order prevents disclosure
of the subject matter to anyone without an express written consent 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 Type I 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 exportation. This type of Secrecy Order also identifies the countries where corresponding patent applications may be filed. Countries with which the United States has reciprocal security agreements are: Australia, Belgium, Canada, Denmark, France, Germany, Greece, Italy, Japan, Luxembourg, Netherlands, Norway, Portugal, Republic of Korea, Spain, Sweden, Turkey and the United Kingdom. Please note that applications subject to a secrecy order cannot be filed directly with the European Patent Office since no reciprocal security agreement with this organization exists. Applications must be filed in the individual EPO member countries identified above. Applicant must arrange filing of such subject matter through the agency sponsoring the secrecy order.
The intent of the Type II Secrecy Order is to treat classified and classifiable 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 technical data in the application.
The Type III Secrecy Order is used where the other types of Orders do not apply, including Orders issued by direction of agencies other than the Department of Defense.
A Secrecy Order should not be construed in any way to mean that the Government has adopted or contemplates 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.
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Thus, the Secrecy Order restricts disclosure or publication of the invention in any form. Furthermore, other patent applications already filed or later filed which contain any significant part of the subject matter of the application also fall within the scope of the Order and must be brought to the attention of Licensing & 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 relevant 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 subject matter of the application be kept in confidence, unless written permission to disclose is first obtained from the Commissioner for Patents except as provided by the Secrecy Order. Therefore, all correspondence 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 facsimile transmission is not permitted. 37 CFR 1.6(d)(6).
Subject matter under Secrecy Order must be safeguarded under conditions that will provide adequate protection and prevent access by unauthorized persons.
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 Security 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 personal information to ensure a proper security clearance. Personnel controlling the cleared correspondence address bear the burden of ensuring that individuals obtaining classified information from the correspondence address follow the proper procedures for handling classified information.
IV. INTERNATIONALAPPLICATIONS (PCT)AND INTERNATIONAL DESIGN APPLICATIONS
If the Secrecy Order is applied to an international application or an international design application, the application will not be mailed, delivered, or otherwise transmitted to the international authorities or the applicant as long as the Secrecy Order remains in effect.
An international application will be considered withdrawn (abandoned) if the Secrecy Order remains in effect at the end of the time limit under PCT Rule 22.3 because the Record Copy of the international application was not received in time by the International Bureau. 37 CFR 5.3(d), PCT Article 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 requirements of 35 U.S.C. 371(c) prior to the withdrawal.
V. CHANGES IN SECRECY ORDERS
Applicants may petition for rescission or modification of the Secrecy Order. For example, if the applicant believes that certain existing facts or circumstances would render the Secrecy Order ineffectual, he or she may informally contact the sponsoring 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 sensitive subject matter is not necessary for an enabling disclosure under 35 U.S.C. 112. See MPEP § 724.05. The defense agency identified with the
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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 modify the Secrecy Order stating fully the reason or purpose for disclosure or modification. An example of such a situation would be a request to file the application in a foreign country. The requirements for petitions 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, Alexandria, Virginia, 22313-1450.
VI. IMPROPER OR INADVERTENT DISCLOSURE
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 person 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, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia, 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. government agency to export such subject matter. If the subject matter is included in any foreign patent application 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 canceled or removed.
121 Handling of Applications under Secrecy Order and/or Bearing National Security Markings [R-08.2012]
Applications subject to Secrecy Order will be deleted from any image file system within the USPTO, converted to paper and held with Licensing and Review. The application will be transferred to an examiner designated by Licensing and Review for examination. Under the current Executive Order for Classified National Security Information, 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, including non-patent literature, in the U.S. Patent and Trademark Office bearing words such as “Secret,” “Confidential,” “ITAR” or similar must be promptly referred to Technology Center (TC) Working 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 markings have been considered and declassified or otherwise explained. For applications filed with the Office bearing what appears to be National Security Markings, the applicant will be so notified by Licensing and Review and asked to explain the markings, remove such markings if improper, or obtain a Secrecy Order, if necessary. If markings are found improper and removed, the application may be referred to a defense agency if deemed necessary for review under the second paragraph of 35 U.S.C. 181. Any application filed
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directly with Licensing and Review, not bearing proper security markings or Secrecy Order will be transmitted to scanning for incorporation as an electronic file in IFW and treated as a normal application.
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).
122-129 [Reserved]
130 Examination of Secrecy Order Cases [R-11.2013]
All applications in which a Secrecy Order has been imposed are examined in a secure location by examiners possessing national security clearances under the control of Licensing and Review. If the Order is imposed subsequent to the docketing of an application in another TC, the application will be transferred to an examiner designated by Licensing and Review.
Secrecy Order cases are examined for patentability as in other cases, but will not be passed to issue; nor will an interference or derivation be instituted 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 Patent Trial and Appeal Board 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. See 37 CFR 5.3(c). 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 associated 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 examination. In this case, the examiner should require the applicant to seek imposition of a Secrecy Order or authority to cancel the markings. This should preferably 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 applicant 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.
131-139 [Reserved]
140 Foreign Filing Licenses [R-07.2015]
35 U.S.C. 184 Filing of application in foreign country.
(a) FILING IN FOREIGN COUNTRY.—Except when authorized by a license obtained from the Commissioner 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 invention made in this country. A license shall not be granted with respect to an invention subject to an order issued by the Commissioner of Patents pursuant to section 181 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
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abroad through error and the application does not disclose an invention within the scope of section 181.
(b) APPLICATION.—The term “application” when used in this chapter includes applications and any modifications, amendments, or supplements thereto, or divisions thereof.
(c) SUBSEQUENT MODIFICATIONS,AMENDMENTS, AND SUPPLEMENTS.—The scope of a license shall permit subsequent modifications, amendments, and supplements containing additional subject matter if the application upon which the request for the license is based is not, or was not, required to be made available for inspection under section 181 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 modifications, 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, amendments, 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 inspection 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 successors, assigns, or legal representatives shall, without procuring the license prescribed in section 184, have made, or consented 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 the patent does not disclose subject matter within the scope of section 181.
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, shall, with knowledge of such order and without due authorization, willfully publish 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, 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.
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 instructions 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 agency to carry out the provisions of this chapter, and may delegate any power conferred by this chapter.
37 CFR 5.11 License for filing in, or exporting to, a foreign country an application on an invention made in the United States or technical data relating thereto.
(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 country, foreign patent office, foreign patent agency, or any international agency (other than the United States Patent and Trademark Office acting as a Receiving Office for international applications (35 U.S.C. 361 , § 1.412 ) or as an office of indirect filing for international design applications (35 U.S.C. 382 , §1.1002 )), 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) of this section would also authorize the export of technical data abroad for purposes relating to the preparation, filing or possible filing and prosecution of a foreign application without separately complying with the regulations contained in 22 CFR parts 120 through 130 (International Traffic in Arms Regulations of the Department of State), 15 CFR parts 730 through 774 (Export Administration Regulations of the Bureau of Industry and Security, Department of Commerce) and 10 CFR part 810 (Assistance to Foreign Atomic Energy Activities Regulations 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 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
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730 through 774 (Export Administration Regulations of the Bureau of Industry and Security, Department 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 covered by 10 CFR part 810.
(d) If a secrecy order has been issued under § 5.2, an application cannot be exported to, or filed in, a foreign country (including 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 foreign country, or
(3) For subsequent modifications, amendments and supplements containing additional subject matter to, or divisions of, a foreign patent application if:
(i) A license is not, or was not, required under paragraph (e)(2) of this section for the foreign 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 supplements do not, or did not, change the general nature of the invention 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 United States Patent and Trademark Office. An authorization to file a foreign patent application 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 on an invention 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 application. The filing receipt or other official notice 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 instructions for delivery of the requested license when it is to be delivered 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, international design, 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 material 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.
(c) Where the application to be filed or exported abroad contains matter not disclosed in the United States application or applications, 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 or exported abroad, must be furnished with the petition. If, however, all new matter in the application to be filed or exported 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 supplements 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 authorizes the export and filing of an application in a foreign country or to any foreign patent agency or international patent agency when the subject matter of the foreign application corresponds 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 supplements, including divisions, changes or supporting matter consisting of the illustration, exemplification, comparison, or explanation of subject matter disclosed in the application; and
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(3) To take any action in the prosecution of the foreign application provided that the adding of subject matter or taking of any action under paragraphs (a)(1) or (2) of this section does not change the general nature of the invention disclosed in the application in a manner that 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 filing, the unlicensed exportation of which is prohibited pursuant to the Arms Export Control Act, as amended, and 22 CFR parts 120 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 Assistance to Foreign Atomic Energy Activities, 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 eligible 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 to any foreign patent agency or international patent agency. Further, this license includes authority to export and file all duplicate and formal papers in foreign countries or with foreign and international patent agencies and to make amendments, modifications, and supplements to, file divisions of, and take any action in the prosecution of the foreign application, provided 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 inspection 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 or export the foreign application, no license is required to file papers in connection with the prosecution of the foreign 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 application that 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 separately licensed in the same manner as a foreign 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 that involves the disclosure of additional subject matter must be licensed in the same manner as a foreign 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 introduced.
(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 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 information 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.
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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 published 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 aboard [sic], 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 without the required license under § 5.11 first having been obtained, and
(4) The required fee (§ 1.17(g) of this chapter).
(b) The explanation in paragraph (a) of this section must include a showing of facts rather than a mere allegation of action through error. The showing of facts as to the nature of the error should include statements by those persons having personal knowledge of the acts regarding filing in a foreign country and should be accompanied by copies of any necessary supporting documents such as letters of transmittal or instructions for filing. The acts which are alleged to constitute error should cover the period leading up to and including each of the proscribed foreign filings.
(c) If a petition for a retroactive license is denied, a time period of not less than thirty days shall be set, during which the petition may be renewed. Failure to renew the petition within the set time period will result in a final denial of the petition. A final denial of a petition stands unless a petition is filed under § 1.181 within two months of the date of the denial. If the petition for a retroactive license is denied with respect to the invention of a pending application and no petition under § 1.181 has been filed, a final rejection of the application under 35 U.S.C. 185 will be made.
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 and registrations of industrial designs in foreign 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 “Commissioner for Patents” is used in most of the remainder of the statute and throughout title 37 of the Code of Federal Regulations; both titles are understood to represent the same individual). Note that the export of subject matter abroad for purposes not related to foreign filing of a patent application or a registration of an industrial design, such as preparing an application in a foreign country for subsequent filing in the USPTO is not covered by any license from the USPTO. Applicants are directed to the Bureau of Industry and Security at the Department of Commerce for the appropriate clearances.
There are two ways in which permission to file an 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 an application in the USPTO (35 U.S.C. 184) at which time a license on that subject 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 application 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. The filing receipt or other official notice will indicate if a foreign filing license is granted. 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).
I. EXPEDITED FOREIGN FILING LICENSE
Explicit petitions for foreign filing licenses will also be accepted in accordance with 37 CFR 5.12(b). Such petitions may be hand carried to the Office, faxed to Licensing and Review, or submitted via
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EFS-Web. See MPEP §§ 502, 502.01 and 502.05. 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. application (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 number 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 petition for a retroactive filing license may be filed under 37 CFR 5.25 if an unlicensed foreign filing has occurred through error. However, the
requirements of 37 CFR 5.25 must be fulfilled in order for such a petition to be granted. Note that for petitions filed prior to September 16, 2012, the petition must specify that the error occurred without deceptive intent (see pre-AIA 37 CFR 5.25(a)(3)(iii) and (b)). Licenses under 37 CFR 5.25 are only made retroactive with respect to specific acts of foreign filing, and therefore the countries, 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 otherwise 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 immediately 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 corresponding 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 possible fine or imprisonment. Petitions for retroactive foreign filing licenses are processed by Licensing and Review and decided by the Office of Petitions. See MPEP § 1002.02(b). If applicant also
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wishes an expedited license for future filings, a separate expedited license request must be filed with Licensing and Review.
141-149 [Reserved]
150 Statements to DOE and NASA [R-11.2013]
37 CFR 1.14 Patent applications preserved in confidence. *****
(d) Applications reported to Department of Energy. Applications 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 constitute 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:
42 U.S.C. 2182 Inventions conceived during Commission contracts; ownership; waiver; hearings
*****
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 Intellectual 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 contract, subcontract, or arrangement involved the expenditure 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, Title 51 United States Code, section 20135 provides in part:
51 U.S.C. 20135 Property rights in inventions
*****
(d) 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 30 days after request therefor by the Director, a written statement executed under oath setting forth the full facts concerning the circumstances under which the invention was made and stating the relationship (if any) of the invention to the performance of any work under any contract of the Administration. Copies of each such statement and the 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 property rights statement will be mailed to those applicants 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 defective, 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 application will be held abandoned and the
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applicant so notified. 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 section 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 [R-11.2013]
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 unique to that invention. The use of form paragraphs or printed forms which set forth only broad generalized statements of fact is not ordinarily regarded as meeting the requirements of these statutes.
The word “applicant” in both of these statutes is construed by the Office to mean the inventor or joint inventors in person, or an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter. Accordingly, in the ordinary situation, the statements must be signed by the inventor or the joint inventors, or an assignee, obligated assignee, or a person who otherwise shows sufficient proprietary interest in the matter 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 discovery” (42 U.S.C. 2182). If a request under 37 CFR 1.48 for correction of inventorship is granted during pendency 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 Licensing and Review.
In instances where an applicant does not have firsthand 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 contract of the National Aeronautics and Space Administration, 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 applicant could be accompanied by a supplemental declaration 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 inventor applicant is deceased or legally incapacitated, 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 statements 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 unavailability 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 statements to DOE or NASA assuming that no government funds or other considerations were involved in the making or conception of the invention. It is important 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 OG 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
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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, equipment, 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 conceived 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. -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 knowledge 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________________
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Chapter 200 Types, Cross-Noting, and Status of Application
Types of Applications201 National Applications201.01 General Terms Used to Describe Applications
201.02
[Reserved]201.03 Provisional Application201.04 Reissue Application201.05 Divisional Application201.06
Former 37 CFR 1.60 Divisional Continuation Procedure
201.06(a)
Former 37 CFR 1.62 File Wrapper Continuing Procedure
201.06(b)
37 CFR 1.53(b) and 37 CFR 1.63(d) Divisional-Continuation Procedure
201.06(c)
37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice
201.06(d)
Continuation Application201.07 Continuation-in-Part Application201.08
Cross-Noting202 Status of Applications203
New203.01 Rejected203.02 Amended203.03 Allowed or in Issue203.04 Abandoned203.05 Incomplete203.06 [Reserved]203.07 Status Inquiries203.08
Congressional and Other Official Inquiries
203.08(a)
[Reserved]204-209 Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application
210
Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e)
211
Requirements Related to the Prior-Filed Application
211.01
Claiming the Benefit of a Provisional Application
211.01(a)
Claiming the Benefit of a Nonprovisional Application
211.01(b)
Claiming the Benefit of an International Application Designating the United States
211.01(c)
Claiming the Benefit of an International Design Application Designating the United States
211.01(d)
Reference to Prior Application(s)211.02
Correcting or Adding a Benefit Claim After Filing
211.02(a)
Time Period for Making a Claim for Benefit Under 37 CFR 1.78
211.03
Delayed Benefit Claims211.04 Sufficiency of Disclosure in Prior-Filed Application
211.05
[Reserved]212 Right of Priority of Foreign Application213
Recognized Countries and Regional Patent Offices of Foreign Filing
213.01
Formal Requirements Relating to Foreign Priority Application
213.02
Time for Filing U.S. Nonprovisional Application
213.03
Requirement to File Priority Claim and Certified Copy During Pendency of Application
213.04
Right of Priority Based Upon an Application for an Inventor’s Certificate
213.05
Claiming Priority and Filing a Certified Copy in a National Stage Application (35 U.S.C. 371)
213.06
Claiming Priority and Filing a Certified Copy in a Nonprovisional International Design Application
213.07
Formal Requirements of Claim for Foreign Priority
214
Time for Filing Priority Claim214.01 Unintentionally Delayed Priority Claims
214.02
Office Acknowledgement of Priority Claims
214.03
Proper Identification of Priority Application in Foreign Priority Claim
214.04
Certified Copy of Foreign Application215 Electronic Priority Document Exchange
215.01
Time For Filing Certified Copy – Application Filed On or After March 16, 2013
215.02
Timeliness Requirement – Met By Priority Document Exchange
215.02(a)
Timeliness Requirement – Met By Interim Copy of Foreign Application
215.02(b)
Time For Filing Certified Copy – Application Filed Before March 16, 2013
215.03
Entitlement to Priority216
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216.01
Incorporation by Reference Under 37 CFR 1.57(b)
217
201 Types of Applications [R-07.2015]
35 U.S.C. 101 Inventions patentable.
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
35 U.S.C. 161 Patents for plants.
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided.
35 U.S.C. 171 Patents for designs.
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
Patent applications can be directed to three broad types of subject matter:
(A) applications for patents as provided for by 35 U.S.C. 101 relating to a “new and useful process, machine, manufacture, or composition of matter," etc.;
(B) applications for plant patents as provided for by 35 U.S.C. 161; and
(C) applications for design patents as provided for by 35 U.S.C. 171.
The first type of patent application is sometimes referred to as a “utility” patent applications when being contrasted with a plant or design patent
application. 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.
201.01 National Applications [R-07.2015]
35 U.S.C. 111 Application.
[Editor Note: Applicable to any patent application filed on or after December 18, 2013. See 35 U.S.C. 111 (pre-PLT (AIA)) or 35 U.S.C. 111 (pre-AIA) for the law otherwise applicable.]
(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 Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) FEE, OATH OR DECLARATION, AND CLAIMS.—The application shall be accompanied by the fee required by law. The fee, oath or declaration, and 1 or more claims may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee, oath or declaration, and 1 or more claims within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of an application shall be the date on which a specification, with or without claims, is received in the United States 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 Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—The application shall be accompanied by the fee required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within
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such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States 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), 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 APPLICATION.—Subject to all the conditions in this subsection and section 119(e), 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 EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119, 365(a), or 386(a) or to the benefit of an earlier filing date in the United States under section 120, 121, 365(c), or 386(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
(c) PRIOR FILED APPLICATION.—Notwithstanding the provisions of subsection (a), the Director may prescribe the conditions, including the payment of a surcharge, under which a reference made upon the filing of an application under subsection (a) to a previously filed application, specifying the previously filed application by application number and the intellectual property authority or country in which the application was filed, shall constitute the specification and any drawings of the subsequent application for purposes of a filing date. A copy of the specification and any drawings of the previously filed application shall be submitted within such period and under such conditions as may be prescribed by the Director. A failure to submit the copy of the specification and any drawings of the previously filed application within the prescribed period shall result in the application being regarded as abandoned. Such application shall be treated as having never been filed, unless—
(1) the application is revived under section 27; and
(2) a copy of the specification and any drawings of the previously filed application are submitted to the Director.
35 U.S.C. 111 (pre-PLT (AIA)) Application.
[Editor Note: Applicable to any patent application filed on or after September 16, 2012, and before December 18, 2013. See 35 U.S.C. 111 or 35 U.S.C. 111 (pre-AIA) for the law otherwise applicable.]
(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 Director.
(2) CONTENTS.—Such application shall include—
(A) a specification as prescribed by section 112;
(B) a drawing as prescribed by section 113; and
(C) an oath or declaration as prescribed by section 115.
(3) FEE AND OATH OR DECLARATION.—The application must be accompanied by the fee required by law. The fee and oath or declaration 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.
(4) FAILURE TO SUBMIT.—Upon failure to submit the fee and oath or declaration 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 or declaration 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 Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional 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 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 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.
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§ 201.01TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
(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), 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 APPLICATION.—Subject to all the conditions in this subsection and section 119(e), 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 EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
Pre-AIA 35 U.S.C. 111 requirements substantially correspond to those of pre-PLT (AIA) 35 U.S.C. 111, but do not include conforming amendments with regard to the oath or declaration provisions and other miscellaneous provisions of the AIA.
37 CFR 1.9 Definitions.
(a)(1) A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the HagueAgreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
(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 either a U.S. national application for patent which was filed in the Office under 35 U.S.C. 111(a), an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
(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.
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(l) Hague Agreement as used in this chapter means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and Hague Agreement Article as used in this chapter means an Article under the Hague Agreement.
(m) Hague Agreement Regulations as used in this chapter means the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, and Hague Agreement Rule as used in this chapter means one of the Hague Agreement Regulations.
(n) An international design application as used in this chapter means an application for international registration of a design filed under the Hague Agreement. Unless otherwise clear from the wording, reference to "design application" or "application for a design patent" in this chapter includes an international design application that designates the United States.
I. APPLICATIONS FILED UNDER 35 U.S.C. 111
Applications filed under 35 U.S.C. 111(a) include original nonprovisional utility, plant, design, divisional, continuation, and continuation-in-part applications filed under 37 CFR 1.53(b), reissue applications filed under 37 CFR 1.53(b), and design patent continued prosecution applications (CPAs) filed under 37 CFR 1.53(d). See MPEP § 601.01(a) for an overview of the procedures and requirements for filing applications under 35 U.S.C. 111(a).
For details regarding reissue, design, and plant patent applications, see MPEP Chapters 1400, 1500, and 1600, respectively. For details regarding divisional, continuation, and continuation-in-part applications, see MPEP §§ 201.06 et seq., 201.07, and 201.08, respectively. See MPEP § 201.06(d) for a discussion of continued prosecution applications filed under 37 CFR 1.53(d).
Effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions of the Patent Law Treaty in title II. Notable changes include the filing date requirements for nonprovisional applications filed under 35 U.S.C. 111(a). Unless the application is for a design patent, nonprovisional applications filed under 35 U.S.C. 111(a) on or after December 18, 2013, are no longer required to include at least one claim or any drawings in order to receive a filing date for the application. See MPEP §§ 601.01(e) and 601.01(f). The filing date of an application for a design patent is the date on which the Office receives the specification
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including at least one claim and any required drawings. See 35 U.S.C. 171(c). In addition, as provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. See MPEP § 601.01(a), subsection III.
Applications filed under 35 U.S.C. 111(b) are provisional applications for patent and are filed under 37 CFR 1.53(c). Significant differences between nonprovisional applications filed under 35 U.S.C. 111(a) and provisional applications filed under 35 U.S.C. 111(b) include the following:
(A) No claim is required in a provisional application.
(B) No oath or declaration is required in a provisional application.
(C) Provisional applications will not be examined for patentability.
(D) A provisional application is not entitled to claim priority to any foreign application or the benefit of any earlier filed national application.
(E) A design patent application is not entitled to claim the benefit of a provisional application (See 35 U.S.C. 172 and 37 CFR 1.53(c)(4)).
See MPEP § 201.04 for detailed information regarding provisional applications.
For applications not filed under 35 U.S.C. 111, see MPEP Chapters 1800 and 2900 for details regarding international applications (PCT) and international design applications, respectively.
II. INTERNATIONAL APPLICATION DESIGNATING THE UNITED STATES
35 U.S.C. 363 International application designating the United States: Effect.
An international application 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 regularly filed in the Patent and Trademark Office.
37 CFR 1.9(a)(1) defines a national application as a U.S. application which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the HagueAgreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
Note that 37 CFR 1.9(b) defines an international application for patent as one filed under the Patent Cooperation Treaty prior to entering national processing at the Designated Office stage.
Treatment of a national application under 35 U.S.C. 111 and a national stage application (a national application which entered the national stage from an international application in which the conditions of 37 CFR 1.9(a)(1) have been satisfied) are similar but not identical.
See MPEP § 1893.03 et seq. for examination of international applications in the national stage, and MPEP § 1896 for a description of the differences between a nonprovisional application filed under 35 U.S.C. 111(a) and an international application filed under the Patent Cooperation Treaty that entered the national stage. Note in particular the following examples:
(A) Restriction practice as explained in MPEP § 806 et seq. is applied to national applications under 35 U.S.C. 111(a) while unity of invention practice as explained in MPEP §§ 1850 and 1893.03(d) 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), as are utility and plant patent applications filed on or after December 18, 2013, without a claim. Incomplete national stage applications are governed by the notification practice set forth in 37 CFR 1.495.
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III. INTERNATIONAL DESIGN APPLICATION DESIGNATING THE UNITED STATES
35 U.S.C. 385 Effect of international design application.
An international design application designating the United States shall have the effect, for all purposes, from its filing date determined in accordance with section 384, of an application for patent filed in the Patent and Trademark Office pursuant to chapter 16.
37 CFR 1.9 Definitions.
(a)(1) A national application as used in this chapter means either a U.S. application for patent which was filed in the Office under 35 U.S.C. 111, an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the HagueAgreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
(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 either a U.S. national application for patent which was filed in the Office under 35 U.S.C. 111(a), an international application filed under the Patent Cooperation Treaty in which the basic national fee under 35 U.S.C. 41(a)(1)(F) has been paid, or an international design application filed under the Hague Agreement in which the Office has received a copy of the international registration pursuant to Hague Agreement Article 10.
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(l) Hague Agreement as used in this chapter means the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs adopted at Geneva, Switzerland, on July 2, 1999, and Hague Agreement Article as used in this chapter means an Article under the Hague Agreement.
(m) Hague Agreement Regulations as used in this chapter means the Common Regulations Under the 1999 Act and the 1960 Act of the Hague Agreement, and Hague Agreement Rule as used in this chapter means one of the Hague Agreement Regulations.
(n) An international design application as used in this chapter means an application for international registration of a design filed under the Hague Agreement. Unless otherwise clear from the wording, reference to "design application" or "application for a design patent" in this chapter includes an international design application that designates the United States.
Title I of the Patent Law Treaties Implementation Act of 2012 (PLTIA), Public Law 112-211, 126 Stat. 1527 (Dec. 18, 2012) implemented the Hague Agreement Concerning International Registration of Industrial Designs. The Hague Agreement is an
international agreement that enables an applicant to file a single international design application which may have the effect of an application for protection for the design(s) in countries and/or intergovernmental organizations that are parties to the Hague Agreement (the “Contracting Parties”) designated in the application. The United States is a Contracting Party to the Hague Agreement, which took effect with respect to the United States on May 13, 2015. The Hague Agreement is administered by the International Bureau of the World Intellectual Property Organization (“the International Bureau”).
See MPEP Chapter 2900 for information regarding international design applications.
201.02 General Terms Used to Describe Applications [R-07.2015]
See 37 CFR 1.9(a) for definitions of the terms “national application,” “provisional application,” and “nonprovisional application;” see 37 CFR 1.9(b) for the definition of “international application;" and see 37 CFR 1.9(n) for the definition of ”international design application." See also MPEP § 201.01.
“Original” application is used in the patent statutes and rules to refer to an application which is not a reissue application. An original application may be a first filing or a continuing application.
A continuing application is a continuation, divisional, or continuation-in-part application filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and 37 CFR 1.78.
A “substitute” application is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. 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. A substitute application 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.
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¶ 2.07 Definition of a Substitute
Applicant refers to this application as a “substitute” of Application No. [1], filed [2]. The term “substitute” is used to designate an application which is in essence the duplicate of an application by the same applicant abandoned before the filing of the later application. A “substitute” does not obtain the benefit of the filing date of the prior application.
201.03 [Reserved]
[Editor Note: Information pertaining to correction of inventorship, name of inventor, and order of names in an application has been moved to MPEP § 602.01(c) et seq.]
201.04 Provisional Application [R-07.2015]
I. PROVISIONAL APPLICATION FILED ON OR AFTER DECEMBER 18, 2013
35 U.S.C. 111 Application.
[Editor Note: Applicable to any patent application filed on or after December 18, 2013. See 35 U.S.C. 111 (pre-PLT) for the law applicable to provisional applications filed under 35 U.S.C. 111(b) before December 18, 2013.]
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(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 Director. Such application shall include—
(A) a specification as prescribed by section 112(a); and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional application.
(3) FEE.—The application shall be accompanied by the fee required by law. The fee may be submitted after the filing date of the application, within such period and under such conditions, including the payment of a surcharge, as may be prescribed by the Director. Upon failure to submit the fee within such prescribed period, the application shall be regarded as abandoned.
(4) FILING DATE.—The filing date of a provisional application shall be the date on which a specification, with or without claims, is received in the United States 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), 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 APPLICATION.—Subject to all the conditions in this subsection and section 119(e), 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 EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119, 365(a), or 386(a) or to the benefit of an earlier filing date in the United States under section 120, 121, 365(c), or 386(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
37 CFR 1.9 Definitions.
(a)
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(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).
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37 CFR 1.53 Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013.]
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(c) Application filing requirements — Provisional application. The filing date of a provisional application is the date on which a specification, with or without claims, is received in the 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
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for conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e), rather than converting the provisional application into a nonprovisional application pursuant to this paragraph. A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119, 365(a), or 386(a) or § 1.55, or to the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) or § 1.78 of any other application. No claim for priority under 35 U.S.C. 119(e) or § 1.78(a) may be made in a design application based on a provisional application. The requirements of §§ 1.821 through 1.825 regarding application
disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
Effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA), title II, amended 35 U.S.C. 111(b) to more closely align the corresponding provisions for nonprovisional applications in 35 U.S.C. 111(a) and provisional applications in 35 U.S.C. 111(b). The corresponding provision in 37 CFR 1.53(c) was revised accordingly.
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 application filed on or after December 18, 2013, is the date on which a specification as prescribed by 35 U.S.C. 112(a), with or without claims, is filed in the United States Patent and Trademark Office. Although the application will be accorded a filing date regardless of whether any drawings are submitted, applicants are advised to file any drawing required by 37 CFR 1.81(a) with the application. 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.
A provisional application must include a cover sheet required by 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 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).
II. PROVISIONALAPPLICATION FILED BEFORE DECEMBER 18, 2013
35 U.S.C. 111 Application (pre-PLT)
[Editor Note: 35 U.S.C. 111(b) as reproduced herein is applicable to any patent application filed before December 18, 2013. See 35 U.S.C. 111 for the law applicable to provisional applications filed under 35 U.S.C. 111(b) on or after December 18, 2013.]
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(b) PROVISIONAL APPLICATION.—
(1) AUTHORIZATION.—A provisional application for patent shall be made or authorized to be made by the
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inventor, except as otherwise provided in this title, in writing to the Director. Such application shall include—
(A) a specification as prescribed by section 112; and
(B) a drawing as prescribed by section 113.
(2) CLAIM.—A claim, as required by subsections (b) through (e) of section 112, shall not be required in a provisional 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 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 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), 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 APPLICATION.—Subject to all the conditions in this subsection and section 119(e), 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 EARLIEST FILING DATE.—A provisional application shall not be entitled to the right of priority of any other application under section 119 or 365(a) or to the benefit of an earlier filing date in the United States under section 120, 121, or 365(c).
(8) APPLICABLE PROVISIONS.—The provisions of this title relating to applications for patent shall apply to provisional applications for patent, except as otherwise provided, and except that provisional applications for patent shall not be subject to sections 131 and 135.
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37 CFR 1.9 Definitions.
(a)
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(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).
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37 CFR 1.53 (pre-PLT) Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 before December 18, 2013.]
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(c) Application filing requirements—Provisional application. The filing date of a provisional application is the date on which a specification as prescribed by 35 U.S.C. 112(a), 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 conversion will not entitle applicant to a refund of the fees that were properly paid in the application filed under paragraph (b) of this section. Such a request for conversion must be accompanied by the processing fee set forth in § 1.17(q) and be filed prior to the earliest of:
(i) Abandonment of the application filed under paragraph (b) of this section;
(ii) Payment of the issue fee on the application filed under paragraph (b) of this section; or
(iii) Expiration of twelve months after the filing date of the application filed under paragraph (b) of this section.
(3) A provisional application filed under paragraph (c) of this section may be converted to a nonprovisional application filed under paragraph (b) of this section and accorded the original filing date of the provisional application. The conversion of a provisional application to a nonprovisional application will not result in either the refund of any fee properly paid in the provisional application or the application of any such fee to the filing fee, or any other fee, for the nonprovisional application. Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested. Thus, applicants should consider avoiding this adverse patent term impact by filing a nonprovisional application claiming the benefit of the provisional
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application under 35 U.S.C. 119(e) (rather than converting the provisional application into a nonprovisional application pursuant to this paragraph). A request to convert a provisional application to a nonprovisional application must be accompanied by the fee set forth in § 1.17(i) and an amendment including at least one claim as prescribed by 35 U.S.C. 112(b), unless the provisional application under paragraph (c) of this section otherwise contains at least one claim as prescribed by 35 U.S.C. 112(b). The nonprovisional application resulting from conversion of a provisional application must also include the filing fee, search fee, and examination fee for a nonprovisional application, the inventor’s oath or declaration, and the surcharge required by § 1.16(f) if either the basic filing fee for a nonprovisional application or the inventor's oath or declaration was not present on the filing date accorded the resulting nonprovisional application ( i.e., the filing date of the original provisional application). A request to convert a provisional application to a nonprovisional application must also be filed prior to the earliest of:
(i) Abandonment of the provisional application filed under paragraph (c) of this section; or
(ii) Expiration of twelve months after the filing date of the provisional application filed under paragraph (c) of this section.
(4) A provisional application is not entitled to the right of priority under 35 U.S.C. 119 or 35 U.S.C. 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(a) 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 application 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 regarding application disclosures containing nucleotide and/or amino acid sequences are not mandatory for provisional applications.
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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 application is the date on which a specification as prescribed by 35 U.S.C. 112(a) and any drawing required by 37 CFR 1.81(a) are filed in the U.S. 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.
A provisional application must also include the cover sheet required by 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 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).
III. PROVISIONALAPPLICATION - IN GENERAL
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 applications. Under the provisions of 35 U.S.C. 119(e), applicants 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 filing that starts the Paris Convention priority year. Foreign 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.
NOTE:
(A) No claim is required in a provisional application.
(B) No oath or declaration is required in a provisional application.
(C) Provisional applications will not be examined for patentability.
(D) A provisional application is not entitled to claim priority to any foreign application or the benefit of any earlier filed national application.
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). The period of pendency of a provisional application is extended 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 35 U.S.C. 119(e)(3) and 37 CFR 1.7(b). For example, if a provisional application was filed on January 15,
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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 benefit of the provisional application must be filed no later than January 18, 2000.
Effective December 18, 2013, a nonprovisional application that was filed more than 12 months after the filing date of the provisional application, but within 14 months after the filing date of the provisional application, may have the benefit of the provisional application restored by filing a grantable petition to restore the benefit under 37 CFR 1.78(b). See MPEP § 211.01(a).
A provisional application is not entitled to claim priority benefits based on any other application under 35 U.S.C. 119, 120, 121, 365, or 386. If applicant attempts to claim the benefit of an earlier U.S. or foreign application 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 in the nonprovisional application prior to the earlier of the abandonment of the nonprovisional application, the payment of the issue fee, or the expiration of 12 months after
the filing date of the nonprovisional application. 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(b). See MPEP § 601.01(c). 35 U.S.C. 111(b)(5) permits a provisional application filed under 37 CFR 1.53(c) to be converted to a nonprovisional application filed under 37 CFR 1.53(b). A request to convert a provisional application to a nonprovisional 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 in the provisional application prior to the earliest of the abandonment of the provisional application or the expiration of twelve months after the filing date of the provisional application. The filing fee, search fee, and examination fee for a nonprovisional application and the surcharge under 37 CFR 1.16(f), if appropriate, are also required. For provisional applications filed before December 18, 2013, if the inventor's oath or declaration was not filed with the provisional application, it must be submitted with the request for conversion. 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 measured from at least the filing date of the provisional application. This adverse patent term impact can be avoided by filing a nonprovisional application claiming the benefit of the provisional application under 35 U.S.C. 119(e), rather than requesting conversion of the provisional application to a nonprovisional application. See 37 CFR 1.53(c)(3).
Design applications may not make a claim for priority of a provisional application under 35 U.S.C. 119(e). See 35 U.S.C. 172 and 37 CFR 1.78(a).
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201.05 Reissue Application [R-11.2013]
A reissue application is an application for a patent to take the place of an unexpired patent that is defective. A detailed treatment of reissue applications can be found in MPEP Chapter 1400.
201.06 Divisional Application [R-07.2015]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
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(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
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(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. 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(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
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A later application for an independent or distinct invention, carved out of a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States and disclosing and claiming only subject matter disclosed
in the earlier or parent application, is known as a divisional 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. A continuation-in-part application should not be designated as a divisional application. The Court of Appeals for the Federal Circuit has concluded that the protection of 35 U.S.C. 121 does not extend to continuation-in-part applications, stating that “the protection afforded by section 121 to applications (or patents issued therefrom) filed as a result of a restriction requirement is limited to divisional applications.” Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc., 518 F.3d 1353, 1362, 86 USPQ2d 1001, 1007-1008 (Fed. Cir. 2008). Thus the disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.
A divisional application is often filed as a result of a restriction requirement made by the examiner. The divisional application may be filed under 37 CFR 1.53(b) (or 37 CFR 1.53(d) if the application is a design application, but not an international design application). The inventorship in the divisional application must include at least one inventor named in the prior-filed application, and the divisional application must claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “divisional” of the provisional application. See 37 CFR 1.78, especially paragraphs (a)-(c), and MPEP § 211 et seq. for requirements and information pertaining to entitlement to the benefit of the filing date of a provisional application.
For applications filed on or after September 16, 2012 it is no longer suggested 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 application in the application data sheet. See MPEP § 601.05.
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Use form paragraph 2.01 to remind applicant of possible divisional status.
¶ 2.01 Possible Status as Divisional
This application, which discloses and claims only subject matter disclosed in prior Application No. [1], filed [2], appears to claim only subject matter directed to an invention that is independent and distinct from that claimed in the prior application, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a divisional application. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
Examiner Note:
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may be a divisional, but a benefit claim has not been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "divisional" of the prior application.
A design application may be considered to be a divisional of a utility application (but not of a provisional application), and is entitled to the filing date thereof if the drawings of the earlier filed utility application show the same article as that in the design application sufficiently to comply with 35 U.S.C. 112(a). However, such a divisional design application may only be filed under the procedure set forth in 37 CFR 1.53(b), and 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 MPEP § 211 et seq.
For notation to be put in the file history by the examiner in the case of a divisional application, see MPEP § 202.
201.06(a) Former 37 CFR 1.60 Divisional Continuation Procedure [R-08.2012]
37 CFR 1.60 was deleted effective December 1, 1997. See 1203 O.G. 63, October 21, 1997. A continuation 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 divisional 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 website at www.uspto.gov/web/offices/pac/mpep/mpep.htm).
201.06(b) Former 37 CFR 1.62 File Wrapper Continuing Procedure [R-08.2012]
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 application 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 continuation-in-part (CIP) application, or for a continuation 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 applications 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
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2003)(available on the USPTO website 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-07.2015]
37 CFR 1.53 Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 on or after December 18, 2013.]
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(b) Application filing requirements— Nonprovisional application. The filing date of an application for patent filed under this section, other than an application for a design patent or a provisional application under paragraph (c) of this section, is the date on which a specification, with or without claims, is received in the Office. The filing date of an application for a design patent filed under this section, except for a continued prosecution application under paragraph (d) of this section, is the date on which the specification as prescribed by 35 U.S.C. 112, including at least one claim, and any required drawings are received in the Office. No new matter may be introduced into an application after its filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c), or 386(c) and § 1.78.
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
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37 CFR 1.53 (pre-PLT) Application number, filing date, and completion of application.
[Editor Note: Applicable to patent applications filed under 35 U.S.C. 111 (pre-PLT) before December 18, 2013.]
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(b) Application filing requirements - Nonprovisional application. The filing date of an application for patent filed under this section, except for a provisional application under paragraph (c) of this section or a continued prosecution application under paragraph (d) of this section, is the date on which a specification as prescribed by 35 U.S.C. 112 containing a description pursuant to § 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 filing date. A continuing application, which may be a continuation, divisional, or continuation-in-part
application, may be filed under the conditions specified in 35 U.S.C. 120 , 121 or 365(c) and § 1.78(c) and (d).
(1) A continuation or divisional application that names as inventors the same or fewer than all of the inventors named in the prior application may be filed under this paragraph or paragraph (d) of this section.
(2) A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) or a continuation or divisional application naming an inventor not named in the prior application must be filed under this paragraph.
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I. IN GENERAL
37 CFR 1.53(b) is the section under which all applications are filed EXCEPT: (A) an application resulting 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); (C) a continued prosecution application (CPA) of a design application under 37 CFR 1.53(d); or (D) a nonprovisional international design application. 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 or a reissue, a continuation, a divisional, a continuation-in-part, or a substitute. (See MPEP § 201.02 for substitute application.) The application 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. An application will be treated as one filed under 37 CFR 1.53(b) unless otherwise designated.
For applications filed on or after December 18, 2013, the filing date of a nonprovisional application filed under 35 U.S.C. 111(a), other than a design patent application, is the date on which a specification, with or without claims, is received in the Office. Effective December 18, 2013, utility and plant patent applications filed under 35 U.S.C. 111(a) are no longer required to include at least one claim or any drawings in order to receive a filing date for the application. See MPEP § 601.01(a), subsection I. The filing date of an application for a design patent is the date on which the Office receives the specification including at least one claim and any required drawings. 35 U.S.C. 171(c). In addition, as
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provided in 35 U.S.C. 111(c), a nonprovisional application filed under 35 U.S.C. 111(a) on or after December 18, 2013, may be filed by a reference to a previously filed application (foreign, international, provisional, or nonprovisional) indicating that the specification and any drawings of the application are replaced by the reference to the previously filed application. See MPEP § 601.01(a), subsection III.
In order to be complete for filing date purposes, all applications filed under 37 CFR 1.53(b) before December 18, 2013, must include a specification as prescribed by 35 U.S.C. 112 containing 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).
For applications filed on or after September 16, 2012, the basic filing fee, search fee, examination fee and application size fee, and the inventor’s oath or declaration in compliance with 37 CFR 1.63 (and 37 CFR 1.64 (for a substitute statement), 37 CFR 1.175 (for a reissue) or 37 CFR 1.162 (for a plant patent)) are also required by 37 CFR 1.51(b) for a complete application. However, the filing of the basic filing fee, search fee, examination fee, application size fee and inventor’s oath or declaration may be filed after the application filing date upon payment of the surcharge set forth in 37 CFR 1.16(f). Additionally, the filing of the inventor’s oath or declaration may be postponed until payment of the issue fee where the application contains an application data sheet under 37 CFR 1.76 identifying each inventor by his or her legal name, and a mailing address where each inventor customarily receives mail, and residence, if the inventor lives at a location which is different from where the inventor customarily receives mail.
For applications filed prior to September 16, 2012, 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 surcharge set forth in 37 CFR 1.16(f). See 37 CFR 1.53(f) and MPEP § 607.
Unless an application is submitted with a statement that the application is a continuation or divisional application, see 37 CFR 1.78(d)(2), the Office will process the application as a new non-continuing application. Applicants are advised to clearly designate any continuation, divisional, 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(d)(2) (i.e., in an application data sheet for an application filed on or after September 16, 2012, or in the first sentence(s) of the specification or in an application data sheet for an application filed prior to September 16, 2012) to avoid the need for a petition to accept an unintentionally delayed claim under 37 CFR 1.78(e) and the petition fee set forth in 37 CFR 1.17(m), and the issuance of a filing receipt that does not indicate that the application is a continuation, divisional, or continuation-in-part. See MPEP § 211 et seq.
II. OATH/DECLARATION
37 CFR 1.63 Oath or Declaration.
[Editor Note: Applicable only to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012.]
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(d)(1) A newly executed oath or declaration under § 1.63, or substitute statement under § 1.64, is not required under §§ 1.51(b)(2) and 1.53(f), or under §§ 1.497 and 1.1021(d), for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) in compliance with § 1.78 of an earlier-filed application, provided that an oath or declaration in compliance with this section, or substitute statement under § 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application.
(2) The inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor's oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor's oath or declaration from the earlier-filed application, unless it is accompanied by a statement signed pursuant to § 1.33(b) stating the name of each inventor in the continuing application.
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(3) Any new joint inventor named in the continuing application must provide an oath or declaration in compliance with this section, except as provided for in § 1.64.
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37 CFR 1.63 (pre-AIA) Oath or Declaration.
[Editor Note: Not applicable to patent applications filed under 35 U.S.C. 111, 363, or 385 on or after September 16, 2012.]
(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 continuation or divisional application contain no matter that would have been new matter in the prior application; and
(iv) A copy of the executed oath or declaration filed in the prior application, showing the signature or an indication thereon that it was signed, is submitted for the continuation or divisional application.
(2) The copy of the executed oath or declaration submitted under this paragraph for a continuation or divisional application must be accompanied by a statement requesting the deletion of the name or names of the person or persons who are not inventors in the continuation or divisional application.
(3) Where the executed oath or declaration of which a copy is submitted 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 application 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 representative(s) who refused to join in the prior application or could not be found or reached has subsequently joined in the prior application or another application of which the continuation or divisional application claims a benefit under 35 U.S.C. 120, 121, or 365(c), a copy of the subsequently executed oath(s) or declaration(s) filed by the inventor or legal representative to join in the application.
(4) Where the power of attorney or 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 divisional application. Otherwise, the Office may not recognize in the continuation or divisional application the change of power of
attorney or correspondence address during the prosecution of the prior application.
(5) A newly executed oath or declaration must be filed in a continuation or divisional application naming an inventor not named in the prior application.
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A copy of an oath or declaration from a prior application may be submitted with a continuation or divisional application, or with a continuation-in-part application filed on or after September 16, 2012, even if the oath or declaration identifies the application number of the prior application. However, if such a copy of the oath or declaration is filed after the filing date of the continuation or divisional application and an application number has been assigned to the continuation or divisional application (see 37 CFR 1.5(a)), the cover letter accompanying the oath or declaration should identify the application number of the continuation or divisional application. The cover letter should also indicate that the oath or declaration submitted is a copy of the oath or declaration from a prior application to avoid the oath or declaration being incorrectly matched with the prior application file. Furthermore, applicant should also label the copy of the oath or declaration with the application number of the continuation or divisional application in the event that the cover letter is separated from the copy of the oath or declaration.
A copy of the oath or declaration from a prior nonprovisional application may be filed in a continuation or divisional application even if the specification for the continuation or divisional application is different from that of the prior application, in that revisions have been made to clarify the text to incorporate amendments made in the prior application, or to make other changes provided the changes do not constitute new matter relative to the prior application. If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
For applications filed on or after September 16, 2012, a continuing application, including a
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continuation-in-part application, may be filed with a copy of an oath or declaration or substitute statement from the prior nonprovisional application, provided that the oath or declaration is in compliance with 37 CFR 1.63 or the substitute statement is in compliance with 37 CFR 1.64. See 37 CFR 1.63(d)(1). It should be noted that a copy of the inventor’s oath or declaration submitted in a continuing application filed on or after September 16, 2012 must comply with requirements of 35 U.S.C. 115 and 37 CFR 1.63 or 1.64 in effect for applications filed on or after September 16, 2012. For example, the inventor’s oath or declaration must include a statement that the inventor is an original inventor of the claimed application and a statement that the application was made or was authorized to be made by the person executing the oath or declaration. Accordingly, a new inventor’s oath or declaration may need to be filed in a continuing application filed on or after September 16, 2012, where the prior application was filed before September 16, 2012, in order to meet the requirements of 35 U.S.C. 115 and 37 CFR 1.63 (or 1.64) in effect for applications filed on or after September 16, 2012. See MPEP § 602.05(a) for additional details regarding oaths or declarations in continuing applications filed on or after September 16, 2012.
For applications filed prior to September 16, 2012, 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 application. See MPEP § 602.05(b) for additional details regarding oaths or declarations in continuing applications filed before September 16, 2012.
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 specification and drawings and a newly executed oath or declaration provided the new specification
and drawings do not contain any subject matter that would have been new matter in the prior application. For continuing applications filed on or after September 16, 2012, claiming the benefit of an application filed before September 16, 2012, a copy of the inventor’s oath or declaration filed in the earlier-filed application can only be submitted in the continuing application if the oath or declaration complies with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. For applications filed on or after September 16, 2012, to claim the benefit of a prior application under 35 U.S.C. 120, 121, 365(c), or 386(c) applicant must include a reference to the prior application in compliance with 37 CFR 1.78(d)(2) in an application data sheet. For applications filed prior to September 16, 2012, the reference to the prior application must be in the first sentence(s) of the specification or in an application data sheet. See MPEP § 211 et seq.
The new specification 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) to determine that it contains no new matter. For applications filed before September 16, 2012, 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. In addition, for applications filed prior to September 16, 2012, 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 pre-AIA 37 CFR 1.67(b). For applications filed on
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or after September 16, 2012, pursuant to 37 CFR 1.67(b), no supplemental oath or declaration will be required.
If a continuation or divisional application as filed contains subject matter that would have been new matter in the prior application, the applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part. Form paragraph 2.10.01 may be used to require the applicant to correct the relationship of the applications. See MPEP § 211 et seq.
Any utility or plant patent application, including any continuing application, that will be published pursuant to 35 U.S.C. 122(b) should be filed under 37 CFR 1.53(b) with a specification that includes any claim(s) and drawings that the applicant would like to have published. This is important because 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 patent application publication and the Office will generally publish the specification (including the claims) and drawings as filed. 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 recommended. For applications filed on or after September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. If a preliminary amendment is filed in a format that cannot be included in the publication, the Office of Patent Application Processing (OPAP) will issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes. See 37 CFR 1.115(a)(1) and 1.215. The only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125. 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 drawings 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 contextual purposes, and a new set of claims. In order to have a patent application publication of a continuation or divisional application contain only a desired set of claims, rather than the set of claims in the prior application, it is strongly recommended that the continuation or divisional application be filed under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.
See subsection II., above and MPEP § 602.05 et seq. for requirements pertaining to filing a copy of an oath or declaration from a prior application in a continuing application.
IV. INCORPORATION BY REFERENCE
An applicant may incorporate by reference the prior application by including, in the continuing 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(c) and MPEP § 608.01(p). The inclusion of this incorporation by reference statement will permit an applicant to amend the continuing application to include subject matter from the prior application(s), without the need for a petition provided the continuing application is entitled to a filing date notwithstanding the incorporation by reference. For applications filed prior to September 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 version 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, 121, 365(c), or 386(c) and 37 CFR 1.78(d) for benefit of a prior-filed nonprovisional application, international application designating the United States, or international design
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application designating the United States that was present on the filing date of the continuing application is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR 1.57(b). Note that pursuant to 37 CFR 1.57(b)(4), any amendment to an international design application pursuant to 37 CFR 1.57(b)(1) is effective only as to the United States and will only be acted upon after the international design application becomes a nonprovisional application.
Effective December 18, 2013, 37 CFR 1.57(b) was amended to contain the provisions of former 37 CFR 1.57(a). The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants 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 September 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 inadvertently omitted material pursuant to 37 CFR 1.57(b). See 37 CFR 1.57(c) and MPEP § 608.01(p) for discussion regarding explicit incorporation by reference. See MPEP § 217 for more detailed information pertaining to incorporation by reference pursuant to 37 CFR 1.57(b).
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 incorporation 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 application, 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 reference 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(a). 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(b) 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 § 217.
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 1.53(e) 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 completely contained within a prior-filed application to which benefit is claimed, applicant may file a petition under 37 CFR 1.53(e) along with the fee set forth in 37 CFR 1.17(f) and an amendment with the inadvertently omitted material requesting that the amendment 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(b)(3) and MPEP § 217 .
In an application containing an explicit incorporation 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 granting of a filing date may be made under 37 CFR 1.182. A petition under 37 CFR 1.182 and the required petition fee, including an amendment submitting the necessary 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 continuing application. An amendment submitting the omitted material and relying upon the incorporation by reference will not be entered in the continuing application unless a decision granting
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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 continuing application as originally filed on or after September 21, 2004 does not include an explicit incorporation by reference statement and is entitled to a filing date despite the inadvertent 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(b). Such an amendment must be made within any time period set by the Office. See 37 CFR 1.57(b)(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(h)), the omitted specification page(s) and/or drawing figure(s) may be added by amendment provided the omitted item(s) contains only subject matter in common with a document that has been properly incorporated by reference. If the Office identified the omitted item(s) in a “Notice of Omitted Item(s),” applicant must respond to the “Notice of Omitted Item(s)” by filing an appropriate amendment. See MPEP § 601.01(d) and § 601.01(g).
V. INVENTORSHIP IN A CONTINUING APPLICATION
A. Applications Filed On or After September 16, 2012
For applications filed on or after September 16, 2012, the filing of a continuing application by all or by fewer than all of the inventors named in a prior application without a newly executed oath or declaration is permitted provided that an oath or declaration in compliance with 37 CFR 1.63, or a substitute statement under 37 CFR 1.64, was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such oath, declaration, or substitute statement showing the signature or an indication thereon that it was executed, is submitted in the continuing application. Note, in order to submit a copy of the inventor’s oath or declaration from the earlier-filed application into a continuation or divisional application filed on or after September 16, 2012, the
oath or declaration from the earlier-filed application must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012. Specifically, the inventor’s oath or declaration must state that the inventor (1) is an original inventor of the claimed invention; and (2) authorized the filing of the patent application for the claimed invention. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both.
37 CFR 1.63(d)(2) provides that the inventorship of a continuing application filed under 35 U.S.C. 111(a) is the inventor or joint inventors specified in the application data sheet filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application. If an application data sheet is not filed before or concurrently with the copy of the inventor’s oath or declaration from the earlier-filed application, the inventorship is the inventorship set forth in the copy of the inventor’s oath or declaration from the earlier-filed application, unless the copy of the inventor’s oath or declaration is accompanied by a statement signed pursuant to 37 CFR 1.33(b) stating the name of each inventor in the continuing application. 37 CFR 1.63(d)(3) provides that any new joint inventor named in the continuing application must provide an oath or declaration in compliance with 37 CFR 1.63, except as provided for in 37 CFR 1.64.
37 CFR 1.63(f) provides that with respect to an application naming only one inventor, any reference to the inventor's oath or declaration in this chapter includes a substitute statement executed under 37 CFR 1.64. With respect to an application naming more than one inventor, any reference to the inventor's oath or declaration in this chapter means the oaths, declarations, or substitute statements that have been collectively executed by or with respect to all of the joint inventors, unless otherwise clear from the context.
B. Applications Filed Prior to September 16, 2012
For applications filed prior to September 16, 2012, Applicant has the option of filing: (A) a newly executed oath or declaration signed by the inventors
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for the continuation or divisional application; or (B) a copy of the oath or declaration 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 pre-AIA 37 CFR 1.63(d) (in effect on September 15, 2012). 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 declaration filed in a continuation or divisional application pursuant to 37 CFR 1.53(b) and pre-AIA 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 pre-AIA 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 under 37 CFR 1.53(b). The newly signed oath or declaration must be signed by all the inventors.
VI. SUBSTITUTE STATEMENT AND RULE 47 ISSUES
A. Substitute Statement
Under 37 CFR 1.63(d)(1) a newly executed substitute statement under 37 CFR 1.64 is not required under 37 CFR 1.51(b)(2) and 37 CFR 1.53(f) or under 37 CFR 1.497 and 1.1021(d) for an inventor in a continuing application that claims the benefit under 35 U.S.C. 120, 121, 365(c), or 386(c)
in compliance with 37 CFR 1.78 of an earlier-filed application, provided a substitute statement under 37 CFR 1.64 was executed by or with respect to such inventor and was filed in the earlier-filed application, and a copy of such substitute statement showing the signature or an indication thereon that it was executed is submitted in the continuing application.
B. Pre-AIA 37 CFR 1.47 Issues
For applications filed prior to September 16, 2012, pre-AIA 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 that the copy of the executed oath or declaration must be accompanied by a copy of any decision granting a petition to accord 37 CFR 1.47 status to such application, unless all nonsigning inventor(s) or legal representative (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). 37 CFR 1.63(d)(3)(ii) also requires that where one or more, but not all, nonsigning inventor(s) or legal representative(s) (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) a copy of any oath or declaration filed by the inventor or legal representative who subsequently joined in such application must also accompany the copy of the executed oath or declaration.
Continuation or divisional applications filed under 37 CFR 1.53(b) prior to September 16, 2012, which contain a copy of an oath or declaration that is not signed by one of the inventors and a copy of the decision according 37 CFR 1.47 status in the prior application, should be forwarded by the Office of Patent Application Processing (OPAP) 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 application, but will not repeat the notice to the nonsigning inventor nor the announcement in the Official Gazette . See 37 CFR 1.47(c).
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It is important to note that if the filing date of the continuing application is on or after September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012, even though the continuing application may claim the benefit of an application filed before September 16, 2012. Specifically, the inventor’s oath or declaration in the continuing application filed on or after September 16, 2012, must state that the inventor (1) is an original inventor of the claimed invention; and (2) authorized the filing of the patent application for the claimed invention. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both.
VII. CHANGE OF ATTORNEY/CORRESPONDENCE ADDRESS
For applications filed on or after September 16, 2012, 37 CFR 1.32(d) provides that a power of attorney from a prior national application for which benefit is claimed under 35 U.S.C. 120, 121, or 365(c) in a continuing application may have effect in the continuing application if a copy of the power of attorney from the prior application is filed in the continuing application unless:
(1) The power of attorney was granted by the inventor; and
(2) The continuing application names an inventor who was not named as an inventor in the prior application.
Filing a copy of the power of attorney in the continuing application in all situations (even where a change in power of attorney did not occur in the prior application) will make the record clear with respect to who has power of attorney. The Office recommends that the power of attorney should be from the assignee where one exists, but for applications filed on or after September 16, 2012, the power of attorney may only be signed by the applicant (see 37 CFR 1.42) or patent owner (for reissue applications).
With respect to the correspondence address for applications filed on or after September 16, 2012, 37 CFR 1.33(f) provides that where application papers from a prior application are used in a continuing application and the correspondence address was changed during the prosecution of the prior application, an application data sheet or separate paper identifying the correspondence address to be used for the continuing application must be submitted. Otherwise, the Office may not recognize the change of correspondence address effected during the prosecution of the prior application.
For applications filed prior to September 16, 2012, pre-AIA 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 divisional application. Otherwise, the Office may not recognize 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 OR MICRO ENTITY STATUS
If small entity status has been established in a parent application and is still proper and desired in a continuation, continuation-in-part, or divisional application filed under 37 CFR 1.53(b), a new assertion as to the continued entitlement to small entity status under 37 CFR 1.27 is required. See MPEP § 509.03.
The refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under 37 CFR 1.53(d) (design applications only)), requires a new certification of entitlement to micro entity status in the continuing application. See 37 CFR 1.29(e) and MPEP § 509.04.
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
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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 declaration filed in the prior nonprovisional application.
Use form paragraph 2.03 for instructions to applicant 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 prosecution of the prior application do not automatically become a part of this application. Where it is desired to rely on an earlier-filed affidavit or declaration, the applicant should make the remarks of record in this application and include a copy of the original affidavit 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 automatically 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 continuing application filed under 37 CFR 1.53(b), the petition for an extension of time must be filed as a separate paper directed to the prior nonprovisional application. Under 37 CFR 1.136(a)(3), an authorization 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 submission. 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 to, 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 certificate of mailing under 37 CFR 1.8 (if mailed by first class mail) or under
37 CFR 1.10 (if mailed by Priority Mail Express®), if the benefits of those rules are desired.
XI. ABANDONMENT OF THE PRIOR NONPROVISIONAL APPLICATION
Under 37 CFR 1.53(b) practice, the prior nonprovisional application is not automatically 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 representative capacity under 37 CFR 1.34 may also expressly abandon a prior nonprovisional application as of the filing date granted to a continuing application 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 following the filing of a continuing application under 37 CFR 1.53(b), a petition to withdraw the prior nonprovisional 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 Patent Trial and Appeal Board (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.
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XII. EXAMINATION
The practice relating to making first action rejections 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. The Office may require a substitute specification for preliminary amendments. See MPEP § 714.01(e). Applications 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 divisional 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 applicant to delete the benefit claim or redesignate the application as a continuation-in-part. See subsection III., above and MPEP § 211. See MPEP § 608.04(b) when new matter is contained in a preliminary amendment. If the filing date of the continuing application is on or after September 16, 2012, the inventor’s oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012, even though the continuing application may claim the benefit of an application filed before September 16, 2012. Specifically, the inventor’s oath or declaration in the continuing application filed on or after September 16, 2012, must state that the inventor (1) is an original inventor of the claimed invention; and (2) authorized the filing of the patent application for the claimed invention. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both.
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 divisional application filed prior to September 21, 2004 under 37 CFR 1.53(b) using a copy of the oath or declaration filed in the prior application under pre-AIA 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 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 applications 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 “Incorporation 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 omitted items, the application should be returned to OPAP for mailing of a “Notice of Omitted Item(s).” For applications filed on or after September 21, 2004, see 37 CFR 1.57(b) and MPEP § 217 .
201.06(d) 37 CFR 1.53(d) Continued Prosecution Application (CPA) Practice [R-07.2015]
37 CFR 1.53 Application number, filing date, and completion of application.
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(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, but not an international design application, that is complete as defined by § 1.51(b), except for the inventor’s oath or declaration if the application is filed on or after September
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16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in § 1.53(f)(3)(i); and
(iii) The application under this paragraph is filed before the earliest of:
(A) Payment of the issue fee on the prior application, unless a petition under § 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior application;
(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and the inventor's oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3) The filing fee, 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, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.
(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would
have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
37 CFR 1.53 (pre-AIA) Application number, filing date, and completion of application.
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(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 application, 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 application.
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(2) The filing date of a continued prosecution application is the date on which a request on a separate paper for an application under this paragraph is filed. An application filed under this paragraph:
(i) Must identify the prior application;
(ii) Discloses and claims only subject matter disclosed in the prior application;
(iii) Names as inventors the same inventors named in the prior application on the date the application under this paragraph was filed, except as provided in paragraph (d)(4) of this section;
(iv) Includes the request for an application under this paragraph, will utilize the file jacket and contents of the prior application, including the specification, drawings and oath or declaration from the prior application, to constitute the new application, and will be assigned the application number of the prior application for identification purposes; and
(v) Is a request to expressly abandon the prior application as of the filing date of the request for an application under this paragraph.
(3) The filing fee, 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, provided that the request for an application under this paragraph when filed is accompanied by a statement requesting deletion of the name or names of the person or persons who are not inventors of the invention being claimed in the new application. No person may be named as an inventor in an application filed under this paragraph who was not named as an inventor in the prior application on the date the application under this paragraph was filed, except by way of correction of inventorship under § 1.48.
(5) Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any new specification filed with the request for an application under this paragraph will not be considered part of the original application papers, but will be treated as a substitute specification in accordance with § 1.125.
(6) The filing of a continued prosecution application under this paragraph will be construed to include a waiver of confidentiality by the applicant under 35 U.S.C. 122 to the extent that any member of the public, who is entitled under the provisions of § 1.14 to access to, copies of, or information concerning either the prior application or any continuing application filed under the provisions of this paragraph, may be given similar access to, copies of, or similar information concerning the other application or applications in the file jacket.
(7) A request for an application under this paragraph is the specific reference required by 35 U.S.C. 120 to every application assigned the application number identified in such request. No amendment in an application under this paragraph may delete this specific reference to any prior application.
(8) In addition to identifying the application number of the prior application, applicant should furnish in the request for an application under this paragraph the following information relating to the prior application to the best of his or her ability:
(i) Title of invention;
(ii) Name of applicant(s); and
(iii) Correspondence address.
(9) See § 1.103(b) for requesting a limited suspension of action in an application filed under this paragraph.
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I. CPA PRACTICE HAS BEEN ELIMINATED AS TO UTILITY AND PLANT APPLICATIONS
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 continue to be processed and examined under the procedures 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 applicant shows that there are extenuating circumstances that warrant the burdensome process of such conversion.
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
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(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 continued 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 continue to run. The Office will send the applicant a Notice of Improper Request for Continued Examination (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 prosecution 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 petition must be accompanied by a reply to the non-final Office action.
Applicants cannot, as a matter of right, obtain continued 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 invention
distinct from and independent of the invention previously claimed will be withdrawn from consideration.Applicants should be notified by using form paragraph 8.04 or 8.26.
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 applications filed before June 8, 1995. The Office will notify the applicant of the improper CPA by mailing a 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 1.137 to revive the prior application to establish 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, but not an international design application, that is complete as defined by 37 CFR 1.51(b), except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012, and the prior nonprovisional application contains an application data sheet meeting the conditions specified in 37 CFR 1.53(f)(3)(i) (i.e., an application data sheet indicating the name, residence, and mailing address of each inventor). A continuation or divisional application filed under 37 CFR 1.53(d) is called a “Continued Prosecution Application” 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
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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 filing 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 examiner. 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 continuation or divisional application must be filed under 37 CFR 1.53(b). If applicant wants the USPTO to disregard 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 petition under 37 CFR 1.182. A request to expressly abandon an application is not effective until the abandonment 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 application. 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 petition under 37 CFR 1.182 and the application file are before the deciding official for a decision on the petition, the petition will be denied. It is noted, however, that if the applicant intended to file a second application (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 applications under 35 U.S.C. 120 during the pendency of the CPA.
Since no new matter may be introduced in a CPA, the procedure set forth in 37 CFR 1.53(d) is not available 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 declaration is required.
Under the CPA procedure, the continuation or divisional application will utilize the file wrapper and contents of the prior nonprovisional application, including the specification, drawings and oath or declaration 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 accordance 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
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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 specification, 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 matter for support will be rejected under 35 U.S.C. 112(a). See MPEP § 2163.06. In the event that a substitute specification or preliminary amendment 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 separate 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/preliminary amendment were filed. Of course, a request for a CPA is not improper simply because the request is accompanied by a substitute specification or preliminary 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 substitute 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) (except for the inventor’s oath or declaration if the prior CPA contained an application data sheet indicating the name, residence, and mailing address of each inventor) and is a design application. There is no other limit to the number 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 (if any) will be considered to be the oath or declaration of the CPA. However, for continuing applications (including CPAs) filed on or after September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012.
The original disclosure of a CPA is the same as the original disclosure of the parent non-continued prosecution application and amendments entered in the parent 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 amendment 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 application 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 application 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 designated as a CPA filing under 37 CFR 1.53(d), the application papers will be treated as a request for continued examination (RCE) under 37 CFR 1.114. See subsection I., above.
B. Conditions for Filing a CPA
A continuation or divisional application may be filed under 37 CFR 1.53(d), if the prior nonprovisional application is a design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b). The term “prior
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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 appropriate filing fee (including the basic filing fee, search fee, and examination fee) and a signed oath or declaration under 37 CFR 1.63(d). If the CPA is filed on or after September 16, 2012, the inventor’s oath or declaration is not required to have been filed in the prior application if the prior application contains an application data sheet indicating the name, residence, and mailing address of each inventor. The inventor’s oath or declaration must be submitted no later than payment of the issue fee.
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 proceedings 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 running 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, but not an international design application, (B) the correct application number of the prior nonprovisional application is identified in the request, (C) the request is properly signed, (D) the prior nonprovisional 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), except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012, and the prior application contains an application data sheet indicating the
name, residence, and mailing address of each inventor, 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 corrected 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 Identified
A request for a CPA must identify the prior nonprovisional application (37 CFR 1.53(d)(2)(i)) by application number (series code and serial number) or by serial number and filing date. Where a paper requesting a CPA is filed which does not properly identify the prior nonprovisional application number, the TC should attempt to identify the proper application number by reference to other identifying information provided 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 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 number. 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 Trademark 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 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
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Mailing or Transmission procedure under 37 CFR
1.8 or the Priority Mail Express® 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 Priority
Mail Express® with the United States Postal Service, if the CPA request is resubmitted under 37 CFR 1.10. Where the CPA request is resubmitted 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 Priority Mail Express® 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 applicant(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 individuals who may properly sign a CPA request, see 37 CFR 1.33(b). A CPA request filed on or after September 16, 2012, must be signed by:
(1) A patent practitioner of record appointed in compliance with 37 CFR 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or
(3) The applicant (37 CFR 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
A CPA request filed prior to September 16, 2012, must be signed by
(1) A patent practitioner of record appointed in compliance with 37 CFR 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34;
(3) An assignee as provided for under 37 CFR 3.71(b); or
(4) All of the applicants (37 CFR 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 37 CFR 3.71.
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 application, 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 properly 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 correspondence 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 filed prior to September 16, 2012 may also be signed by the assignee or assignees of the entire interest. However, the request must be accompanied by papers establishing the assignee's ownership under pre-AIA 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 for a CPA 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
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1.53(d)(2), (e.g., the filing of a request for a CPA within an amendment after final for the prior application is an improper request for a CPA).
A paper requesting a CPA may be filed via EFS-Web. CPA requests are filed as follow-on documents, and may only be filed by registered e-filers. See MPEP § 502.05 for additional information regarding filing correspondence via EFS-Web. The date of receipt accorded to a CPA request submitted via EFS-Web is the date the complete request is received by the Office. See 37 CFR 1.6(a)(4).
A request for a CPA may also be sent to the U.S. Patent and Trademark Office by mail (see MPEP § 501), facsimile transmission (see MPEP § 502.01) or hand delivery to the USPTO Customer Service Window in 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 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. See 37 CFR 1.6(a)(3).
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 CPA request papers; (B) date-stamp the “Receipt for Facsimile Transmitted CPA”; (C) verify that the identifying 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 identifying 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. Likewise, applicant-created “receipts” for acknowledgment 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 transmitted 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 evidence that came into being after the complete transmission 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 Office mails a final
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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 Office on January 5, 1998 (Monday), accompanied by a certificate of mailing under 37 CFR 1.8 dated January 2, 1998 (Friday), then the prior application was abandoned on January 3, 1998, and the CPA is improper because the CPA was not filed before the abandonment of the prior application. As a further example, if (A) the 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 Pacific Time on January 2, 1998 (Friday), but the Office does not receive the complete transmission until 12:01 AM Eastern Time 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), 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 carries 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 application the Office should charge the necessary filing fee of the CPA to the deposit account.
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 filing 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 Office and given a period of time in which to file the missing fee(s) and to pay the surcharge 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. For CPAs filed on or after September 16, 2012, if the prior application does not contain the inventor’s oath or declaration, the surcharge under 37 CFR 1.16(f) is required (unless the inventor’s oath or declaration is being filed with the CPA). The time period usually set is 2 months from the date of notification. This time period is subject to the provisions 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, examination 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.
H. Small Entity or Micro Entity Status
Small entity status established in the parent application does not automatically carry over to a CPA. Status 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 refiling of an application as a continued prosecution application under 37 CFR 1.53(d) requires a new assertion of continued entitlement to small entity status. Similarly, pursuant to 37 CFR 1.29(e), the refiling of an application under 37 CFR 1.53 as a continuation, divisional, or continuation-in-part application (including a continued prosecution application under § 1.53(d))
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requires a new certification of entitlement to micro entity status for the continuing application. See also MPEP § 509.04.
Because small entity status and micro entity status do 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 or micro entity amount, or otherwise includes an assertion of entitlement to small entity or micro entity status, the regular undiscounted entity filing fee should be charged.
I. 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 “separate 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 application would be the extension fee necessary to establish continuity between the prior application and the CPA on the filing date of the CPA.
If an extension of time directed to the prior application is filed as a separate paper, it must be
accompanied 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 Priority Mail Express®), if the benefits of those rules are desired.
J. 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 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 paragraph 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 Application (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 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 of the parent application.
A “conditional” request for a CPA will not be permitted. Any “conditional” request for a CPA submitted 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 abandonment 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.
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§ 201.06(d)TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
¶ 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 “conditional” 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 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 “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 ineffective or notify the applicant in the next Office action that the CPA request is ineffective by using form paragraph 2.31.
¶ 2.31 CPA Status NotAcceptable - Request Not on Separate Paper (for Design Applications)
Receipt is acknowledged of the request for a Continued Prosecution 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.
K. Inventorship
The inventive entity set forth in the prior nonprovisional 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 persons who are not inventors of the invention being claimed in the CPA. 37 CFR 1.53(d)(4).
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. For applications filed on or after September 16, 2012, the statement must be signed by:
(1) A patent practitioner of record appointed in compliance with 37 CFR 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34; or
(3) The applicant (37 CFR 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
For applications filed prior to September 16, 2012, the statement must be signed by:
(1) A patent practitioner of record appointed in compliance with 37 CFR 1.32(b);
(2) A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34;
(3) An assignee as provided for under 37 CFR 3.71(b); or
(4) All of the applicants (37 CFR 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 37 CFR 3.71.
The examiner should acknowledge receipt of a statement filed with a CPA requesting the deletion of the name or names of the person or persons who are not inventors of the invention being claimed in
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MANUAL OF PATENT EXAMINING PROCEDURE§ 201.06(d)
the CPA in the first Office action in the CPA by using form paragraph 2.32.
¶ 2.32 Request To Delete a Named Inventor in CPA (for Design Applications)
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 application. 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 application file should be sent to OPAP for revision of its records to reflect the change of inventorship. 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 “corrected” 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 declaration 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 paragraph 2.33 that the inventive entity of the prior application 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. See MPEP § 602.01(c)(1) for requests under 37 CFR 1.48 filed on or after September 16, 2012. For requests filed before September 16, 2012, see MPEP § 602.01(c)(3). 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. For continuing applications filed on or after September 16, 2012, the oath or declaration must comply with the requirements of 35 U.S.C. 115 as revised effective September 16, 2012 even though the application may claim the benefit of an application filed before September 16, 2012. Specifically, the inventor’s oath or declaration in the continuing application filed on or after September 16, 2012, must state that the inventor (1) is an original inventor of the claimed invention; and (2) authorized the filing of the patent application for the claimed invention. The inventor’s oath or declaration also must contain an acknowledgement that any willful false statement made in such declaration is punishable under section 1001 of U.S. Code title 18 by fine or imprisonment of not more than 5 years, or both. For the oath or declaration requirements in applications filed prior to September 16, 2012 see MPEP § 602.01(b).
If a request under 37 CFR 1.48 is not filed, it should be noted that the filing in a CPA of a transmittal letter or a new oath or declaration containing an inventor not named in the prior nonprovisional application may result in the claims in the CPA being rejected under pre-AIA 35 U.S.C. 102(f).
¶ 2.33 New Inventor Identified in CPA (for Design Applications)
It is noted that [1] identified as a named inventor in the Continued 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 inventorship 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.
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§ 201.06(d)TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
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(d)(4) 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 recitation 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 further 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(d) to identify 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 application must make a reference to the first (earliest) application 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. 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 § 211 et seq. In addition, every intermediate 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 constitute 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 prosecution application.
Where the non-continued prosecution application originally assigned such application number itself claims the benefit of a prior application or applications under 120, 121, or 386(c), 37 CFR 1.78(d)(2) continues to require that the non-continued prosecution application originally assigned such application number contain a reference to any such prior application(s). 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, divisional, or continuation-in-part), 37 CFR 1.78(d)(2) requires a reference to the CPA by application number in an application data sheet or, for applications filed before September 16, 2012, in the first sentence of the specification. 37 CFR 1.78(d)(4) provides that “[t]he identification of an application by application number under this section is the identification of every application assigned that application number necessary for a specific reference required by 35 U.S.C. 120 to every such 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(d)(4) to every CPA in the chain as well as the non-continued prosecution application originally assigned such application 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(d)(4), a claim to every application assigned the application number of such CPA. In addition, applicants will not be permitted to delete such a benefit 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
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MANUAL OF PATENT EXAMINING PROCEDURE§ 201.06(d)
provide 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 reference in the application data sheet has not been entered by using form paragraph 2.34.
¶ 2.34 Reference in CPA to Prior Application (by Amendment to the Specification; for Design Applications)
The amendment filed [1] requesting that the specification be amended to refer to the present Continued Prosecution Application (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 application assigned the application number identified in such request. Thus, there is no need to amend the first sentence(s) of the specification to refer back to the prior application and any such amendment 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 nonprovisional application.
Priority claims under 35 U.S.C. 119(a)-(d) made in a parent application will automatically carry over to a CPA.
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 parent application not be carried over to the CPA. See MPEP § 1490, “Withdrawing a Recorded Terminal Disclaimer,” subheading entitled “A. Before Issuance of Patent.”
C. Prior Election
An election in reply to a restriction requirement 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 designated as a divisionan( � (B) there was an express election by the applicant in reply to a restriction requirement in the prior application; (C) the CPA presents claim(s) drawn only to invention(s) claimed in the prior application; and (D) the CPA does not contain 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 application.
D. Information Disclosure Statements and Preliminary Amendments
All information disclosure statements filed in the prior application that comply with the content requirements 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 examiner, regardless of whatever else has occurred in the examination process up to that point in time. The submission of an information disclosure statement after the first Office action is mailed could delay prosecution. 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 statements, see MPEP § 609.
Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the
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§ 201.06(d)TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
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, applicant 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 prosecution of the parent nonprovisional application, automatically 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 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 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).
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-continued 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-continued prosecution application in the chain of CPAs.
V. FORMS
Form PTO/SB/29, “For Design Applications Only: Continued Prosecution Application (CPA) Request Transmittal,” may be used by applicant for filing a CPA under 37 CFR 1.53(d). The form is available o n t h e O f fi c e w e b s i t e a t www.uspto.gov/patent/patents-forms.
201.07 ContinuationApplication [R-07.2015]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
*****
(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
*****
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. 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(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
*****
A continuation application is an application for the invention(s) disclosed in a prior- filed copending nonprovisional application, international application designating the United States, or international design application designating the United States. The disclosure presented in the continuation must not
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include any subject matter which would constitute new matter if submitted as an amendment to the parent application.
The continuation application may be filed under 37 CFR 1.53(b) (or 1.53(d) if the application is a design application, but not an international design application). The inventorship in the continuation application must include at least one inventor named in the prior-filed application, and the continuation application must also claim the benefit of the prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c). See 37 CFR 1.78, especially paragraphs (d) and (e), and MPEP § 211 et seq. for additional requirements and more information regarding entitlement to the benefit of the filing date of a prior-filed copending application.
An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a “divisional” of the provisional application. See 37 CFR 1.78, especially paragraphs (a)-(c), and MPEP § 211 et seq. for requirements and information pertaining to entitlement to the benefit of the filing date of a provisional application.
At any time before the patenting, abandonment, or termination of proceedings on an earlier application, an applicant may have recourse to filing a continuation application under 37 CFR 1.53(b) in order to introduce into the application a new set of claims and to establish a right to further examination by the Office. A continued prosecution application (CPA) under 37 CFR 1.53(d) (available only for design applications, but not international 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 application is a nonprovisional design application, but not an international design application, that is complete as defined by 37 CFR 1.51(b) (except for the inventor’s oath or declaration if the CPA is filed on or after September 16, 2012), and the prior nonprovisional application contains an application data sheet indicating the name, residence, and mailing address of each inventor. 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 disclosed in prior Application No. [1], filed [2], and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
Examiner Note:
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may be a continuation, but a benefit claim has not been properly established.
3. An application claiming the benefit of a provisional application under 35 U.S.C. 119(e) should not be called a "continuation" of the prior application.
201.08 Continuation-in-Part Application [R-07.2015]
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
*****
(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
*****
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. 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(b)(5)). The reference also must
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§ 201.08TYPES, CROSS-NOTING, AND STATUS OF APPLICATION
identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
*****
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 disclosed in the said earlier nonprovisional application. A 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, 121, 365(c), or 386(c). For more information on claiming the benefit of a prior nonprovisional application, see MPEP § 211 et seq. 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 because an application that claims benefit of a provisional application is a nonprovisional application of a provisional application, not a continuation, division, or continuation-in-part of the provisional application.
The mere filing of a continuation-in-part application does not itself create a presumption that the applicant acquiesces in any rejections which may be outstanding in the copending national nonprovisional application or applications upon which the continuation-in-part application relies for benefit.
A continuation-in-part application that has a sole inventor may also derive from an earlier application that has joint inventors and discloses only a portion of the subject matter of the later application, subject to the conditions set forth in 35 U.S.C. 120 and 37 CFR 1.78. Subject to the same conditions, a continuation-in-part application that has joint inventors may derive from an earlier application that has a sole inventor.
The Office does not need to make a determination 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 35 U.S.C. 112(a) is met unless the filing date of the earlier nonprovisional application is relied upon in a proceeding before the Office. Accordingly, an alleged continuation-in-part application should be permitted to claim the benefit of the filing 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 continuation-in-part application were filed with the same inventor or at least one common joint 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 reference to the earlier filed application.” (For applications filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For applications filed prior to September 16, 2012, the specific reference 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 § 211 et seq. for more information on claiming the benefit of a prior nonprovisional application.
For notation to be put in the file history by the examiner in the case of a continuation-in-part application see MPEP § 202. 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 Application No. [1], filed [2], and adds additional disclosure not presented in the prior application. Because this application names the inventor or at least one joint inventor named in the prior application, it may constitute a continuation-in-part of the prior application. Should applicant desire to claim the benefit of the
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filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq .
Examiner Note:
1. In brackets 1 and 2, insert the application number (series code and serial number) and filing date of the prior application, respectively.
2. This form paragraph should only be used if it appears that the application may qualify as a continuation-in-part, but no benefit claim has been properly established.
3. 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 prior application.
202 Cross-Noting [R-07.2015]
I. NOTATION IN FILE HISTORY REGARDING PRIOR U.S. APPLICATIONS, INCLUDING PROVISIONAL APPLICATIONS
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, 365(c), or 386(c) in continuation-in-part, continuation, divisional, and reissue applications. Therefore, the identifying 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 an application data sheet for applications filed on or after September 16, 2012, or provided in either the first sentence(s) of the specification or in an application data sheet for applications filed prior to September 16, 2012. See 37 CFR 1.78(a)(3) and (d)(2) and MPEP § 211 et seq. For example, the reference to a prior nonprovisional application must include the appropriate relationship (e.g., continuation, divisional, or continuation-in-part) between the nonprovisional applications.
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 prosecution application (but not the filing date of the CPA) as well as all prior applications from which benefit was claimed in the most recent noncontinued prosecution application.
Where prior application data, including provisional 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 provisional 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 initial the PALM bib-data sheet in the provided space. Should there be an 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, if appropriate. Upon entry of the data, a new PALM bib-data sheet should be printed and scanned into the file. If the error was an applicant error, the examiner should require correction via a corrected or supplemental application data sheet or an amendment, as appropriate. See MPEP § 601.05 et seq. and § 211.02. A petition for an unintentionally delayed benefit claim may also be required. See MPEP § 211.03.
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 information pertaining to the assignment of applications claiming a benefit under 35 U.S.C. 119(e) or 120 to the filing date of an earlier filed application. In the situation in which there has been no reference 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.
II. NOTATION IN FILE HISTORY REGARDING FOREIGN PRIORITY APPLICATION
If a foreign application listed on the oath or declaration (for applications filed prior to September 16, 2012) or application data sheet is not listed on the PALM bib-data sheet, the examiner should
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provide 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 correction 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 § 213.01.
Where foreign applications are listed on the 37 CFR 1.63 oath or declaration (for applications filed prior to September 16, 2012) or application data sheet, the examiner should check that such foreign applications are properly listed on the PALM bib-data sheet. A PALM bib-data sheet should include the application number, country (or intellectual property authority), day, month, and year of each foreign application that the U.S. application is claiming the priority of. The examiner should check this information for accuracy. 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 appropriate. A petition for an unintentionally delayed claim for priority may also be required. See MPEP § 214 et seq. If the oath or declaration or the application data sheet is accurate, but there is an error on the PALM bib-data sheet, 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 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 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.
203 Status of Applications [R-11.2013]
203.01 New [R-11.2013]
A “new” application is a nonprovisional application that has not yet received an action by the examiner. An amendment filed prior to the first Office Action does not alter the status of a “new” application. Note that a request for continued examination (RCE)(see 37 CFR 1.114) is not a type of new application filing. See MPEP § 706.07(h).
203.02 Rejected [R-08.2012]
A nonprovisional application which, during its prosecution in the examining group and before allowance, 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-08.2012]
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 examiner’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 application.
203.04 Allowed or in Issue [R-07.2015]
An “allowed” nonprovisional application or an application “in issue” is one which has been examined and determined to meet all statutory requirements, and in which a notice of allowance has been sent to the applicant. Its status as an “allowed” application continues from the date of the notice of allowance until it issues as a patent, unless
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it is withdrawn from issue (37 CFR 1.313), or becomes abandoned for failure to pay the issue fee and any required publication fee (37 CFR 1.314 and 1.316).
203.05 Abandoned [R-11.2013]
An abandoned application is, inter alia, one which is removed from the Office docket of pending applications:
(A) through formal abandonment by the applicant or by the attorney or agent of record;
(B) through failure of applicant to take appropriate action at some stage in the prosecution of a nonprovisional 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 provisional application (see MPEP § 711.03(c) and 35 U.S.C. 111(b)(5)).
203.06 Incomplete [R-08.2012]
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)).
203.07 [Reserved]
203.08 Status Inquiries [R-11.2013]
I. IN GENERAL
Status information relating to patent applications is available through the Patent Application Information Retrieval (PAIR) system. There is both a public and private interface to PAIR. In public PAIR, information is available relating to issued patents, published patent applications, and applications to which a patented or published application claims domestic priority. In private PAIR, an applicant (or his or her registered patent attorney or registered patent agent) can securely track the progress of his or her application(s) through the USPTO. Private
PAIR makes available information relating to unpublished patent applications, but the applicant must associate a Customer Number with the application to obtain access. See MPEP § 403 for Customer Number practice.
Applicants and other persons seeking status information regarding an application should check the PAIR system on the Office website at www.uspto.gov/learning-and-resources/support-centers/ patent-electronic-business-center. 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 FIU will inform the requester of the patent number, issue date and classification. If the application has not been published, but is pending or abandoned then the FIU determines whether the requester is entitled to such information. See MPEP § 102 for additional information.
Inquiries as to the status of applications, by persons entitled to the information, should be answered promptly. Simple letters of inquiry regarding the status of applications will be transmitted from the Office of Patent Application Processing to the TCs for direct action. Such letters will be stamped “Status Letters.”
If the correspondent is not entitled to the information, in view of 37 CFR 1.14, he or she should be so informed.
For Congressional and other official inquiries, see MPEP § 203.08(a).
II. NEW APPLICATION
A Notice of Allowability, Form PTOL-37, is routinely mailed in every application determined to be allowable. Thus, the mailing of a form PTOL-37 in addition to a formal Notice of Allowance and Fee(s) Due (PTOL-85) in all allowed applications would seem to obviate the need for status inquiries even as a precautionary measure where the applicant
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may believe his or her new application 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 (PTOL-85) is not received within three months from receipt of form PTOL-37.
Current examining procedures aim to minimize 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 applications or action.
III. 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 application. 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 I, above. A stamped postcard receipt or Electronic Acknowledgement 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 or Electronic Acknowledgement Receipt 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.
203.08(a) Congressional and Other Official Inquiries [R-11.2013]
Correspondence and inquiries from the White House, Members of Congress, embassies, and heads of Executive departments and agencies normally are
cleared by the USPTO’s Office of Policy and External Affairs and/or the Office of Governmental Affairs.
Inquiries referred to in this section such as correspondence from embassies, the Office of the U.S. Trade Representative, and the Department of State should immediately be transmitted to the Administrator of the Office of Policy and External Affairs, and a staff member of that office should be notified by phone that such correspondence has been received at 571-272-9300. Inquiries referred to in this section such as correspondence from Congress or the White House should immediately be transmitted to the Director of the Office of Governmental Affairs, and a staff member of that office should be notified by phone that such correspondence has been received at 571-272-7300.
This procedure is used so that there will be uniformity in the handling of contacts from the indicated sources, and also so that compliance with directives of the Department of Commerce is attained.
204-209 [Reserved]
210 Priority to, or the Benefit of, the Filing Date of a Prior-Filed Application [R-07.2015]
Under certain conditions and on fulfilling certain requirements, a later-filed application for patent filed in the United States may claim the benefit of, or priority to, a prior application filed in the United States (see 35 U.S.C. 119(e), 120, 121, 365(c), and 386(c); see also 37 CFR 1.78) or in a foreign country (see 35 U.S.C. 119(a)-(d) and (f), 365(a) and (b), and 386(a) and (b); see also 37 CFR 1.55).
As a result of recent changes to the applicable laws and rules, the procedural requirements and time frames for claiming priority to, or the benefit of, an earlier-filed application may vary based on the filing date of the later-filed nonprovisional application.
Note that effective December 18, 2013, the Patent Law Treaties Implementation Act of 2012 (PLTIA) amends the patent laws to implement the provisions
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of the Patent Law Treaty (PLT) in title II; corresponding revisions to title 37 of the Code of Federal Regulations also became effective on December 18, 2013. Notable changes to the law and rules include the restoration of the right of priority to a foreign application or the benefit of a provisional application in a subsequent application filed within two months of the expiration of the twelve-month period (six-month period for design applications) for filing such a subsequent application. In addition, title I of the PLTIA became effective May 13, 2015, along with corresponding revisions to the rules. Notable changes include the ability to file international design applications and to claim priority to, and the benefit of, international design applications in nonprovisional applications.
I. REQUIREMENTS OF 37 CFR 1.78 (CLAIMING THE BENEFIT OF AN EARLIER NATIONAL APPLICATION)
The following is an overview of the substantive changes to 37 CFR 1.78 resulting from implementation of Public Law 112-29, 125 Stat. 284 (Leahy Smith America Invents Act (AIA)) and implementation of Public Law 112-211, 126 Stat. 1527 (titles I and II of the Patent Law Treaties Implementation Act (PLTIA)). See MPEP § 211 et seq. for the detailed requirements for claiming (and entitlement to), the benefit of an earlier-filed application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c).
Whether an application was filed before, on, or after March 16, 2013, statutory provisions require that for a later-filed application to be entitled to the benefit of an earlier-filed national application, the later-filed application must contain a specific reference to the earlier-filed application. 35 U.S.C. 119(e), 120.
The inventor’s oath or declaration provisions of Public Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective September 16, 2012. In implementing these provisions the Office revised 37 CFR 1.78 to require that a benefit claim under 35 U.S.C. 119(e), 120, 121, or 365(c) must be in the application data sheet (37 CFR 1.76). Thus for all applications filed on or after September 16, 2012, the specific reference to the prior application must
be in the application data sheet; for applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet or in the first sentence(s) of the specification.
In implementing the Patent Law Treaties Implementation Act (PLTIA), the Office reorganized and revised 37 CFR 1.78 effective May 13, 2015. All versions of 37 CFR 1.78 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.78. The following is a summary of the provisions of 37 CFR 1.78.
(A) 37 CFR 1.78(a) contains provisions relating to claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application;
(B) 37 CFR 1.78(b) contains provisions relating to restoration of the right to claim the benefit of a provisional application under 35 U.S.C. 119(e) when the delay in filing the subsequent application was unintentional.
(C) 37 CFR 1.78(c) contains provisions relating to delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application;
(D) 37 CFR 1.78(d) contains provisions relating to claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application;
(E) 37 CFR 1.78(e) contains provisions relating to delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application;
(F) 37 CFR 1.78(f) contains provisions relating to applications containing patentably indistinct claims;
(G) 37 CFR 1.78(g) contains provisions relating to applications or patents under reexamination naming different inventors and containing patentably indistinct claims;
(H) 37 CFR 1.78(h) provides for situations where the specific reference to a prior filed application may be presented in the first sentence(s) of the specification in applications filed before September 16, 2012;
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(I) 37 CFR 1.78(i) provides for situations where a petition under 37 CFR 1.78(b), (c), or (e) required in an international application can be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application;
(J) 37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon; and
(K) 37 CFR 1.78(k) provides that the time periods set forth in 37 CFR 1.78 are not extendable, but are subject to 35 U.S.C. 21(b) (and 37 CFR 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
37 CFR 1.78(a)(6) and (d)(6) set forth provisions that are only applicable to nonprovisional applications filed on or after March 16, 2013 that claim the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013. Specifically, the paragraphs require that if the later filed application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within the time periods set forth in the rule. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in 37 CFR 1.56(c) that the later filed nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013. An applicant is also not required to provide such a statement if the application claims the benefit of an earlier application in which a statement that the earlier application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed. See MPEP § 211.01 for additional information.
II. REQUIREMENTS OF 37 CFR 1.55 (CLAIMING PRIORITY TO AN EARLIER FOREIGN APPLICATION)
The following is an overview of the substantive changes to 37 CFR 1.55 resulting from implementation of Public Law 112-29, 125 Stat. 284 (Leahy Smith America Invents Act (AIA)) and implementation of Public Law 112-211, 126 Stat. 1527 (titles I and title II of the Patent Law Treaties Implementation Act (PLTIA)). See MPEP § 213 et seq. for the detailed requirements for claiming (and entitlement to), priority to of an earlier filed foreign application under 35 U.S.C. 119(a)-(d) or (f), 35 U.S.C. 365(a) or (b), or 386(a) or (b).
Whether an application was filed before, on, or after March 16, 2013, 35 U.S.C. 119(b)(1) requires a claim for priority identifying the foreign application. Prior to September 16, 2012, 37 CFR 1.55 and 1.63 required the claim for priority to be identified on an application data sheet or in the oath or declaration.
The inventor’s oath or declaration provisions of Public Law 112-29, sec. 4, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective September 16, 2012. In implementing these provisions the Office revised 37 CFR 1.55 to require that a claim for foreign priority must be presented in the application data sheet (37 CFR 1.76). Thus for all applications filed on or after September 16, 2012, a claim for priority under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a) or (b) to the prior application must be presented in the application data sheet; for applications filed prior to September 16, 2012, the claim for priority to the foreign application must be identified in an application data sheet or in the oath or declaration.
In implementing the Patent Law Treaties Implementation Act (PLTIA), the Office reorganized and revised 37 CFR 1.55 effective May 13, 2015. All versions of 37 CFR 1.55 in effect prior to May 13, 2015, have been consolidated in the current version of 37 CFR 1.55. The following is a summary of the provisions of 37 CFR 1.55.
(A) 37 CFR 1.55(a) provides generally that a nonprovisional application may claim priority to one or more prior foreign applications under the
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conditions specified in 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b);
(B) 37 CFR 1.55(b) contains provisions relating to the time for filing a nonprovisional application claiming priority to a foreign application under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b);
(C) 37 CFR 1.55(c) contains provisions relating to the restoration of the right of priority under 35 U.S.C. 119(a) through (d) and (f), 172, 365(a) and (b), and 386(a) and (b);
(D) 37 CFR 1.55(d) contains provisions relating to the time for filing a priority claim in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371;
(E) 37 CFR 1.55(e) contains provisions relating to delayed priority claims in an application filed under 35 U.S.C. 111(a) or in a national stage application under 35 U.S.C. 371;
(F) 37 CFR 1.55(f) contains provisions relating to the time for filing the certified copy of a foreign application in an application filed under 35 U.S.C. 111(a) and in an application entering the national stage under 35 U.S.C. 371;
(G) 37 CFR 1.55(g) contains provisions relating to the filing of a priority claim, certified copy of the foreign application, and translation of a non-English language foreign application in any application;
(H) 37 CFR 1.55(h) contains provisions relating to when the requirement for a certified copy will be considered satisfied based on a certified copy filed in another U.S. patent or application;
(I) 37 CFR 1.55(i) contains provisions relating to the priority document exchange agreement;
(J) 37 CFR 1.55(j) contains provisions relating to the filing of an interim copy of a foreign application;
(K) 37 CFR 1.55(k) contains provisions relating to requirements for certain applications filed on or after March 16, 2013;
(L) 37 CFR 1.55(l) contains provisions relating to inventor's certificates; and
(M) 37 CFR 1.55(m) contains provisions relating to the time for the filing of a priority claim and certified copy of the foreign application in an
international design application designating the United States;
(N) 37 CFR 1.55(n) provides for situations where a foreign priority claim may be presented in the oath or declaration in applications filed before September 16, 2012;
(O) 37 CFR 1.55(o) provides that right of priority under 35 U.S.C. 386(a) or (b) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon; and
(P) 37 CFR 1.55(p) provides that the time periods set forth in 37 CFR 1.55 are not extendable, but are subject to 35 U.S.C. 21(b) (and 37 CFR 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
III. REQUIREMENT FOR A STATEMENT UNDER 37 CFR 1.55 OR 1.78 FOR FIRST INVENTOR TO FILE TRANSITION APPLICATIONS
The first inventor to file provisions of Public Law 112-29, sec. 3, 125 Stat. 284 (the Leahy-Smith America Invents Act) and the rules related thereto became effective March 16, 2013. These provisions apply to any application for patent, and to any patent issuing thereon, that contains or contained at any time—
(A) a claim to a claimed invention that has an effective filing date as defined under section 100(i) of title 35, United States Code, that is on or after March 16, 2013; or
(B) a specific reference under section 120, 121, or 365(c) of title 35, United States Code, to any patent or application that contains or contained at any time such a claim. See 35 U.S.C. 100 (note)
As a result, the effective filing date of each claimed invention determines whether an application is subject to examination under 35 U.S.C. 102 and 103 as effective on March 16, 2013 or under 35 U.S.C. 102 and 103 in effect on March 15, 2013 (i.e., pre-AIA 35 U.S.C. 102 or 103).
Title I of the PLTIA amended the definition of effective filing date in 35 U.S.C. 100(i) to provide
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for priority claims under 35 U.S.C. 386(a) or (b) and benefit claims under 35 U.S.C. 386(c).
The effective filing date for a claimed invention in a patent or application (except in an application for reissue or reissued patent) is set forth in 35 U.S.C. 100(i)(1) as:
(A) if subparagraph (B) does not apply, the actual filing date of the patent or the application for the patent containing a claim to the invention; or
(B) the filing date of the earliest application for which the patent or application is entitled, as to such invention, to a right of priority under section 119, 365(a), 365(b), 386(a), or 386(b) or to the benefit of an earlier filing date under section 120, 121, 365(c), or 386(c).
For an application for reissue or a reissued patent, the effective filing date for a claimed invention, as set forth in 35 U.S.C. 100(i)(2), is determined by deeming the claim to the invention to have been contained in the patent for which reissue was sought.
In implementing the first inventor to file provision of the AIA, the Office added a statement requirement to 37 CFR 1.55 and 1.78 for transition applications. See 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6). Note that the statement requirement for transition applications does not apply to nonprovisional international design applications.
A. Transition Applications
Transition applications are nonprovisional applications that:
(A) are filed on or after March 16, 2013; and
(B) claim foreign priority to, or domestic benefit of, an application filed before March 16, 2013.
Transition applications are either pre-AIA first-to-invent applications or AIA first-inventor-to-file applications depending on the effective filing date of the claimed invention(s).
The statement provisions of 37 CFR 1.55 and 1.78 require that if the later-filed transition application contains, or contained at any time, a claim to a claimed invention that has an effective filing date
on or after March 16, 2013, the applicant must provide a statement to that effect (unless the later-filed application is a nonprovisional international design application). The statement must be provided within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in 37 CFR 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. Nonprovisional international design applications are excluded from the transition provisions of 37 CFR 1.55(k) and 1.78(a)(6) and (d)(6).
For a nonprovisional application filed on or after March 16, 2013 that claims priority to, or the benefit of, the filing date of an earlier filed application, the applicant would not be required to provide any statement if:
(A) The nonprovisional application discloses only subject matter also disclosed in a priority or domestic benefit application filed prior to March 16, 2013; or
(B) the nonprovisional application claims only priority to, or the benefit of, the filing date of an application filed on or after March 16, 2013.
An applicant is not required to provide such a statement under 37 CFR 1.78 in a continuing transition application if the application claims the benefit of a nonprovisional application in which such a statement under 37 CFR 1.55 or 1.78 has been filed. See 37 CFR 1.78(d)(6)(i).
An applicant is not required to provide such a statement under 37 CFR 1.55 or 1.78 if the applicant reasonably believes on the basis of information already known to the individuals designated in 37 CFR 1.56(c) that the later-filed transition application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
Applicant is not required to identify how many or which claims in the transition application have an effective filing date on or after March 16, 2013, or
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identify the subject matter in the transition application not also disclosed in the priority or benefit application. Applicant is only required to state that there is a claim in the transition application that has an effective filing date on or after March 16, 2013. The Office may issue a requirement for information under 37 CFR 1.105 if an applicant takes conflicting positions on whether an application contains, or contained at any time, a claim to a claimed invention having an effective filing date on or after March 16, 2013. For example, the Office may require the applicant to identify where there is written description support under 35 U.S.C. 112(a) in the pre-AIA application for each claim to a claimed invention if an applicant provides the statement under 37 CFR 1.78(a)(6), but later argues that the application should have been examined as a pre-AIA application because the application does not actually contain a claim to a claimed invention having an effective filing date on or after March 16, 2013.
B. Application Data Sheet and Filing Receipt
The application data sheet (ADS, Form PTO/AIA/14) and the transmittal letter for 35 U.S.C. 371 national stage filing (Form PTO- 1390) are available for an applicant to make the 37 CFR 1.55/1.78 statement by marking a check box on the forms. The presence or absence of the 37 CFR 1.55/1.78 statement is reflected on the filing receipt. If applicant receives a filing receipt with incorrect information regarding the 37 CFR 1.55/1.78 statement, applicant may request a corrected filing receipt. Therefore, applicants should carefully and promptly review their filing receipts in order to ensure that their applications will be examined under the correct statutory framework.
211 Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) [R-07.2015]
35 U.S.C. 120 Benefit of earlier filing date in the United States.
An application for patent for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in an application previously filed in the United States, or as provided by section 363 or 385 which names an inventor or joint inventor 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 termination of proceedings on the first application or on an application 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 section unless an amendment containing the specific reference to the earlier filed 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 section. The Director may establish procedures, including the requirement for payment of the fee specified in section 41(a)(7), 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 for an invention disclosed in the manner provided by section 112(a) (other than the requirement to disclose the best mode) in a provisional application filed under section 111(b), 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), if the application for patent filed under section 111(a) or section 363 is filed not later than 12 months after the date on which the provisional application was filed and if it contains or is amended to contain a specific reference to the provisional application. The Director may prescribe regulations, including the requirement for payment of the fee specified in section 41(a)(7), pursuant to which the 12-month period set forth in this subsection may be extended by an additional 2 months if the delay in filing the application under section 111(a) or section 363 within the 12-month period was unintentional. 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 earlier 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 subsection. The Director may establish procedures, including the payment of the fee specified in section 41(a)(7), to accept an unintentionally delayed submission of an amendment under this subsection.
(2) A provisional application filed under section 111(b) 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) 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 succeeding secular or business day. For an application for patent filed under section 363 in a Receiving Office other than the Patent and Trademark Office, the 12-month and additional
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2-month period set forth in this subsection shall be extended as provided under the treaty and Regulations as defined in section 351.
37 CFR 1.78 Claiming benefit of earlier filing date and cross-references to other applications.
(a) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. An applicant in a nonprovisional application, other than for a design patent, or an international application designating the United States may claim the benefit of one or more prior-filed provisional applications under the conditions set forth in 35 U.S.C. 119(e) and this section.
(1) The nonprovisional application or international application designating the United States must be:
(i) Filed not later than twelve months after the date on which the provisional application was filed, subject to paragraph (b) of this section (a subsequent application); or
(ii) Entitled to claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a subsequent application that was filed within the period set forth in paragraph (a)(1)(i) of this section.
(2) Each prior-filed provisional application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. 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 have been paid for such provisional application within the time period set forth in § 1.53(g).
(3) Any nonprovisional application or international application designating the United States that claims 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). 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(b)(5)).
(4) The reference required by paragraph (a)(3) of this section must be submitted during the pendency 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 entering the national stage from an international application under 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) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior-filed provisional application. Except as provided in paragraph (c) of this section, failure to timely submit the reference is considered a waiver of any benefit under 35 U.S.C. 119(e) of the prior-filed provisional application. The time periods in this paragraph do not apply if the later-filed application is:
(i) An application filed under 35 U.S.C. 111(a) before November 29, 2000; or
(ii) An international application filed under 35 U.S.C. 363 before November 29, 2000.
(5) 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 statement that the translation is accurate were not previously filed in the prior-filed provisional application, the 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 statement were filed in the provisional application, or an application data sheet (§ 1.76(b)(5)) eliminating the reference under paragraph (a)(3) of this section to the prior-filed provisional application, or the nonprovisional application will be abandoned. The translation and statement may be filed in the provisional application, even if the provisional application has become abandoned.
(6) If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the nonprovisional application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed provisional application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the nonprovisional application. An applicant is not required to provide such a statement if the applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the nonprovisional application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(b) Delayed filing of the subsequent nonprovisional application or international application designating the United States. If the subsequent nonprovisional application or international application designating the United States has a filing date which is after the expiration of the twelve-month period set forth in paragraph (a)(1)(i) of this section but within two months from the expiration of the period set forth in paragraph (a)(1)(i) of this section, the benefit of the provisional application may be restored under PCT Rule 26 bis.3 for an international application, or upon petition pursuant to this paragraph, if the delay in filing the subsequent nonprovisional application or international application designating the United States within the period set forth in paragraph (a)(1)(i) of this section was unintentional.
(1) A petition to restore the benefit of a provisional application under this paragraph filed on or after May 13, 2015,
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must be filed in the subsequent application, and any petition to restore the benefit of a provisional application under this paragraph must include:
(i) The reference required by 35 U.S.C. 119(e) to the prior-filed provisional application in an application data sheet (§ 1.76(b)(5)) identifying it by provisional application number (consisting of series code and serial number), unless previously submitted;
(ii) The petition fee as set forth in § 1.17(m); and
(iii) A statement that the delay in filing the subsequent nonprovisional application or international application designating the United States within the twelve-month period set forth in paragraph (a)(1)(i) of this section was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(2) The restoration of the right of priority under PCT Rule 26 bis.3 to a provisional application does not affect the requirement to include the reference required by paragraph (a)(3) of this section to the provisional application in a national stage application under 35 U.S.C. 371 within the time period provided by paragraph (a)(4) of this section to avoid the benefit claim being considered waived.
(c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application. If the reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section is presented in an application after the time period provided by paragraph (a)(4) of this section, the claim under 35 U.S.C. 119(e) for the benefit of a prior-filed provisional application may be accepted 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:
(1) The reference required by 35 U.S.C. 119(e) and paragraph (a)(3) of this section to the prior-filed provisional application, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit claim was due under paragraph (a)(4) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(d) Claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application, international application, or international design application. An applicant in a nonprovisional application (including a nonprovisional application resulting from an international application or international design application), an international application designating the United States, or an international design application designating the United States may claim the benefit of one or more prior-filed copending nonprovisional applications, international applications designating the United States, or international design applications designating the United States under the conditions set forth in 35 U.S.C. 120, 121, 365(c), or 386(c) and this section.
(1) Each prior-filed application must name the inventor or a joint inventor named in the later-filed application as the inventor or a joint inventor. In addition, each prior-filed application must either be:
(i) An international application entitled to a filing date in accordance with PCT Article 11 and designating the United States;
(ii) An international design application entitled to a filing date in accordance with § 1.1023 and designating the United States; or
(iii) A nonprovisional application under 35 U.S.C. 111(a) that is entitled to a filing date as set forth in § 1.53(b) or (d) for which the basic filing fee set forth in § 1.16 has been paid within the pendency of the application.
(2) Except for a continued prosecution application filed under § 1.53(d), any nonprovisional application, international application designating the United States, or international design application designating the United States that claims the benefit of one or more prior-filed nonprovisional applications, international applications designating the United States, or international design applications designating the United States must contain or be amended to contain a reference to each such prior-filed application, identifying it by application number (consisting of the series code and serial number), international application number and international filing date, or international registration number and filing date under § 1.1023. 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(b)(5)). The reference also must identify the relationship of the applications, namely, whether the later-filed application is a continuation, divisional, or continuation-in-part of the prior-filed nonprovisional application, international application, or international design application.
(3)
(i) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section must be submitted during the pendency of the later-filed application.
(ii) 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 application is a nonprovisional application entering the national stage from an international application under 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) (§ 1.491(a)), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the 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
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(C) An international application filed under 35 U.S.C. 363 before November 29, 2000.
(iii) Except as provided in paragraph (e) of this section, failure to timely submit the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is considered a waiver of any benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the prior-filed application.
(4) The request for a continued prosecution application 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 number necessary for a specific reference required by 35 U.S.C. 120 to every such application assigned that application number.
(5) Cross-references to other related applications may be made when appropriate (see § 1.14), but cross-references to applications for which a benefit is not claimed under title 35, United States Code, must not be included in an application data sheet (§ 1.76(b)(5)).
(6) If a nonprovisional application filed on or after March 16, 2013, other than a nonprovisional international design application, claims the benefit of the filing date of a nonprovisional application or an international application designating the United States filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date as defined in § 1.109 that is on or after March 16, 2013, the applicant must provide a statement to that effect within the later of four months from the actual filing date of the later-filed application, four months from the date of entry into the national stage as set forth in § 1.491 in an international application, sixteen months from the filing date of the prior-filed application, or the date that a first claim to a claimed invention that has an effective filing date on or after March 16, 2013, is presented in the later-filed application. An applicant is not required to provide such a statement if either:
(i) The application claims the benefit of a nonprovisional application in which a statement under § 1.55(k), paragraph (a)(6) of this section, or this paragraph that the application contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013 has been filed; or
(ii) The applicant reasonably believes on the basis of information already known to the individuals designated in § 1.56(c) that the later filed application does not, and did not at any time, contain a claim to a claimed invention that has an effective filing date on or after March 16, 2013.
(7) Where benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) to an international application or an international design application which designates but did not originate in the United States, the Office may require a certified copy of such application together with an English translation thereof if filed in another language.
(e) Delayed claims under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed nonprovisional application,
international application, or international design application. If the reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section is presented after the time period provided by paragraph (d)(3) of this section, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed copending nonprovisional application, international application designating the United States, or international design application designating the United States may be accepted if the reference required by paragraph (d)(2) of this section was unintentionally delayed. A petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be accompanied by:
(1) The reference required by 35 U.S.C. 120 and paragraph (d)(2) of this section to the prior-filed application, unless previously submitted;
(2) The petition fee as set forth in § 1.17(m); and
(3) A statement that the entire delay between the date the benefit claim was due under paragraph (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional.
(f) Applications containing patentably indistinct claims. Where two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application.
(g) Applications or patents under reexamination naming different inventors and containing patentably indistinct claims. If an application or a patent under reexamination and at least one other application naming different inventors are owned by the same person and contain patentably indistinct claims, and there is no statement of record indicating that the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the Office may require the applicant or assignee to state whether the claimed inventions were commonly owned or subject to an obligation of assignment to the same person on such date, and if not, indicate which named inventor is the prior inventor, as applicable. Even if the claimed inventions were commonly owned, or subject to an obligation of assignment to the same person on the effective filing date (as defined in § 1.109), or on the date of the invention, as applicable, of the later claimed invention, the patentably indistinct claims may be rejected under the doctrine of double patenting in view of such commonly owned or assigned applications or patents under reexamination.
(h) Applications filed before September 16, 2012. Notwithstanding the requirement in paragraphs (a)(3) and (d)(2) of this section that any specific reference to a prior-filed application be presented in an application data sheet (§ 1.76), this requirement in paragraph (a)(3) and (d)(2) of this section will be satisfied by the presentation of such specific reference in the first sentence(s) of the specification following the title in a nonprovisional application filed under 35 U.S.C. 111(a) before September 16, 2012, or resulting from an international application filed under 35 U.S.C. 363 before September 16, 2012. The provisions of this paragraph do not apply to any
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specific reference submitted for a petition under paragraph (b) of this section to restore the benefit of a provisional application.
(i) Petitions required in international applications. If a petition under paragraph (b), (c), or (e) of this section is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then such petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application.
(j) Benefit under 35 U.S.C. 386(c). Benefit under 35 U.S.C. 386(c) with respect to an international design application is applicable only to nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon.
(k) Time periods in this section. The time periods set forth in this section are not extendable, but are subject to 35 U.S.C. 21(b) (and § 1.7(a)), PCT Rule 80.5, and Hague Agreement Rule 4(4).
There are several procedural requirements for a later-filed application to claim the benefit of the filing date of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(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). These requirements are briefly summarized below, followed by a cross-reference to the MPEP section where the requirement is discussed in greater detail.
(A) The prior-filed application must be entitled to a filing date and meet additional requirements as discussed in MPEP § 211.01.
(B) The later-filed application must name the inventor or at least one joint inventor named in the prior-filed application for a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) (see MPEP § 211.01).
(C) For a benefit claim under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c), the later-filed application must contain a reference to the prior-filed application (see MPEP § 211.02).
(D) The reference to the prior-filed application must be submitted within the time periods set forth in 37 CFR 1.78. See MPEP § 211.03. However, the Office will accept an unintentionally delayed benefit claim in certain circumstances. See MPEP § 211.04.
(E) In order to be entitled to the benefit of the prior-filed application, the earlier application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C.
112(a) except for the best mode requirement. See MPEP § 211.05.
(F) If a nonprovisional application, other than a nonprovisional international design application, filed on or after March 16, 2013, claims the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.78(a)(6) and (d)(6) and MPEP § 210, subsection III. If the claims in the later-filed application are not entitled to the benefit of an earlier filing date, the examiner should:
(1) 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
(2) Conduct a prior art search based on the actual filing date of the application instead of the earlier filing date. The examiner may use an intervening reference in a rejection until applicant corrects the benefit claim or shows that the conditions for entitlement to the benefit of the prior application have been met.
211.01 Requirements Related to the Prior-Filed Application [R-07.2015]
I. 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 application must be entitled to a filing date as set forth in 37 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(d)(1)(iii). If the prior-filed application is an international application designating the United States, the prior-filed application must be entitled to a filing date in accordance with PCT Article 11. See 37 CFR 1.78(d)(1)(i). If the prior-filed application is an international design application designating the United States, the prior-filed application must be
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entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).
If the prior-filed application is a provisional application, the provisional 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). See 37 CFR 1.78(a)(2).
Form paragraph 2.40 may be used to notify applicant 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 120, 121, 365(c), or 386(c) or under 35 U.S.C. 119(e). If the prior-filed application is an international application designating the United States, it must be entitled to a filing date in accordance with PCT Article 11; if the prior-filed application is an international design application designating the United States, it must be entitled to a filing date in accordance with 37 CFR 1.1023; and if the prior-filed application is a nonprovisional application under 35 U.S.C. 111(a), the prior-filed application must be entitled to a filing 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(d)(1). If the prior-filed application is a provisional application, 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)(2).
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 benefit claim to the prior-filed application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification as appropriate.
Examiner Note:
1. Use this form paragraph to notify applicant 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. 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”.
II. SAME INVENTOR OR A COMMON JOINT INVENTOR
The statute requires that applications claiming benefit of the earlier filing date under 35 U.S.C. 119(e) or 120 name the inventor or at least one joint inventor named in the previously filed application or provisional application. Note that to be entitled to the benefit of any prior-filed application(s), in addition to naming the inventor or at least one common joint inventor, the invention claimed in the later-filed application must be supported in the manner provided by the 35 U.S.C. 112(a), except for the best mode requirement. See MPEP § 211.05.
III. TRANSITION APPLICATION STATEMENT
If a nonprovisional application filed on or after March 16, 2013, claims the benefit of the filing date of a provisional or nonprovisional application filed prior to March 16, 2013, and also contains, or contained at any time, a claim to a claimed invention that has an effective filing date on or after March 16, 2013, the applicant must provide a statement to that effect within a specified time period. See 37 CFR 1.78(a)(6) and (d)(6) and MPEP § 210, subsection III. Nonprovisional international design applications are excluded from the transition provisions of 37 CFR 1.78(a)(6) and (d)(6).
IV. ADDITIONAL REQUIREMENTS
See MPEP § 211.01(a) for additional information and requirements specific to claiming the benefit of a provisional application.
See MPEP § 211.01(b) for additional information and requirements specific to claiming the benefit of an earlier-filed nonprovisional application.
211.01(a) Claiming the Benefit of a Provisional Application [R-07.2015]
I. IN GENERAL
When a later-filed application is claiming the benefit 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, unless
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the benefit of the provisional application has been restored. See 37 CFR 1.78(a)(1) and (b) and subsection II, below. 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 nonprovisional 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 and § 505.
In addition, each prior-filed provisional application must have the same inventor or at least one joint inventor in common with the later-filed application and must be entitled to a filing date as set forth in 37 CFR 1.53(c), and the basic filing fee set forth in 37 CFR 1.16(d) must have been paid for such provisional application within the time period set forth in 37 CFR 1.53(g). See 37 CFR 1.78(a)(2) and MPEP § 211.01.
If benefit is being claimed to a provisional application 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 the translation and statement were not filed in the provisional application, 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 application confirming that the translation and statement were filed in the provisional application. See 37 CFR 1.78(a)(5). In the alternative, applicant may delete the benefit claim to the provisional application from the Application Data Sheet (ADS) or, for applications filed before September 16, 2012, from the ADS or the first sentence(s) of the specification, as appropriate. See MPEP § 601.05(a) or (b), as appropriate, for additional details on the requirements for a corrected or supplemental ADS. 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 applicant 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. The [4] required by 37 CFR 1.78 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 translation and statement were filed in the provisional application. If 1) and 2) are not filed (or if the benefit claim is not withdrawn) prior to the expiration of the time period set in this Office action, the present application will be abandoned. See 37 CFR 1.78.
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 statement that the translation is accurate-- or --statement that the translation is accurate--, where appropriate.
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 (in which the basic filing fee was timely filed) unless the benefit of the provisional application has been restored (see 37 CFR 1.78(b) and subsection II., below); and both the later-filed application and the intermediate application must claim the benefit of the provisional application under 35 U.S.C. 119(e). Design applications may not claim the benefit of a provisional application under 35 U.S.C. 119(e). See 35 U.S.C. 172.
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II. RESTORING THE BENEFIT OF A PROVISIONAL APPLICATION
Effective December 18, 2013, title II of the Patent Law Treaties Implementation Act (PLTIA) provides for restoration of the right to claim benefit of a provisional application filed after the expiration of the twelve-month period in 35 U.S.C. 119(e). If a nonprovisional application or an international application designating the United States has a filing date which is after the expiration of the twelve-month period but within two months from the expiration of the period, the benefit of the provisional application may be restored under PCT Rule 26bis.3 for an international application, or upon petition under 37 CFR 1.78(b), if the delay in filing the nonprovisional application or the international application was unintentional. Thus, an application may now validly claim the benefit of a provisional application filed up to fourteen months earlier. As a result of the implementation of title I of the PLTIA, 37 CFR 1.78(a) and (b) were amended effective May 13, 2015, to provide that a petition to restore the right of priority filed on or after May 13, 2015, must be filed in the subsequent application and to clarify that the subsequent application is the application required to be filed within the period set forth in 37 CFR 1.78(a)(1)(i). For purposes of 37 CFR 1.78(a)(1)(ii), the subsequent application may be a nonprovisional application or an international application designating the United States. Where a petition under 37 CFR 1.78(b) is required in an international application that was not filed in the United States Receiving Office and is not a nonprovisional application, then the petition may be filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, or 365(c) to the international application and will be treated as being filed in the international application. See 37 CFR 1.78(i).
A petition under 37 CFR 1.78(b) requires:
(A) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application, which must be included in application data sheet (unless previously submitted in an application data sheet);
(B) the petition fee as set forth in 37 CFR 1.17(m); and
(C) a statement that the delay in filing the nonprovisional application or international application designating the United States within the twelve-month period set forth in 37 CFR 1.78(a)(1)(i) was unintentional.
The Director may require additional information where there is a question whether the delay was unintentional.
If a petition under 37 CFR 1.78(b) to restore benefit of a provisional application is granted, a further petition under 37 CFR 1.78(b) is not required in an application entitled to claim benefit under 35 U.S.C. 120, 121, or 365(c) of the subsequent application for which benefit of the provisional application was restored.
Use form paragraphs 2.09 and 2.11.01 to indicate that the later-filed application must be filed not later than 12 months after the filing date of the provisional application for which a benefit is sought unless the benefit of the provisional application has been restored (37 CFR 1.78(b)).
¶ 2.11.01 Application Must Be Filed Within 12 Months From the Provisional Application Unless Petition Granted
This application is claiming the benefit of provisional application No. [1] under 35 U.S.C. 119(e). However, this application was not filed within twelve months from the filing date of the provisional application, and there is no indication of an intermediate nonprovisional application or international application designating the United States that is directly claiming the benefit of the provisional application and filed within 12 months of the filing date of the provisional application. In addition, no petition under 37 CFR 1.78(b) or request under PCT Rule 26 bis.3 to restore the benefit of the provisional application has been granted.
Applicant is required to delete the claim to the benefit of the prior-filed provisional application, unless applicant can establish that this application, or an intermediate nonprovisional application or international application designating the United States, was filed within 12 months of the filing date of the provisional application. See 35 U.S.C. 119(e)(3). Alternatively, applicant may wish to file a petition to restore the benefit of the provisional application under 37 CFR 1.78 in the subsequent nonprovisional application or international application designating the United States if the subsequent application was filed within two months from the expiration of the twelve-month period and the delay was unintentional. A petition under 37 CFR 1.78(b) to restore the benefit of the provisional application must include: (1) the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 to the prior-filed provisional application (unless previously submitted); (2) the petition fee set forth in 37 CFR 1.17(m); and (3) a statement that the delay in filing the
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subsequent nonprovisional application or international application designating the United States within the twelve-month period was unintentional. A petition to restore the benefit of a provisional application must be filed in the subsequent application. 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, Alexandria, Virginia 22313-1450.
Examiner Note:
1. This form paragraph must be preceded by heading form paragraph 2.09.
2. In bracket 1, insert the application number of the prior-filed provisional application.
211.01(b) Claiming the Benefit of a Nonprovisional Application [R-07.2015]
I. COPENDENCY
When a later-filed application is claiming the benefit of a prior-filed nonprovisional application under 35 U.S.C. 120, 121, 365(c), or 386(c), the later-filed application must be copending with the prior application or with an intermediate nonprovisional application similarly 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 application. If the prior application issues as a patent, it is sufficient 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. See MOAEC, Inc. v. MusicIP Corp., 568 F. Supp. 2d 978, 982 (W.D. Wis. 2008) wherein the district court interpreted “before” to mean “not later than” and allowed a continuation application filed the same day that the parent patent issued to have the benefit of the filing date of the parent application. But see Immersion Corp. v. HTC Corp, Civil Action No. 12-259-RGA (D.Del. Feb. 11, 2015). Thus, the later-filed application may be filed under 37 CFR 1.53(b) while the prior application 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 issuance 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 abandonment (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). The expression “termination of proceedings” includes the situations when an application is abandoned or when a patent has been issued, and hence this expression is the broadest of the three copendency definitions.
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 relationship of copendency of the same subject matter in two different applications naming the same inventor or at least one joint inventor in common. The later-filed application may be referred to as a continuing application when the prior application is not a provisional application. Continuing applications include divisional, continuation, and continuation-in-part applications. The statute is so worded that the prior application may disclose more than the later-filed application, or the later-filed application may disclose 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
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matter disclosed in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
A later-filed application which is not copending with the prior application (which includes those called “substitute” applications as set forth in MPEP § 201.02) 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 should not refer to such prior application(s) in an application data sheet (see 37 CFR 1.76) and is not required to refer to the prior application in the specification of the later-filed application, but is required to otherwise call the examiner’s attention to the prior application if it or its contents or prosecution is material to patentability of the later-filed application as defined in 37 CFR 1.56(b).
Use form paragraphs 2.09 and 2.11 to indicate the benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(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 application No. [1] under 35 U.S.C. 120, 121, 365(c), or 386(c). Copendency between the current application and the prior application is required. Since the applications are not copending, the benefit claim to the prior-filed application is improper. Applicant is required to delete the claim to the benefit of the prior-filed application, unless applicant can establish copendency between the applications.
Examiner Note:
1. This form paragraph must be preceded by heading form paragraph 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 application.
II. 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 intermediate application, also make reference to the first application. See Sticker Indus. Supply Corp. v. Blaw-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 continuation-in-part) between each nonprovisional application in order to establish copendency throughout the entire chain of prior applications. Appropriate references must be made in each intermediate application in the chain of prior applications. See MPEP § 211.02 for guidance regarding properly referencing prior applications.
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). But see MPEP § 2190 (prosecution laches).
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 unless the benefit of the provisional application has been restored. See 37 CFR 1.78(b) and MPEP § 211.01(a), subsection II. 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 intermediate nonprovisional application was filed within 12 months of the provisional application and thus, whether the claim is proper. Where the benefit of more than one provisional application is being claimed, the intermediate nonprovisional application(s) claiming
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the benefit of each provisional application must be indicated. See MPEP § 211.02 for guidance regarding properly referencing prior applications.
If a benefit claim to a provisional application is submitted without an indication that an intermediate application directly claims the benefit of the provisional application and the instant nonprovisional application is not filed within the 12 month period (or 14 month period if the benefit of the provisional application has been restored pursuant to 37 CFR 1.78(b)) or the relationship between each nonprovisional application 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(c) and the petition fee set forth in 37 CFR 1.17(m) will be required if the intermediate application and the relationship of each nonprovisional application are not indicated within the period set forth in 37 CFR 1.78. See MPEP § 201.04.
211.01(c) Claiming the Benefit of an International Application Designating the United States [R-07.2015]
Pursuant to 35 U.S.C. 365(c), a regular national application filed under 35 U.S.C. 111(a) and 37 CFR 1.53(b) may claim the benefit of the filing date of an international application which designates the United States without completing the requirements for entering the national stage under 35 U.S.C. 371. See MPEP §§ 1895 and 1895.01. Thus, rather than submitting a national stage application under 35 U.S.C. 371, applicant may file a continuation, divisional, or continuation-in-part of an international (PCT) application under 35 U.S.C. 111(a). Such applications are often referred to as “bypass” applications. To claim the benefit of the filing date of an international application, the international application must designate the United States and be entitled to a filing date in accordance with PCT Article 11, and the later-filed application must be filed during the pendency (e.g., prior to the abandonment) of the international application.
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 application
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 regularly filed in the Patent and Trademark Office.” 35 U.S.C. 371(d) indicates that failure to timely comply with the requirements of 35 U.S.C. 371(c) “shall be regarded as abandonment of the application 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 application 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,... a national application shall be entitled to the benefit of the filing date of a prior international application 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....”
211.01(d) Claiming the Benefit of an International DesignApplication Designating the United States [R-07.2015]
Pursuant to 35 U.S.C. 386(c), in accordance with the conditions and requirements of 35 U.S.C. 120, a nonprovisional application is entitled to the benefit of a prior international design application designating the United States. See MPEP §§ 211 and 2920.05(e). 37 CFR 1.78(j) provides that benefit under 35 U.S.C. 386(c) with respect to an international design application can only be claimed in nonprovisional applications, international applications, and international design applications filed on or after May 13, 2015, and patents issuing thereon. To obtain benefit of the filing date of a prior international design application designating the United States, the international design application must be entitled to a filing date in accordance with 37 CFR 1.1023. See 37 CFR 1.78(d)(1)(ii).
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See MPEP § 2920.05(e) for additional information pertaining to benefit claims under 35 U.S.C. 386(c).
211.02 Reference to Prior Application(s) [R-07.2015]
I. APPLICATION DATA SHEET
Both 35 U.S.C. 119(e) and 120 include the requirement that the later-filed application must contain a specific reference to the prior application.
For applications filed on or after September 16, 2012, the specific reference to the prior application must be included in an application data sheet (37 CFR 1.76). For applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet (37 CFR 1.76(a)) and/or in the first sentence(s) of the specification following the title, although the Office prefers the use of an application data sheet. If applicant is claiming the benefit of multiple prior applications, and the reference to the prior applications is in the specification, the reference may be in a continuous string of multiple sentences at the beginning of the specification. The multiple sentences must begin as the first sentence after the title, and any additional sentence(s) including a benefit claim must follow the first sentence and not be separated from the first sentence by any other sentence not making a benefit claim. If the specific reference is only contained in the application 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.
For applications filed on or after September 21, 2004, a claim under 35 U.S.C. 119(e) or 120 and 37 CFR 1.78 for benefit of a prior-filed provisional application, nonprovisional application, international application designating the United States, or international design application designating the United States that was present on the filing date of the continuation or divisional application, or the nonprovisional application claiming benefit of a prior-filed provisional application, is considered an incorporation by reference of the prior-filed application as to inadvertently omitted material, subject to the conditions and requirements of 37 CFR
1.57(b). The purpose of 37 CFR 1.57(b) is to provide a safeguard for applicants when all or a portion of the specification and/or drawing(s) is (are) inadvertently omitted from an application. See MPEP § 201.06 and 217. However, applicants are encouraged to provide in the specification an explicit incorporation by reference statement to the prior-filed application(s) for which benefit is claimed under 35 U.S.C. 119(e) or 120 if applicants do not wish the incorporation by reference to be limited to inadvertently omitted material pursuant to 37 CFR 1.57(b). See 37 CFR 1.57(c). See also MPEP §§ 217 and MPEP § 608.01(p).
When a benefit claim is submitted after the filing of an application, and the later-filed application as filed did not incorporate the prior-filed application by reference, applicant cannot add an incorporation by reference statement of the prior application. 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)). See Dart Indus. v. Banner , 636 F.2d 684, 207 USPQ 273 (C.A.D.C. 1980). See also 37 CFR 1.57(b).
If an applicant includes a benefit claim in the application but not in the manner specified by 37 CFR 1.78 (e.g., if the claim is included in an oath or declaration or the application transmittal letter) within the time period set forth in 37 CFR 1.78, the Office will not require a petition under 37 CFR 1.78 and the petition fee under 37 CFR 1.17(m) to 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 an ADS (or for applications filed prior to September 16, 2012 in the first sentence(s) of the specification 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 and the petition fee to correct the claim. The Office may not recognize any benefit claim where, for example, there is no indication of the relationship between the nonprovisional applications, or no indication of an intermediate nonprovisional application that is directly claiming the benefit of a provisional application. See subsection II, below. Even if the Office has recognized a benefit claim by entering it into the
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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 for applications filed prior to September 16, 2012, included in the ADS or in the first sentence(s) of the specification and all other requirements are met.
In view of this requirement for a specific reference in the later-filed application, 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 (e.g., the reference was submitted in the transmittal letter but not in an application data sheet (or for applications filed prior to September 16, 2012 in the first sentence(s) of the specification or an application data sheet)), he or she should merely call attention to this in an Office action by using the wording of form paragraph 2.15.
¶ 2.15 Reference to Prior Application, 35 U.S.C. 119(e), 120, 121, 365(c), or 386(c) Benefit
This application makes reference to or appears to claim subject matter disclosed in Application No. [1], filed [2]. If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 CFR 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
If the instant application is a utility or plant application filed under 35 U.S.C. 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a national stage application under 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), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. See 37 CFR 1.78(a)(4) for benefit claims under 35 U.S.C. 119(e)
and 37 CFR 1.78(d)(3) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). 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, 365(c), and 386(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. 119(e) (see 37 CFR 1.78(c)) or under 35 U.S.C. 120, 121, 365(c), or 386(c) (see 37 CFR 1.78(e)). The petition must be accompanied by (1) the reference required by 35 U.S.C. 120 or 119(e) and by 37 CFR 1.78 to the prior application (unless previously submitted), (2) the petition fee under 37 CFR 1.17(m), and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 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, Alexandria, Virginia 22313-1450.
If the reference to the prior application was previously submitted within the time period set forth in 37 CFR 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal 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 and the petition fee under 37 CFR 1.17(m) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an ADS with the reference (or, if the application was filed before September 16, 2012, by filing either an amendment to the first sentence(s) of the specification or an ADS with the reference. See MPEP § 211.02.
Examiner Note:
1. Use this paragraph when an application does not claim the benefit of a prior-filed application, but makes a reference to, or appears to claim subject matter disclosed in, the prior-filed application.
2. In bracket 1, insert the application number of the prior-filed application.
3. In bracket 2, insert the filing date of the prior-filed application.
4. In a continued prosecution application (CPA) filed under 37 CFR 1.53(d) (design applications under 35 U.S.C. chapter 16 only), a specific reference in the first sentence(s) of the specification, or in an application data sheet, to the prior application 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 1.53(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.
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For notations to be placed in the file history in the case of continuing applications, see MPEP § 202 and § 1302.09.
II. REFERENCE TO PRIOR NONPROVISIONAL APPLICATIONS
Except for benefit claims to the prior application in a continued prosecution application (CPA), benefit claims under 35 U.S.C. 120, 121, 365(c), and 386(c) must identify the prior application by application number, by international application number and international filing date, or by international registration number and international filing date under 37 CFR 1.1023, and indicate the relationship between the applications. See 37 CFR 1.78. The relationship between the applications is whether the instant application is a continuation, divisional, or continuation-in-part of the prior nonprovisional application. For international design applications, the required reference can identify the nonprovisional application number instead of the international registration number and filing date under 37 CFR 1.1023 once the international design application becomes a nonprovisional application. Identifying the prior international design application by the nonprovisional application number is preferable to the Office.
Where the reference to a prior nonprovisional application appears in the specification of an application as permitted for applications filed before September 16, 2012, 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, since the relationship between the applications is not stated. In addition, a benefit claim that merely states that “this application is a continuing application of Application No. ---, filed ---” does not comply with 35 U.S.C. 120 and 37 CFR 1.78 since the proper relationship, which includes the type of continuing (i.e., continuation, divisional, or continuation-in-part) application, is not stated.
A request for a CPA filed under 37 CFR 1.53(d) (available only for design applications, but not international design applications) is itself the specific
reference required by 35 U.S.C. 120 and 37 CFR 1.78 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 number 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 application 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 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) filed on or after September 16, 2012 is entitled under 35 U.S.C. 120 to an earlier U.S. effective filing date, the reference must be included in an application data sheet. For applications filed prior to September 16, 2012, the benefit claim must appear either in the application data sheet, or as a statement in the first sentence(s) of the specification. An example of such a statement is “This is a divisional (or continuation, or continuation-in-part, as appropriate) application of Application No. ---, filed ---.”In the case of a design application filed under 37 CFR 1.53(b) as a divisional, 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 non-continued application. See MPEP § 1504.20 for additional information pertaining to benefit claims in design applications.
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, the appropriate relationship must be indicated on an application data sheet for applications filed on or after September 16, 2012. For applications filed prior to September 16, 2012, the specific reference to the prior application must be in an application data sheet (37 CFR 1.76(a)) and/or in the first sentence(s) specification, Where the reference to the prior-filed national stage application appears in the specification, a suitable
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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 considered to contain a specific reference to a prior application as required by 35 U.S.C. 120. Such benefit claim may not be recognized by the Office and may not be included on the filing receipt even if the claim appears in an application data sheet (for an application filed on or after September 16, 2012), or in the application data sheet or the first sentence(s) of the specification (for an application filed prior to September 16, 2012). As a result, publication of the application may not be scheduled on the basis 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 for submitting the required reference has expired, applicant must submit a petition under 37 CFR 1.78 and the petition fee set forth in 37 CFR 1.17(m) in order for the Office to accept the unintentionally delayed claim under 35 U.S.C. 120 because 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 applications, applicant must specify whether the application is a continuation, divisional, or continuation-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 relationship 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, where the reference to a prior nonprovisional application appears in the specification of an application as permitted for applications filed before September 16, 2012, a statement 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 ---.
III. REFERENCE TO PRIOR PROVISIONAL APPLICATIONS
When a nonprovisional application filed on or after September 16, 2012 is entitled to an earlier U.S. effective filing date of one or more provisional applications under 35 U.S.C. 119(e), the reference must be included in an application data sheet. For applications filed prior to September 16, 2012, the reference to the provisional application must be in an application data sheet (37 CFR 1.76(a)) and/or in the first sentence(s) specification. Where the reference to a prior provisional application appears in the first sentence(s) of the specification 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 description. In addition, where a nonprovisional application benefit claim appears in the specification of an application filed before September 16, 2012 and the application 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. Provisional Application No. 60/---, filed ---.”. Note that a design application cannot claim the benefit of a provisional application. See MPEP § 1504.20 for benefit information specific to design applications and MPEP § 2920.05(e) for benefit information specific to international design applications.
The relationship (i.e., continuation, divisional, or continuation-in-part) is not required and should not be specified when the benefit of 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 “nonprovisional application of a
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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 application under 35 U.S.C. 119(e) or 120. Thus, applicants 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 provisional 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 recommended that applicants claim the benefit to a provisional 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).
211.02(a) Correcting or Adding a Benefit Claim After Filing [R-07.2015]
I. CORRECTED FILING RECEIPT
If applicant receives a filing receipt with missing or incorrect benefit claim information, applicant may request a corrected filing receipt. 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 (i) in an ADS (for applications filed on or after September 16, 2012) or (ii) in the first sentence(s) of the specification or an ADS (for applications filed prior to September 16, 2012) within the time period required by 37 CFR 1.78 with a few exceptions. See MPEP § 211.03. If the proper reference was previously submitted in an application filed on or after September 16, 2012, the request for a corrected filing receipt should indicate that the reference was properly and timely made in the ADS. If the proper reference was previously submitted in an application filed prior to September 16, 2012, the request for a corrected filing receipt should indicate that the reference was properly and timely made and where such reference is located (i.e., the specification, an amendment to the specification, or an ADS). 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 recognized 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) and the petition fee.
II. ADDING BENEFIT CLAIMS
If a benefit claim is added after the time period required by 37 CFR 1.78, a petition and the petition fee are required. See MPEP § 211.04. Any petition under 37 CFR 1.78 must be accompanied by a corrected ADS in compliance with 37 CFR 1.76(c) (for applications filed on or after September 16, 2012), or by an amendment to the specification or a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) (for applications filed prior to September 16, 2012) unless the proper reference was previously submitted. In addition to the petition under 37 CFR 1.78 and ADS or amendment, 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
(B) a reissue application or a request for a certificate of correction under 37 CFR 1.323, if appropriate (see MPEP §§ 1402 and 1481), if the application has issued as a patent.
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 specifying of the prior application unless an incorporation by reference statement specifying 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). 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)).
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III. DELETING BENEFIT CLAIMS
In certain circumstances, applicants may choose to delete a benefit claim. For applications filed on or after September 16, 2012, applicant may do so by filing a corrected application data sheet in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application. For applications filed prior to September 16, 2012, applicant may do so by amending the specification (if the benefit claim is in the specification) or by submitting a supplemental application data sheet in compliance with pre-AIA 37 CFR 1.76(c) 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 application 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 publication 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 calculated based on the benefit claim.
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application. If the applicant later files a petition to accept an unintentionally 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. 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 placed in the file. See also MPEP § 707.05 and § 1302.09.
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 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 application assigned the same application number is not required and should not be made.)
211.03 Time Period for Making a Claim for Benefit Under 37 CFR 1.78 [R-07.2015]
37 CFR 1.78 specifies: (A) a time period within which a benefit claim to a prior nonprovisional application, international application, international design application, or provisional application 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 application, international application, international design application, or provisional application.
If the application is a utility or plant application filed under 35 U.S.C. 111(a), the benefit claim of the prior application under 35 U.S.C. 119(e), 120, 121, 365(c), or 386(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 filing date of the prior-filed application. If the application is a nonprovisional application entering the national stage from an international application under 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 35 U.S.C. 371(b) or (f); (2) four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage; or (3) sixteen months from the filing date of the prior application. 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, 365(c), and 386(c) unless a petition to accept an unintentionally delayed benefit claim is granted. See MPEP § 211.04.
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If the application is a design application, the claim under 35 U.S.C. 120, 121, 365(c), or 386(c) for the benefit of a prior-filed application must be submitted during the pendency of the later-filed application.
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 (e.g., if the benefit claim is included in an oath or declaration, or the application transmittal letter, or in the first sentence(s) of the specification for an application filed on or after September 16, 2012) within the time period set forth in 37 CFR 1.78, the Office will not require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim if the information concerning the benefit claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on a filing receipt. This is because the application 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 (i.e., in an ADS for applications filed on or after September 16, 2012, or by an amendment to the first sentence(s) of the specification or in an ADS for applications filed prior to September 16, 2012) to have a proper claim under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the benefit of a prior application. If, however, an applicant includes a benefit claim elsewhere in the application and the claim is not recognized by the Office as shown by its absence on a filing receipt, the Office will require a petition and the petition fee under 37 CFR 1.17(m) to correct the benefit claim. This is because the application 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 and the petition fee 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 nonprovisional or provisional application; and
(C) Changing a benefit claim of a prior-filed provisional 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 provisional 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 application’s filing date and removing the benefit claim under 35 U.S.C. 120, 121, 365(c), or 386(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, the applicant should be informed that the benefit claim was not entered and that a petition needs to be filed using form paragraph 2.39.
¶ 2.39 35 U.S.C. 119(e), 120, 121, or 365(c), or 386(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. If the application is an application filed under 35 U.S.C. 111(a), the reference to the prior application must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a nonprovisional application entering the national stage from an international application under 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), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. If the application was filed before September 16, 2012, the reference must be included in the first sentence(s) of the specification following the title or in an application data sheet; if the application was filed on or after September 16, 2012, the specific reference must be included in an application data sheet. For benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications. See 37 CFR 1.78(a) for benefit claims under 35 U.S.C. 119(e) and 37 CFR 1.78(d) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c).
If applicant desires the benefit under 35 U.S.C. 119(e), 120, 121, 365(c) or 386(c) based upon a previously filed application, applicant must file a petition for an unintentionally delayed benefit claim under 37 CFR 1.78(c) for benefit claims under 35
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U.S.C. 119(e) or under 37 CFR 1.78(e) for benefit claims under 35 U.S.C. 120, 121, 365(c), or 386(c). The petition must be accompanied by: (1) the reference required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78 to the prior application (unless previously submitted); (2) a petition fee under 37 CFR 1.17(m); and (3) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 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, 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 and for national stage applications under 35 U.S.C. 371. DO NOT use for design applications.
2. In bracket 1, insert the filing date of the amendment or paper containing the benefit claim.
3. 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, but not in the location of the application as required by 37 CFR 1.78 (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information 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 and the petition fee under 37 CFR 1.17(m) are not required. Applicant is still required to submit the reference in compliance with 37 CFR 1.78 by filing an amendment to the first sentence(s) of the specification (only if the application was filed before September 16, 2012) or an ADS. The reference is required in the ADS if the application was filed on or after September 16, 2012. See MPEP § 210, subsection I and MPEP § 211.03.
211.04 Delayed Benefit Claims [R-07.2015]
If the reference required by 35 U.S.C. 120 and 37 CFR 1.78 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 to the prior application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 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(e).
Effective May 13, 2015, 37 CFR 1.78(d)(3) was amended to make the procedures under 37 CFR
1.78(e) to accept an unintentionally delayed benefit claim applicable to design applications where the benefit claim was not submitted during the pendency of the design application. Thus, a petition under 37 CFR 1.78(e) may be filed along with a request for certificate of correction after patent grant. See MPEP § 1481.03.
Likewise, if the reference required by 35 U.S.C. 119(e) and 37 CFR 1.78 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. 119(e) and 37 CFR 1.78 to the prior provisional application (unless previously submitted); (B) a petition fee under 37 CFR 1.17(m); and (C) a statement that the entire delay between the date the benefit claim was due under 37 CFR 1.78 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(c).
Petitions for an unintentionally delayed benefit claim should be forwarded to the Office of Petitions. See MPEP § 1002.02(b).
DELAYED SUBMISSION OF BENEFIT CLAIM IN INTERNATIONAL APPLICATION
A petition under 37 CFR 1.78 for accepting an unintentionally delayed benefit claim and the petition fee under 37 CFR 1.17(m) 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, 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 international application designating the United States 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 must be filed in the international application.
If a petition under 37 CFR 1.78(c) or (e) is required in an international application that was not filed with the United States Receiving Office and is not a nonprovisional application, then the petition may be
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filed in the earliest nonprovisional application that claims benefit under 35 U.S.C. 120, 121, 365(c), or 386(c) to the international application and will be treated as having been filed in the international application. See 37 CFR 1.78(i).
211.05 Sufficiency of Disclosure in Prior-Filed Application [R-07.2015]
I. DISCLOSURE REQUIREMENT
To be entitled to the benefit of the filing date of an earlier-filed application, 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 earlier-filed nonprovisional application or provisional application for which benefit is claimed); the disclosure of the invention in the prior application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) except for the best mode requirement. See Transco Prods., Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994). Accordingly, the disclosure of the prior-filed application must provide adequate support and enablement for the claimed subject matter of the later-filed application in compliance with the requirements of 35 U.S.C. 112(a) except for the best mode requirement.
A. Claiming the Benefit of Provisional Applications
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 nonprovisional application to be afforded the priority date of the provisional application, “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 application.”
In New Railhead, the patented drill bit was the subject 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 provisional application does not adequately support the 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 nonprovisional 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 benefit 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 description 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
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filed nonprovisional application without undue experimentation.
B. Claiming the Benefit of Nonprovisional Applications
The disclosure of a continuation application must be the same as the disclosure of the prior-filed application; i.e., the continuation must not include anything which would constitute new matter if inserted in the original application. See MPEP § 201.07. The disclosure of a divisional 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 divisional application. See MPEP § 201.06. The disclosure of a continuation or divisional application cannot include anything which would constitute new matter if inserted in the prior-filed application. A continuation-in-part application may include matter not disclosed 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 35 U.S.C. 112(a) in the prior-filed application are entitled to the benefit of the filing date of the prior-filed application. If there is a continuous chain of copending nonprovisional applications, each copending application must disclose the claimed invention of the later-filed application in the manner provided by 35 U.S.C. 112(a) 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(a) except for the best mode requirement, 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 combination 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(a) except for the best mode requirement 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 application 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” application 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. 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 parent nonprovisional application is entitled to the benefit 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 disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application. See, e.g., 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).
By way of further illustration, if the claims of a continuation-in-part application which are only entitled to the continuation-in-part filing date “read
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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,