[Federal Register Volume 65, Number 54 (Monday, March 20, 2000)]
[Rules and Regulations]
[Pages 14865-14873]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 00-6514]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No. 000301056-0056-01]
RIN 0651-AB13
Changes to Application Examination and Provisional Application
Practice
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Interim rule.
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SUMMARY: The United States Patent and Trademark Office (Office) is
revising the rules of practice in patent cases to implement certain
provisions of the ``American Inventors Protection Act of 1999.'' These
provisions of the ``American Inventors Protection Act of 1999'' provide
for continued examination of an application for a fee, extend the
pendency of a provisional application if the date that is twelve months
after the filing date of the provisional application falls on a
Saturday, Sunday, or a Federal holiday within the District of Columbia,
eliminate the copendency requirement for a nonprovisional application
to claim the benefit of a provisional application, provide for the
conversion of a provisional application to a nonprovisional
application, and to provide a prior art exclusion for certain commonly
assigned patents.
DATES: Effective Date: May 29, 2000.
Comments: To be ensured of consideration, written comments must be
received on or before May 19, 2000. No public hearing will be held.
ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to: [email protected]. Comments may also be
submitted by mail addressed to: Box Comments--Patents, Assistant
Commissioner for Patents, Washington, D.C. 20231, or by facsimile to
(703) 872-9411, marked to the attention of Robert W. Bahr. Although
comments may be submitted by mail or facsimile, the Office prefers to
receive comments via the Internet. If comments are submitted by mail,
the Office would prefer that the comments be submitted on a DOS
formatted 3\1/2\ inch disk accompanied by a paper copy.
The comments will be available for public inspection at the Special
Program Law Office, Office of the Deputy Assistant Commissioner for
Patent Policy and Projects, located at Room 3-C23 of Crystal Plaza 4,
2201 South Clark Place, Arlington, Virginia, and will be available
through anonymous file transfer protocol (ftp) via the Internet
(address: http://www.uspto.gov). Since comments will be made available
for public inspection, information that is not desired to be made
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Karin L. Tyson, or
Robert A. Clarke by telephone at (703) 308-6906, or by mail addressed
to: Box Comments--Patents, Assistant Commissioner for Patents,
Washington, DC 20231, or by facsimile to (703) 872-9411, marked to the
attention of Robert W. Bahr.
SUPPLEMENTARY INFORMATION: The ``American Inventors Protection Act of
1999'' (Title IV of the ``Intellectual Property and Communications
Omnibus Reform Act of 1999'' (S. 1948) as introduced in the 106th
Congress on November 17, 1999) was incorporated and enacted into law on
November 29, 1999, by Sec. 1000(a)(9), Division B, of Public Law 106-
113, 113 Stat. 1501 (1999). The ``American Inventors Protection Act of
1999'' contains a number of changes to title 35, United States Code.
This interim rule changes the rules of practice to implement the
provisions of Secs. 4403, 4801, and 4807 of the ``American Inventors
Protection Act of 1999.''
Section 4403 of the ``American Inventors Protection Act of 1999''
is effective on the date six months after the date of enactment of the
``American Inventors Protection Act of 1999'' (May 29, 2000), and
applies to applications (other than for a design patent) filed on or
after June 8, 1995. Section 4801 of the ``American Inventors Protection
Act of 1999'' is effective on the date of enactment of the ``American
Inventors Protection Act of 1999'' (November 29, 1999) and applies to
all provisional applications (with limited exception) filed on or after
June 8, 1995. Section 4807 of the ``American Inventors Protection Act
of 1999'' is effective on the date of enactment of the ``American
Inventors Protection Act of 1999'' (November 29, 1999) and applies to
all applications filed on or after November 29, 1999.
Section 4403 (Continued Examination of Patent Applications):
Section 4403 of the ``American Inventors Protection Act of 1999''
amends 35 U.S.C. 132 to state that the Office ``shall prescribe
regulations to provide for the continued examination of applications
for patent at the request of the applicant,'' and that the Office ``may
establish appropriate fees for such continued examinations and shall
provide a 50 percent reduction in such fees for small entities that
qualify for reduced fees under [35 U.S.C. 41(h)(1)].'' Currently, an
applicant must file a continuing application (a continuing application
under Sec. 1.53(b) or a continued prosecution application under
Sec. 1.53(d)) to obtain continued examination of an application for a
fee (the application filing fee). Section 4403 of the ``American
Inventors Protection Act of 1999'' will provide statutory authority for
the continued examination of an application for a fee (to which the
small entity reduction will be applicable) without requiring the
applicant to file a continuing application.
Section 4801 (Provisional Applications): Section 4801(a) of the
``American Inventors Protection Act of 1999'' amends 35 U.S.C.
111(b)(5) to provide that ``[n]otwithstanding 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 [35 U.S.C.
111(a)]'' but that 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
[[Page 14866]]
thereafter.'' Section 1.53(c), which currently provides for the
conversion of a nonprovisional application (35 U.S.C. 111(a) and
Sec. 1.53(b)) to a provisional application (35 U.S.C. 111(b) and
Sec. 1.53(c)), is thus being amended to also provide for the conversion
of a provisional application (35 U.S.C. 111(b) and Sec. 1.53(c)) to a
nonprovisional application (35 U.S.C. 111(a) and Sec. 1.53(b)).
Section 4801 of the ``American Inventors Protection Act of 1999''
contains no provision for according the resulting nonprovisional
application a filing date other than the original filing date of the
provisional application. Thus, under 35 U.S.C. 154(b), the term of a
nonprovisional application resulting from the conversion of a
provisional application pursuant to 35 U.S.C. 111(b)(5) will be
measured from the original filing date of the provisional application
(which is the filing date accorded the nonprovisional application
resulting from conversion under Sec. 4801 of the ``American Inventors
Protection Act of 1999''). Applicants are strongly cautioned to
consider the patent term implications of converting a provisional
application into a nonprovisional application pursuant to 35 U.S.C.
111(b)(5), rather than simply filing a nonprovisional application
within twelve months of the filing date of the provisional application
and claiming the benefit of that provisional application under 35
U.S.C. 119(e).
Section 4801(b) of the ``American Inventors Protection Act of
1999'' also amends 35 U.S.C. 119(e) to provide that ``[i]f 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.''
Section 4801(c) of the ``American Inventors Protection Act of
1999'' also amends 35 U.S.C. 119(e) to eliminate the requirement that a
provisional application be pending on the filing date of the
nonprovisional application for the nonprovisional application to claim
the benefit of the provisional application.
Section 4807 (Prior Art Exclusion): 35 U.S.C. 103 was amended in
1984 to exclude subject matter developed by another person which
qualifies as prior art only under 35 U.S.C. 102(f) or (g) as prior art
under 35 U.S.C. 103 against a claimed invention, provided that the
subject matter and the claimed invention were commonly owned by the
same person or organization or subject to an obligation of assignment
to the same person or organization at the time the claimed invention
was made. See Public Law 98-622, Sec. 103, 98 Stat. 3384 (1984).
Section 4807 of the ``American Inventors Protection Act of 1999''
amends 35 U.S.C. 103(c) to exclude subject matter developed by another
person which qualifies as prior art only under one or more of 35 U.S.C.
102(e), (f), or (g) as prior art under 35 U.S.C. 103 against a claimed
invention, again provided that the subject matter and the claimed
invention were commonly owned by the same person or organization or
subject to an obligation of assignment to the same person or
organization at the time the claimed invention was made. The Office is
in the process of developing guidelines concerning the implementation
of this change to 35 U.S.C. 103(c).
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as
follows:
Section 1.7 is amended by designating the current text as paragraph
(a) and adding a new paragraph (b) to provide that if the day that is
twelve months after the filing date of a provisional application under
35 U.S.C. 111(b) and Sec. 1.53(c) falls on Saturday, Sunday, or a
Federal holiday within the District of Columbia, the period of pendency
shall be extended to the next succeeding secular or business day which
is not a Saturday, Sunday, or a Federal holiday.
Section 1.17(e) sets forth the fee to request continued examination
pursuant to new Sec. 1.114, which is set at an amount equal to the
basic filing fee for a utility application. Therefore, the fee for
considering a submission pursuant to Sec. 1.114 is $690.00 ($345.00 for
a small entity).
Section 1.17(i) is amended to include a reference to the fee to
convert a provisional application filed under Sec. 1.53(c) to a
nonprovisional application under Sec. 1.53(b), and to eliminate the
reference to Sec. 1.312.
Section 1.53 is amended by redesignating paragraph (c)(3) as
paragraph (c)(4) and adding a new paragraph (c)(3) to provide for the
conversion of a provisional application to a nonprovisional
application. Section 1.53(c)(3) provides that a request to convert a
provisional application filed under Sec. 1.53(c) to a nonprovisional
application under Sec. 1.53(b) must be accompanied by the fee set forth
in Sec. 1.17(i) and an amendment including at least one claim as
prescribed by the second paragraph of 35 U.S.C. 112, unless the
provisional application otherwise contains at least one claim. Section
1.53(c)(3) also provides that such a request must be filed prior to the
earliest of: (1) abandonment of the provisional application; or (2)
expiration of twelve months after the filing date of the provisional
application. Section 1.53(c)(3) also provides that 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.
The conversion of a provisional application to a nonprovisional
application will not result in any savings in filing fees over the
filing of a nonprovisional application claiming the benefit under 35
U.S.C. 119(e) and Sec. 1.78 of the earlier provisional application.
Thus, an applicant may simply file a nonprovisional application
claiming the benefit under 35 U.S.C. 119(e) and Sec. 1.78 of the
earlier provisional application and avoid the fee set forth in
Sec. 1.17(i) required to convert a provisional application to a
nonprovisional application (as well as the adverse patent term effects
discussed above).
Section 1.53(d)(1)(i) is amended to provide that continued
prosecution application (CPA) practice under Sec. 1.53(d) does not
apply to applications (other than design) if the prior application has
a filing date on or after May 29, 2000. Thus, an application (except
for a design application) must have an actual filing date before May
29, 2000, for the applicant to be able to file a CPA of that
application. While the Office uses the filing date (and application
number) of the prior application of a CPA for identification purposes,
the filing date of a CPA under Sec. 1.53(d) is the date the request for
a CPA is filed. See Sec. 1.53(d)(2). Thus, if a CPA of an application
(other than for a design patent) is filed on or after May 29, 2000,
Sec. 1.53(d)(1)(i) does not permit the filing of a further CPA,
regardless of the filing date of the prior application as to the first
CPA (i.e., the filing date used for identification purposes for the
CPA).
In the event that an applicant files a request for a CPA of a
utility or plant application that was filed on or after May 29, 2000
(to which CPA practice no longer applies), the Office will
automatically treat the improper CPA as a request for continued
examination of the prior application (identified in the request for
CPA) under new Sec. 1.114. If an applicant files a request for a CPA of
an application to which CPA practice no longer applies and does not
want the request for a CPA to be treated as a request for continued
examination
[[Page 14867]]
under Sec. 1.114 (e.g., the CPA is a divisional CPA), the applicant may
file a petition under Sec. 1.53(e) requesting that the improper CPA be
converted to an application under Sec. 1.53(b). The requirements for
such a petition under Sec. 1.53(e) are identical to those set forth in
section 201.06(b) of the Manual of Patent Examining Procedure (7th
ed.1998) (MPEP) for converting an improper file wrapper continuing
(FWC) application under former Sec. 1.62 to an application under
Sec. 1.53(b). The Office will not grant such a petition unless it is
before the appropriate deciding official before an Office action has
been mailed in response to the request for continued examination under
Sec. 1.114 (as the improper CPA is being treated). If an Office action
has been mailed in response to the request for continued examination
under Sec. 1.114, the applicant should simply file an application under
Sec. 1.53(b) within the period for reply to such Office action.
Section 1.53(d)(1)(ii)(A) is amended to refer to ``Sec. 1.313(c)''
rather than ``Sec. 1.313(b)(5)'' for consistency with the change to
Sec. 1.313.
Section 1.78 is amended to eliminate the requirement that a
nonprovisional application be ``copending'' with a provisional
application for the nonprovisional application to claim the benefit
under 35 U.S.C. 119(e) of a provisional application. Section 1.78 is
also amended to require that, for a nonprovisional application to claim
the benefit of a provisional application, the provisional application
must be entitled to a filing date as set forth in Sec. 1.53(c), and
have paid therein the basic filing fee set forth in Sec. 1.16(k) within
the time period set forth in Sec. 1.53(g), and have any required
English-language translation filed therein within the time period set
forth in Sec. 1.52(d).
Section 1.97(b) is amended to indicate that an information
disclosure statement will also be considered if it is filed before the
mailing of a first Office action after the filing of a request for
continued examination under Sec. 1.114.
Section 1.104(c)(4) is revised to replace ``35 U.S.C. 102(f) or
(g)'' with ``35 U.S.C. 102(e), (f) or (g)'' for consistency with 35
U.S.C. 103(c) as amended by Sec. 4807 of the ``American Inventors
Protection Act of 1999.''
Section 1.113 is amended to take into account that an applicant's
after final reply options include filing a request for continued
examination under Sec. 1.114. Section 1.113 is also amended to locate
the last two sentences of paragraph (a) in a new paragraph (c).
Section 1.114 is added to implement Sec. 4403 of the ``American
Inventors Protection Act of 1999.'' The Office is providing a procedure
under which an applicant may obtain continued examination of an
application by filing a submission and paying a specified fee, even if
the application is under a final rejection, appeal, or a notice of
allowance. If a subsequent rejection or action is made final (or if the
application is subsequently allowed), the applicant may again obtain
continued examination of an application (consideration of a submission)
upon the filing of a submission and an additional payment of the
specified fee prior to abandonment of the application. This procedure
will not be available for: (1) a provisional application (which is not
examined under 35 U.S.C. chapter 12); (2) an application for a utility
or plant patent filed under 35 U.S.C. 111(a) before June 8, 1995; (3)
an international application filed under 35 U.S.C. 363 before June 8,
1995; (4) an application for a design patent; or (5) a patent under
reexamination.
Under this procedure, the filing of a request for continued
examination after the filing of a Notice of Appeal to the Board of
Patent Appeals and Interferences, but prior to a decision on the
appeal, will be considered a request to withdraw the appeal and to
reopen prosecution of the application before the examiner. The filing
of a request for continued examination (accompanied by the fee and a
submission) after a decision by the Board of Patent Appeals and
Interferences, but before the filing of a Notice of Appeal to the Court
of Appeals for the Federal Circuit (Federal Circuit) or the
commencement of a civil action, will also result in the finality of the
rejection or action being withdrawn and the submission being
considered.
In addition to the res judicata effect of a Board of Patent Appeals
and Interferences decision in an application (see MPEP 706.03(w)), a
Board of Patent Appeals and Interferences decision in an application is
the ``law of the case,'' and is thus controlling in that application
and any subsequent related application. See MPEP 1214.01 (where a new
ground of rejection is entered by the Board of Patent Appeals and
Interferences pursuant to Sec. 1.196(b), argument without either
amendment of the claims so rejected or the submission of a showing of
facts can only result in a final rejection of the claims, since the
examiner is without authority to allow the claims unless amended or
unless the rejection is overcome by a showing of facts not before the
Board of Patent Appeals and Interferences). As such, a submission
containing arguments without either amendment of the rejected claims or
the submission of a showing of facts will not be effective to remove
such rejection.
The procedure set forth in Sec. 1.114 will not be available in an
application after the filing of a Notice of Appeal to the Federal
Circuit or the commencement of a civil action, unless the appeal or
civil action is terminated and the application is still pending. Unless
an application contains allowed claims (or the court's mandate clearly
indicates that further action is to be taken in the Office), the
termination of an unsuccessful court appeal or civil action results in
the abandonment of the application. See MPEP 1216.01.
If the application is under final rejection, the fee acts only to
withdraw the finality of an Office action. If reply to a final or non-
final Office action is outstanding, a submission meeting the reply
requirements of Sec. 1.111 must be timely received to continue
prosecution of an application. Put simply, the mere payment of the fee
for continued examination will not operate to toll the running of any
time period set in the previous Office action for reply to avoid
abandonment of the application. Likewise, payment of the fee (and a
submission) in an allowed application without a petition under
Sec. 1.313 to withdraw the application from issue will not operate to
toll the period for payment of the issue fee (if running) or avoid
issuance of the application as a patent (if the issue fee has been
paid).
To avoid confusion as to whether an applicant desires to amend the
application prior to receiving continued examination of the
application, an appeal brief under Sec. 1.192 or a reply brief under
Sec. 1.193(b), or related submissions, are expressly excluded as a
submission for the purposes of Sec. 1.114. The submission, however, may
consist of the arguments in a previously filed appeal brief or reply
brief submitted as a reply to the final rejection, or may simply
consist of a submission that incorporates by reference the arguments in
a previously filed appeal brief or reply brief.
35 U.S.C. 132 provides that ``[n]o amendment shall introduce new
matter into the disclosure of the invention.'' Any amendment entered
pursuant to Sec. 1.114 that is determined to contain new matter will be
treated in the same manner that a reply under Sec. 1.111 determined to
contain new matter is currently treated. In those instances in which an
applicant seeks to add new matter to the disclosure of an application,
the procedure in Sec. 1.114 is not available, and the applicant must
file a continuation-in-part application under Sec. 1.53(b) containing
such new matter. In addition, as 35 U.S.C. 132(b)
[[Page 14868]]
and Sec. 1.114 provide continued examination of an application (and not
examination of a continuing application), the Office will not permit an
applicant to obtain continued examination on the basis of claims that
are independent and distinct from the claims previously claimed and
examined (see Sec. 1.145).
The request for continued examination procedure in Sec. 1.114
should not be confused with the transitional procedure for the further
limited examination of patent applications set forth in Sec. 1.129(a)
(see Changes to Implement 20-Year Patent Term and Provisional
Applications, Final Rule Notice, 60 FR 20195 (April 25, 1995), 1174
Off. Gaz. Pat. Office 15 (May 2, 1995)) or the continued prosecution
application (CPA) procedure set forth in Sec. 1.53(d) (see Changes to
Patent Practice and Procedure; Final Rule Notice, 62 FR 53131 (October
10, 1997), 1203 Off. Gaz. Pat. Office 63 (October 21, 1997)).
Comparison of the request for continued examination procedure in
Sec. 1.114 with the transitional procedure for the further limited
examination of patent application set forth in Sec. 1.129(a): The
procedure set forth in this notice does not apply to any application
that was filed prior to June 8, 1995. The transitional procedure set
forth in Sec. 1.129(a) applies only to applications, other than for
reissue or design patent, that have been pending for at least two years
as of June 8, 1995, taking into account any references in such
applications to any earlier filed application under 35 U.S.C. 120, 121,
or 365(c), and is not applicable to any application filed after June 8,
1995. Therefore, an application eligible for the transitional procedure
set forth in Sec. 1.129(a) (unless filed on June 8, 1995), or any
application filed before June 8, 1995, is not eligible for the
procedure for continued examination set forth in this notice.
In addition, an applicant in an application eligible for the
procedure for continued examination set forth in this notice is not
limited in the number of times the fee for continued examination may be
submitted. An applicant in an application eligible for the transitional
procedure set forth in Sec. 1.129(a), however, is limited to two
opportunities to pay the fee for further examination of the
application.
Moreover, under the transitional procedure set forth in
Sec. 1.129(a), a submission after final rejection or action will be
considered if the submission and the requisite fee are filed prior to
abandonment of the application and prior to the filing of an appeal
brief. Under the request for continued examination procedure set forth
in this notice, a submission will be considered if the submission and
the requisite fee is filed prior to abandonment of the application.
That is, under the request for continued examination procedure, a
submission (and requisite fee) need not be filed prior to the filing of
an appeal brief. In addition, under the request for continued
examination procedure, a submission will be considered in an allowed
application if the submission and the requisite fee are filed prior to
payment of the issue fee (or later if a petition under Sec. 1.313(c) to
withdraw the application from issue is granted).
Comparison of the request for continued examination procedure in
Sec. 1.114 with the CPA procedure set forth in Sec. 1.53(d): Section
1.53(d) is amended to make CPA practice inapplicable to applications
(other than for a design patent) filed under 35 U.S.C. 111(a) on or
after May 29, 2000, or resulting from international applications filed
under 35 U.S.C. 363 on or after May 29, 2000. CPA practice was adopted
to permit applicants to obtain continued examination of an application
(for a fee) via the filing of a continuing application. 35 U.S.C.
132(b), however, provides statutory authority for the Office to
prescribe regulations to permit applicants to obtain continued
examination of an application (for a fee) without the need for a
continuing application. The Office is not completely abolishing CPA
practice in favor of the request for continued examination practice in
Sec. 1.114 because the request for continued examination practice in
Sec. 1.114 is not applicable to applications filed before June 8, 1995
(or design applications), and the patent term adjustment provisions of
Public Law 106-113 do not apply to applications filed before May 29,
2000. The Office, however, is restricting CPA practice to utility and
plant applications filed before May 29, 2000, and design applications
because maintaining two practices (as to applications eligible for the
continued examination procedure of Sec. 1.114) designed for the same
purpose (obtaining continued examination of an application) is
unnecessary and will result in confusion.
Since the request for continued examination practice in Sec. 1.114
is applicable to utility and plant applications filed on or after June
8, 1995, and continued prosecution application (CPA) practice in
Sec. 1.53(d) is applicable to utility and plant applications filed
before May 29, 2000 (and design applications), an applicant in a
utility or plant application filed on or after June 8, 1995, but before
May 29, 2000, may obtain further examination either by filing a request
for continued examination under Sec. 1.114 or by filing a CPA under
Sec. 1.53(d). Since the patent term adjustment provisions of Public Law
106-113 do not apply to applications filed before May 29, 2000, and a
request for continued examination practice under Sec. 1.114 (unlike a
CPA under Sec. 1.53(d)) is not the filing of a new application, whether
further examination of such an application is sought by a request for
continued examination under Sec. 1.114 or a CPA under Sec. 1.53(d) has
an impact on whether any resulting patent is entitled to the patent
term adjustment provisions of Public Law 106-113. Specifically, if an
applicant in a utility or plant application filed before May 29, 2000
files a CPA under Sec. 1.53(d) after May 29, 2000, the application
being prosecuted (now a CPA) is an application filed on or after May
29, 2000 and is entitled to the patent term adjustment provisions of
Public Law 106-113. If, however, an applicant in a utility or plant
application filed before May 29, 2000 (but on or after June 8, 1995)
files a request for continued examination under Sec. 1.114, the
application being prosecuted is not an application filed on or after
May 29, 2000, and is not entitled to the patent term adjustment
provisions of Public Law 106-113.
In addition, there are a number of additional differences between
request for continued examination procedure set forth in this notice
with the CPA procedure set forth in Sec. 1.53(d) resulting from the
fact that a CPA is the filing of a new application whereas continued
examination under Sec. 1.114 merely continues the examination of the
same application: (1) the fee for continued examination under
Sec. 1.114 (Sec. 1.17(e)) does not include additional claims fees (cf.
1.53(d)(3)(ii)); (2) the fee for continued examination under Sec. 1.114
may not be deferred (cf. Sec. 1.53(f)); (3) a request for continued
examination under Sec. 1.114 is entitled to the benefit of a
certificate of mailing under Sec. 1.8 (cf. 1.8(a)(2)(i)(A)); (4) an
applicant may not obtain examination of a different or non-elected
invention (e.g., a divisional) in a request for continued examination
under Sec. 1.114; and (5) any change of inventors must be via the
procedure set forth in Sec. 1.48 (cf. 1.53(d)(4)).
Discussion of the specific provisions of new Sec. 1.114: Section
1.114 is added to provide for continued examination of an application
under 35 U.S.C. 132(b).
Section 1.114(a) provides that an applicant may obtain continued
examination of an application by filing a submission and the fee set
forth in Sec. 1.17(e) prior to the earliest of: (1)
[[Page 14869]]
payment of the issue fee, unless a petition under Sec. 1.313 is
granted; (2) abandonment of the application; or (3) the filing of a
notice of appeal to the U.S. Court of Appeals for the Federal Circuit
under 35 U.S.C. 141, or the commencement of a civil action under 35
U.S.C. 145 or 146, unless the appeal or civil action is terminated. The
action immediately subsequent to the filing of a submission and fee
under Sec. 1.114 may be made final only if the conditions set forth in
MPEP 706.07(b) for making a first action final in a continuing
application are met.
Section 1.114(b) provides that a submission as used in Sec. 1.114
includes, but is not limited to, an information disclosure statement,
an amendment to the written description, claims, or drawings, new
arguments, or new evidence in support of patentability. This definition
in Sec. 1.114 for ``submission'' is taken from Sec. 1.129(a). Section
1.114(b) also provides that if reply to a final or non-final Office
action under 35 U.S.C. 132 is outstanding, the submission must meet the
reply requirements of Sec. 1.111. This will permit applicants to file a
submission under Sec. 1.114 containing only an information disclosure
statement (Secs. 1.97 and 1.98) in an application subject to a notice
of allowance under 35 U.S.C. 151.
Section 1.114(c) provides that if an applicant timely files the fee
set forth in Sec. 1.17(e) and a submission, the Office will withdraw
the finality of any Office action to which a reply is outstanding and
the submission will be entered and considered. The phrase ``withdraw
the finality of any Office action'' includes the withdrawal of the
finality of a final rejection, as well as the closing of prosecution by
an Office action under Ex parte Quayle, 1935 Comm'r Dec. 11 (1935), or
notice of allowance under 35 U.S.C. 151 (or notice of allowability).
Section 1.114(c) also provides that if an applicant files a request for
continued examination under Sec. 1.114 after appeal, but prior to a
decision on the appeal, it will be treated as a request to withdraw the
appeal and to reopen prosecution of the application before the
examiner. Thus, the filing of a request for continued examination under
Sec. 1.114 in an application containing an appeal awaiting decision
after appeal will be treated as a withdrawal of the appeal by the
applicant, regardless of whether the request for continued examination
under Sec. 1.114 includes the appropriate fee (Sec. 1.17(e)) or a
submission (Sec. 1.114(b)). Applicants should advise the Board of
Patent Appeals and Interferences when a request for continued
examination under Sec. 1.114 is filed in an application containing an
appeal awaiting decision. Otherwise, the Board of Patent Appeals and
Interferences may refuse to vacate a decision rendered after the filing
(but before recognition by the Office) of a request for continued
examination under Sec. 1.114. Section 1.114(c) also provides that an
appeal brief or a reply brief (or related papers) will not be
considered submission under Sec. 1.114 (discussed above).
Section 1.114(d) provides that an applicant cannot request
continued examination of an application until after the Office acts on
the application by mailing at least one of an Office action under 35
U.S.C. 132 or a notice of allowance under 35 U.S.C. 151. Section
1.114(d) also provides that the request for continued examination
provisions of Sec. 1.114 do not apply to: (1) a provisional
application; (2) an application for a utility or plant patent filed
under 35 U.S.C. 111(a) before June 8, 1995; (3) an international
application filed under 35 U.S.C. 363 before June 8, 1995; (4) an
application for a design patent; or (5) a patent under reexamination.
Section 1.116 is amended to add a paragraph (a) that takes into
account that an applicant's after final amendment options include
filing a request for continued examination under Sec. 1.114, and to
redesignate existing paragraphs (a), (b), and (c) as paragraphs (b),
(c), and (d), respectively.
Section 1.198 is amended to take into account that an application
in which an appeal has been decided by the Board of Patent Appeals and
Interferences may also be reopened under the request for continued
examination provisions of Sec. 1.114.
Section 1.312 is amended based upon previously proposed changes to
that section. See Changes to Implement the Patent Business Goals,
Notice of Proposed Rulemaking, 64 FR 53772, 53810, 53838 (October 4,
1999), 1228 Off. Gaz. Pat. Office 15, 49, 76 (November 2, 1999). These
changes are being adopted in this interim rule because of the overlap
between the continued examination provisions of new Sec. 1.114 and the
withdrawal from issue provisions of Sec. 1.313 (which in turn overlaps
with the provisions of Sec. 1.312).
The Office proposed changing Sec. 1.312 to provide that any
amendment filed after the date the issue fee is paid must be
accompanied by: (1) A petition under Sec. 1.313(c)(1) to withdraw the
application from issue; (2) an unequivocal statement that one or more
claims are unpatentable; and (3) an explanation as to how the amendment
is necessary to render such claim or claims patentable. The Office is
adopting this change to Sec. 1.312 by clarifying that an amendment
under Sec. 1.312 (after allowance) must be filed prior to or with
payment of the issue fee, and eliminating Sec. 1.312(b) (since the
provisions of proposed Sec. 1.312(b) are duplicative of the provisions
of proposed and adopted Sec. 1.313(c)(1)).
Section 1.313 is amended to provide that an application may also be
withdrawn from issue after payment of the issue fee on petition by the
applicant for consideration of a submission pursuant to Sec. 1.114.
Section 1.313, as amended, also adopts previously proposed changes to
that section. See Changes to Implement the Patent Business Goals, 64 FR
at 53810-11, 53838-39, 1228 Off. Gaz. Pat. Office at 49-50, 76-77.
Of the comments submitted in response to that notice of proposed
rulemaking, three comments addressed the proposed changes to
Secs. 1.312 and 1.313.
Comment (1): One comment addressing the proposed change to
Sec. 1.313 favored the proposed change to Sec. 1.313, but suggested
that Sec. 1.313(c) and Sec. 1.53(d) be amended to clarify that an
application may be withdrawn from issue after payment of the issue fee
for express abandonment in favor of a continued prosecution application
(CPA) under Sec. 1.53(d). The comment also suggested that the Office
provide a notice of rule change to accompany the notice of allowance
for some time after adoption of the change to provide further notice to
the public of the rule change.
Response: Section 1.53(d)(1)(ii)(A) as amended provides that a CPA
under Sec. 1.53(d) must be filed prior to payment of the issue fee on
the prior application unless a petition under Sec. 1.313(c) is granted
in the prior application. Since a CPA under Sec. 1.53(d) is a
continuing application, there is no need to amend Sec. 1.313(c) to
specifically refer to a CPA. Specifically referring to a CPA under
Sec. 1.53(d) in Sec. 1.313(c) may result in confusion because: (1) An
application may be withdrawn from issue after payment of the issue fee
for express abandonment (without the filing of any type of continuing
application); (2) an application may also be withdrawn from issue after
payment of the issue fee for express abandonment in favor of a
continuing application under Sec. 1.53(b); and (3) an application may
be withdrawn from issue after payment of the issue fee for continued
examination under Sec. 1.114 (if eligible for that practice). The
suggestion concerning the notice of rule change will be taken into
account in preparing training materials
[[Page 14870]]
related to the implementation of the rule changes related to the Patent
Business Goals and the ``American Inventors Protection Act of 1999.''
Comment (2): Two comments addressing the proposed change to
Sec. 1.313 suggested that the conditions under which an applicant could
withdraw an application from issue after payment of the issue fee was
too limited, and that Sec. 1.313 should not preclude a request to
withdraw an application from issue when reasonably efficient processing
could prevent the patent from issuing without having some important
matter considered.
Response: The Office must limit withdrawal from issue after payment
of the issue fee (at applicant's initiative) to those conditions
specified in Sec. 1.313(c) due to changes to the patent printing
process, which will dramatically reduce the period between the date of
issue fee payment and the date a patent is issued. An applicant who
must have an important matter considered by the Office before a patent
is issued must file a petition under Sec. 1.313(c) to withdraw the
application from issue to have such matter considered during continued
examination under Sec. 1.114 (if eligible) or in a continuing
application, unless the applicant can meet the conditions specified in
Sec. 1.313(c)(1).
The Office cannot ensure that any petition under Sec. 1.313(c) will
be acted upon prior to the date of patent grant. See Filing of
Continuing Applications, Amendments, or Petitions after Payment of
Issue Fee, Notice, 1221 Off. Gaz. Pat. Office 14 (April 6, 1999). Since
a request for continued examination under Sec. 1.114 (unlike a CPA
under Sec. 1.53(d)) is not any type of new application filing, the
Office cannot grant a petition to convert an untimely request for
continued examination under Sec. 1.114 to a continuing application
under Sec. 1.53(b). Therefore, applicants are strongly cautioned to
file any desired request for continued examination under Sec. 1.114
prior to payment of the issue fee. In addition, applicants considering
filing a request for continued examination under Sec. 1.114 after
payment of the issue fee are strongly cautioned to call the Office of
Petitions to determine whether sufficient time remains before the
patent issue date to consider (and grant) a petition under
Sec. 1.313(c) and what steps are needed to ensure that a grantable
petition under Sec. 1.313(c) is before an appropriate official in the
Office of Petitions in sufficient time to grant the petition before the
patent is issued. Finally, applicants filing a request for continued
examination under Sec. 1.114 after allowance but prior to payment of
the issue fee are cautioned against subsequently paying the issue fee
because doing so may result in the prompt issuance of a patent.
Classification
Administrative Procedure Act
The changes in this interim rule concern only the manner by which
an applicant obtains continued examination of a nonprovisional
application, requests conversion of a provisional application into a
nonprovisional application, or claims the benefit of a provisional
application, as provided for in Secs. 4403 and 4801 of the ``American
Inventors Protection Act of 1999'' (Title IV of S. 1948, incorporated
into Pub. L. 106-113). Therefore, prior notice and an opportunity for
public comment are not required pursuant to 5 U.S.C. 553(b)(A), or any
other law.
Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553 (or any other law), the analytical
requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.)
are inapplicable.
Executive Order 13132
This interim rule does not contain policies with federalism
implications sufficient to warrant preparation of a Federalism
Assessment under Executive Order 13132 (August 4, 1999).
Executive Order 12866
This interim rule has been determined to be not significant for
purposes of Executive Order 12866 (September 30, 1993).
Paperwork Reduction Act
This interim rule involves information collection requirements
which are subject to review by the Office of Management and Budget
(OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et
seq.). The collections of information involved in this interim rule
have been reviewed and previously approved by OMB under the following
control numbers: 0651-0031, 0651-0032, and 0651-0033. The United States
Patent and Trademark Office is not resubmitting information collection
packages to OMB for its review and approval because the changes in this
interim rule do not affect the information collection requirements
associated with the information collections under these OMB control
numbers.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information. The principal
impact of the changes in this interim rule is to implement the changes
to Office practice necessitated by sections 4403, 4801, and 4807 of the
``American Inventors Protection Act of 1999.''
OMB Number: 0651-0031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08/21-27/31/42/43/61/62/63/64/67/68/91/92/96/
97.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or Households, Business or Other For-
Profit Institutions, Not-for-Profit Institutions and Federal
Government.
Estimated Number of Respondents: 2,040,630.
Estimated Time Per Response: 0.39 hours.
Estimated Total Annual Burden Hours: 788,421 hours.
Needs and Uses: During the processing for an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application.
The specific information required or which may be submitted
includes: Information Disclosure Statements; Terminal Disclaimers;
Petitions to Revive; Express Abandonments; Appeal Notices; Petitions
for Access; Powers to Inspect; Certificates of Mailing or Transmission;
Statements under Sec. 3.73(b); Amendments, Petitions and their
Transmittal Letters; and Deposit Account Order Forms.
OMB Number: 0651-0032.
Title: Initial Patent Application.
Form Number: PTO/SB/01-07/13PCT/17-19/29/101-110.
Type of Review: Approved through October of 2002.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 344,100.
Estimated Time Per Response: 8.7 hours.
Estimated Total Annual Burden Hours: 2,994,160 hours.
Needs and Uses: The purpose of this information collection is to
permit the United States Patent and Trademark Office to determine
whether an application meets the criteria set forth in the patent
statute and regulations.
[[Page 14871]]
The standard Fee Transmittal form, New Utility Patent Application
Transmittal form, New Design Patent Application Transmittal form, New
Plant Patent Application Transmittal form, Declaration, and Plant
Patent Application Declaration will assist applicants in complying with
the requirements of the patent statute and regulations, and will
further assist the United States Patent and Trademark Office in
processing and examination of the application.
OMB Number: 0651-0033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/50-57; PTOL-85b.
Type of Review: Approved through September of 2000.
Affected Public: Individuals or Households, Business or Other For-
Profit, Not-for-Profit Institutions and Federal Government.
Estimated Number of Respondents: 135,250.
Estimated Time Per Response: 0.325 hour.
Estimated Total Annual Burden Hours: 43,893 hours.
Needs and Uses: This collection of information is required to
administer the patent laws pursuant to title 35, U.S.C., concerning the
issuance of patents and related actions including correcting errors in
printed patents, refiling of patent applications, requesting
reexamination of a patent, and requesting a reissue patent to correct
an error in a patent. The affected public includes any individual or
institution whose application for a patent has been allowed or who
takes action as covered by the applicable rules.
Comments are invited on: (1) Whether the collection of information
is necessary for proper performance of the functions of the agency; (2)
the accuracy of the agency's estimate of the burden; (3) ways to
enhance the quality, utility, and clarity of the information to be
collected; and (4) ways to minimize the burden of the collection of
information to respondents.
Interested persons are requested to send comments regarding these
information collections, including suggestions for reducing this
burden, to Robert J. Spar, Director, Special Program Law Office, United
States Patent and Trademark Office, Washington, D.C. 20231, or to the
Office of Information and Regulatory Affairs, OMB, 725 17th Street,
N.W., Washington, D.C. 20503, (Attn: PTO Desk Officer).
Notwithstanding any other provision of law, no person is required
to respond to nor shall a person be subject to a penalty for failure to
comply with a collection of information subject to the requirements of
the Paperwork Reduction Act unless that collection of information
displays a currently valid OMB control number.
List of Subjects in 37 CFR Part 1
Administrative practice and procedure, Courts, Freedom of
information, Inventions and patents, Reporting and recordkeeping
requirements, Small businesses.
For the reasons set forth in the preamble, 37 CFR Part 1 is amended
as follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 is revised to read as
follows:
Authority: 35 U.S.C. 2(b)(2), unless otherwise noted.
2. Section 1.7 is revised to read as follows:
Sec. 1.7 Times for taking action; Expiration on Saturday, Sunday or
Federal holiday.
(a) Whenever periods of time are specified in this part in days,
calendar days are intended. When the day, or the last day fixed by
statute or by or under this part for taking any action or paying any
fee in the United States Patent and Trademark Office falls on Saturday,
Sunday, or on a Federal holiday within the District of Columbia, the
action may be taken, or the fee paid, on the next succeeding business
day which is not a Saturday, Sunday, or a Federal holiday. See
Sec. 1.304 for time for appeal or for commencing civil action.
(b) If the day that is twelve months after the filing date of a
provisional application under 35 U.S.C. 111(b) and Sec. 1.53(c) falls
on Saturday, Sunday, or on a Federal holiday within the District of
Columbia, the period of pendency shall be extended to the next
succeeding secular or business day which is not a Saturday, Sunday, or
a Federal holiday.
3. Section 1.17 is amended by adding paragraph (e) and revising
paragraph (i) to read as follows:
Sec. 1.17 Patent application processing fees.
* * * * *
(e) To request continued examination pursuant to Sec. 1.114:
By a small entity 345.00
By other than a small entity 690.00
* * * * *
(i) For filing a petition to the Commissioner under one of the
following sections which refers to this paragraph 130.00
Sec. 1.12--for access to an assignment record.
Sec. 1.14--for access to an application.
Sec. 1.41--to supply the name or names of the inventor or inventors
after the filing date without an oath or declaration as prescribed by
Sec. 1.63, except in provisional applications.
Sec. 1.47--for filing by other than all the inventors or a person
not the inventor.
Sec. 1.48--for correction of inventorship, except in provisional
applications.
Sec. 1.53--to accord a filing date, except in provisional
applications.
Sec. 1.53(c)--to convert a provisional application filed under
Sec. 1.53(c) to a nonprovisional application under Sec. 1.53(b).
Sec. 1.55--for entry of late priority papers.
Sec. 1.59--for expungement and return of information.
Sec. 1.84--for accepting color drawings or photographs.
Sec. 1.91--for entry of a model or exhibit.
Sec. 1.97(d)--to consider an information disclosure statement.
Sec. 1.102--to make an application special.
Sec. 1.103--to suspend action in application.
Sec. 1.177--for divisional reissues to issue separately.
Sec. 1.313--to withdraw an application from issue.
Sec. 1.314--to defer issuance of a patent.
Sec. 1.666(b)--for access to an interference settlement agreement.
Sec. 3.81--for a patent to issue to assignee, assignment submitted
after payment of the issue fee.
* * * * *
4. Section 1.53 is amended by redesignating paragraph (c)(3) as
paragraph (c)(4), adding a new paragraph (c)(3), and revising paragraph
(d)(1) to read as follows:
Sec. 1.53 Application number, filing date, and completion of
application.
* * * * *
(c) * * *
(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. A request to convert a provisional
application to a nonprovisional application must be accompanied by the
fee set forth in Sec. 1.17(i) and an
[[Page 14872]]
amendment including at least one claim as prescribed by the second
paragraph of 35 U.S.C. 112, unless the provisional application under
paragraph (c) of this section otherwise contains at least one claim as
prescribed by the second paragraph of 35 U.S.C. 112. 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.
* * * * *
(d) * * *
(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 prior nonprovisional application is:
(A) A utility or plant application that was filed under 35 U.S.C.
111(a) before May 29, 2000, and is complete as defined by Sec. 1.51(b);
(B) A design application that is complete as defined by
Sec. 1.51(b); or
(C) The national stage of an international application that was
filed under 35 U.S.C. 363 before May 29, 2000, and is in compliance
with 35 U.S.C. 371; and
(ii) 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 Sec. 1.313(c) is granted in the prior application;
(B) Abandonment of the prior application; or
(C) Termination of proceedings on the prior application.
* * * * *
Section 1.78 is amended by revising paragraph (a)(3) to read as
follows:
Sec. 1.78 Claiming benefit of earlier filing date and cross-references
to other applications.
(a) * * *
(3) A nonprovisional application other than for a design patent may
claim an invention disclosed in one or more prior filed provisional
applications. In order for a nonprovisional application to claim the
benefit of one or more prior filed provisional applications, each prior
provisional application must name as an inventor at least one inventor
named in the later filed nonprovisional application and disclose the
named inventor's invention claimed in at least one claim of the later
filed nonprovisional application in the manner provided by the first
paragraph of 35 U.S.C. 112. In addition, each prior provisional
application must be entitled to a filing date as set forth in
Sec. 1.53(c), have any required English-language translation filed
therein within the time period set forth in Sec. 1.52(d), and have paid
therein the basic filing fee set forth in Sec. 1.16(k) within the time
period set forth in Sec. 1.53(g).
* * * * *
5. Section 1.97 is amended by revising paragraph (b) to read as
follows:
Sec. 1.97 Filing of information disclosure statement.
* * * * *
(b) An information disclosure statement shall be considered by the
Office if filed by the applicant within any one of the following time
periods:
(1) Within three months of the filing date of a national
application;
(2) Within three months of the date of entry of the national stage
as set forth in Sec. 1.491 in an international application;
(3) Before the mailing of a first Office action on the merits; or
(4) Before the mailing of a first Office action after the filing of
a request for continued examination under Sec. 1.114.
* * * * *
6. Section 1.104 is amended by revising paragraph (c)(4) to read as
follows:
Sec. 1.104 Nature of examination.
* * * * *
(c) * * *
(4) Subject matter which is developed by another person which
qualifies as prior art only under 35 U.S.C. 102(e), (f) or (g) may be
used as prior art under 35 U.S.C. 103 against a claimed invention
unless the entire rights to the subject matter and the claimed
invention were commonly owned by the same person or organization or
subject to an obligation of assignment to the same person or
organization at the time the claimed invention was made.
* * * * *
7. Section 1.113 is revised to read as follows:
Sec. 1.113 Final rejection or action.
(a) On the second or any subsequent examination or consideration by
the examiner the rejection or other action may be made final, whereupon
applicant's or patent owner's reply is limited to appeal in the case of
rejection of any claim (Sec. 1.191), or to amendment as specified in
Sec. 1.114 or Sec. 1.116. Petition may be taken to the Commissioner in
the case of objections or requirements not involved in the rejection of
any claim (Sec. 1.181). Reply to a final rejection or action must
comply with Sec. 1.114 or paragraph (c) of this section.
(b) In making such final rejection, the examiner shall repeat or
state all grounds of rejection then considered applicable to the claims
in the application, clearly stating the reasons in support thereof.
(c) Reply to a final rejection or action must include cancellation
of, or appeal from the rejection of, each rejected claim. If any claim
stands allowed, the reply to a final rejection or action must comply
with any requirements or objections as to form.
8. Section 1.114 is added immediately following Sec. 1.113 to read
as follows:
Sec. 1.114 Request for continued examination.
(a) An applicant may request continued examination of the
application by filing a submission and the fee set forth in
Sec. 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under Sec. 1.313 is
granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals
for the Federal Circuit under 35 U.S.C. 141, or the commencement of a
civil action under 35 U.S.C. 145 or 146, unless the appeal or civil
action is terminated.
(b) A submission as used in this section includes, but is not
limited to, an information disclosure statement, an amendment to the
written description, claims, or drawings, new arguments, or new
evidence in support of patentability. If reply to an Office action
under 35 U.S.C. 132 is outstanding, the submission must meet the reply
requirements of Sec. 1.111.
(c) If an applicant timely files a submission and fee set forth in
Sec. 1.17(e), the Office will withdraw the finality of any Office
action and the submission will be entered and considered. If an
applicant files a request for continued examination under this section
after appeal, but prior to a decision on the appeal, it will be treated
as a request to withdraw the appeal and to reopen prosecution of the
application before the examiner. An appeal brief under Sec. 1.192 or a
reply brief under Sec. 1.193(b), or related papers, will not be
considered a submission under this section.
(d) The provisions of this section do not apply in any application
in which the Office has not mailed at least one of an Office action
under 35 U.S.C. 132 or a notice of allowance under 35 U.S.C. 151. The
provisions of this section also do not apply to:
(1) A provisional application;
[[Page 14873]]
(2) An application for a utility or plant patent filed under 35
U.S.C. 111(a) before June 8, 1995;
(3) An international application filed under 35 U.S.C. 363 before
June 8, 1995;
(4) An application for a design patent; or
(5) A patent under reexamination.
9. Section 1.116 is revised to read as follows:
Sec. 1.116 Amendments after final action or appeal.
(a) An amendment after final action or appeal must comply with
Sec. 1.114 or this section.
(b) After a final rejection or other final action (Sec. 1.113),
amendments may be made canceling claims or complying with any
requirement of form expressly set forth in a previous Office action.
Amendments presenting rejected claims in better form for consideration
on appeal may be admitted. The admission of, or refusal to admit, any
amendment after final rejection, and any related proceedings, will not
operate to relieve the application or patent under reexamination from
its condition as subject to appeal or to save the application from
abandonment under Sec. 1.135.
(c) If amendments touching the merits of the application or patent
under reexamination are presented after final rejection, or after
appeal has been taken, or when such amendment might not otherwise be
proper, they may be admitted upon a showing of good and sufficient
reasons why they are necessary and were not earlier presented.
(d) No amendment can be made as a matter of right in appealed
cases. After decision on appeal, amendments can only be made as
provided in Sec. 1.198, or to carry into effect a recommendation under
Sec. 1.196.
10. Section 1.198 is revised to read as follows:
Sec. 1.198 Reopening after decision.
Cases which have been decided by the Board of Patent Appeals and
Interferences will not be reopened or reconsidered by the primary
examiner except under the provisions of Sec. 1.114 or Sec. 1.196
without the written authority of the Commissioner, and then only for
the consideration of matters not already adjudicated, sufficient cause
being shown.
11. Section 1.312 is revised to read as follows:
Sec. 1.312 Amendments after allowance.
No amendment may be made as a matter of right in an application
after the mailing of the notice of allowance. Any amendment filed
pursuant to this section must be filed before or with the payment of
the issue fee, and may be entered on the recommendation of the primary
examiner, approved by the Commissioner, without withdrawing the
application from issue.
12. Section 1.313 is revised to read as follows:
Sec. 1.313 Withdrawal from issue.
(a) Applications may be withdrawn from issue for further action at
the initiative of the Office or upon petition by the applicant. To
request that the Office withdraw an application from issue, applicant
must file a petition under this section including the fee set forth in
Sec. 1.17(i) and a showing of good and sufficient reasons why
withdrawal of the application is necessary. If the Office withdraws the
application from issue, the Office will issue a new notice of allowance
if the Office again allows the application.
(b) Once the issue fee has been paid, the Office will not withdraw
the application from issue at its own initiative for any reason except:
(1) A mistake on the part of the Office;
(2) A violation of Sec. 1.56 or illegality in the application;
(3) Unpatentability of one or more claims; or
(4) For interference.
(c) Once the issue fee has been paid, the application will not be
withdrawn from issue upon petition by the applicant for any reason
except:
(1) Unpatentability of one of more claims, which petition must be
accompanied by an unequivocal statement that one or more claims are
unpatentable, an amendment to such claim or claims, and an explanation
as to how the amendment causes such claim or claims to be patentable;
(2) Consideration of a submission pursuant to Sec. 1.114; or
(3) Express abandonment of the application. Such express
abandonment may be in favor of a continuing application.
(d) A petition under this section will not be effective to withdraw
the application from issue unless it is actually received and granted
by the appropriate officials before the date of issue. Withdrawal of an
application from issue after payment of the issue fee may not be
effective to avoid publication of application information.
Dated: March 10, 2000.
Q. Todd Dickinson,
Assistant Secretary of Commerce and Commissioner of Patents and
Trademarks.
[FR Doc. 00-6514 Filed 3-17-00; 8:45 am]
BILLING CODE 3510-16-P