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.
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: rce.comments@uspto.gov. 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 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 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) 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) 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 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.
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 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,
whereuponapplicant'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;
(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