United States Patent and Trademark Office OG Notices: 24 January 2006

                            DEPARTMENT OF COMMERCE
                          Patent and Trademark Office
                                 37 CFR Part 1
                           [Docket No.: 2005-P-066]
                                 RIN 0651-AB93

               Changes To Practice for Continuing Applications,
               Requests for Continued Examination Practice, and
             Applications Containing Patentably Indistinct Claims

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Notice of proposed rule making.

SUMMARY: Continued examination practice, including the use of both
continuing applications and requests for continued examination, permits
applicants to obtain further examination and advance an application to
final agency action. This practice allow applicants to craft their
claims in light of the examiner's evidence and arguments, which in turn
may lead to well-designed claims that give the public notice of
precisely what the applicant regards as his or her invention. However,
each continued examination filing, whether a continuing application or
request for continued examination, requires the United States Patent
and Trademark Office (Office) to delay taking up a new application and
thus contributes to the backlog of unexamined applications before the
Office. In addition, current practice allows an applicant to generate
an unlimited string of continued examination filings from an initial
application. In such a string of continued examination filings, the
exchange between examiners and applicants becomes less beneficial and
suffers from diminishing returns as each of the second and subsequent
continuing applications or requests for continued examination in a
series is filed. Moreover, the possible issuance of multiple patents
arising from such a process tends to defeat the public notice function
of patent claims in the initial application.
   The Office is making every effort to become more efficient, to
ensure that the patent application process promotes innovation, and to
improve the quality of issued patents. With respect to continued
examination practice, the Office is proposing to revise the patent
rules of practice to better focus the application process. The revised
rules would require that second or subsequent continued examination
filings, whether a continuation application, a continuation-in-part
application, or a request for continued examination, be supported by a
showing as to why the amendment, argument, or evidence presented could
not have been previously submitted. It is expected that these rules
will make the exchange between examiners and applicants more efficient
and effective. The revised rules should also improve the quality of
issued patents, making them easier to evaluate, enforce, and litigate.
Moreover, under the revised rules patents should issue sooner, thus
giving the public a clearer understanding of what is patented.
   The revised rules would also ease the burden of examining multiple
applications that have the same effective filing date, overlapping
disclosure, a common inventor, and common assignee by requiring that
all patentably indistinct claims in such applications be submitted in a
single application.
   The changes proposed in this notice will also allow the Office to
focus its patent examining resources on new applications instead of
multiple continued examination filings that contain amendments or
evidence that could have been submitted earlier, and thus allow the
Office to reduce the backlog of unexamined applications. This will mean
faster and more effective examination for the vast majority of
applicants without any additional work on the applicant's part.
Additional resources will be devoted to multiple continued examination
filings only where necessary.
   Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before May 3, 2006. No public hearing
will be held.

ADDRESSES: Comments should be sent by electronic mail message over the
Internet addressed to AB93Comments@uspto.gov. Comments may also be
submitted by mail addressed to: Mail Stop Comments - Patents,
Commissioner for Patents, P.O. Box 1450, Alexandria, VA, 22313-1450, or
by facsimile to (571) 273-7735, 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 prefers that the comments be submitted on
a DOS formatted 3 1/2 inch disk accompanied by a paper copy.
   Comments may also be sent by electronic mail message over the
Internet via the Federal eRulemaking Portal. See the Federal
eRulemaking Portal Web site http://www.regulations.gov for additional
instructions on providing comments via the Federal eRulemaking Portal.
   The comments will be available for public inspection at the Office
of the Commissioner for Patents, located in Madison East, Tenth Floor,
600 Dulany Street, Alexandria, Virginia, and will be available via the
Office Internet Web site address: http://www.uspto.gov. Because
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, Senior Patent
Attorney, Office of the Deputy Commissioner for Patent Examination
Policy, by telephone at (571) 272-8800, by mail addressed to: Mail Stop
Comments - Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA, 22313-1450, or by facsimile to (571) 273-7735, marked to the
attention of Robert W. Bahr.

SUPPLEMENTARY INFORMATION: The current volume of continued examination
filings - including both continuing applications and requests for
continued examination - and duplicative applications that contain
"conflicting" or patentably indistinct claims, are having a crippling
effect on the Office's ability to examine "new" (i.e., non-
continuing) applications. The cumulative effect of these continued
examination filings is too often to divert patent examining resources
from the examination of new applications to new technology and
innovations, to the examination of applications that have already been
examined, have issued as patents, or have been abandoned. In addition,
when the continued examination process fails to reach a final
resolution, and when multiple applications containing claims to
patentably indistinct inventions are filed, the public is left
uncertain as to what the set of patents resulting from the initial
application will cover. Thus, these practices impose a burden on
innovation both by retarding the Office's ability to examine new
applications and by undermining the function of claims to notify the
public as to what technology is or is not available for use.
   Commentators have noted that the current unrestricted continuing
application and request for continued examination practices preclude
the Office from ever finally rejecting an application or even from ever
finally allowing an application. See Mark A. Lemley and Kimberly A.
Moore, Ending Abuse of Patent Continuations, 84 B.U. L. Rev. 63, 64
(2004). The burdens imposed by the repetitive filing of applications
(as continuing applications) on the Office (as well as on the public)
is not a recent predicament. See To Promote the Progress of Useful
Arts, Report of the President's Commission on the Patent System, at 17-
18 (1966) (recommending changes to prevent the repetitive filing of
dependent (i.e., continuing) applications). Unrestricted continued
examination filings and multiple applications containing patentably
indistinct claims, however, are now having such an impact on the
Office's ability to examine new applications that it is now appropriate
for the Office to clarify the applicant's duty to advance the
application to final action by placing some restrictions on the filing
of multiple continuing applications, requests for continued
examination, and other multiple applications to the same invention. See
35 U.S.C. 2(b) (authorizes the Office to establish regulations, not
inconsistent with law, which shall govern the conduct of proceedings in
the Office, and shall facilitate and expedite the processing of patent
applications). This would permit the Office to apply the patent
examining resources currently absorbed by these applications to the
examination of new applications and thereby reduce the backlog of
unexamined applications.
   The Office also notes that not every applicant comes to the Office
prepared to particularly point out and distinctly claim what the
applicant regards as his invention, for example, where the applicant's
attorney or agent has not adequately reviewed or revised the
application documents (often a literal translation) received from the
applicant. In these situations examination of what applicants actually
regard as their invention may not begin until after one or more
continued examination filings. Applicants should not rely on an
unlimited number of continued examination filings to correct
deficiencies in the claims and disclosure that applicant or applicant's
representative have not adequately reviewed. In addition, a small
minority of applicants have misused continued examination practice with
multiple continued examination filings in order to simply delay the
conclusion of examination. This skirts applicant's duty to make a bona
fide attempt to advance the application to final agency action and
impairs the ability of the Office to examine new and existing
applications. It also prejudices the public by permitting applicants to
keep applications in pending status while awaiting developments in
similar or parallel technology and then later amending the pending
application to cover the developments. The courts have permitted the
addition of such claims, when supported under 35 U.S.C. 112, para. 1,
to encompass products or processes discovered in the marketplace. See
PIN/NIP, Inc., v. Platt Chemical Co., 304 F.3d 1235, 1247, 64 USPQ2d 1344,
1352 (Fed. Cir. 2002). However, the practice of maintaining continuing
applications for the purpose of adding claims after such discoveries is
not calculated to advance prosecution before the Office.
   The Office, in light of its backlog and anticipated continued
increase in applications is making every effort to become more
efficient. Achieving greater efficiency requires the cooperation of
those who provide the input into the examination process, the
applicants and their representatives. With respect to continued
examination practice, the Office is proposing to revise the rules of
practice to assure that multiple continued examination filings from a
single application do not absorb agency resources unless necessary for
effective examination. The revised rules would require that second or
subsequent continuation or continuation-in-part applications and second or
subsequent requests for continued examination of an application include a
showing as to why the amendment, argument, or evidence presented could not
have been previously submitted. It is expected that these rules will make
the exchange between examiners and applicants more efficient, get claims to
issue faster, and improve the quality of issued patents. The revised
rules would also ease the burden of examining multiple applications
that have the same effective filing date, overlapping disclosure, a
common inventor, and common assignee by requiring that all patentably
indistinct claims in such applications be submitted in a single application
absent good and sufficient reason.
   The Office's Patent Application Locating and Monitoring (PALM)
records show that, in fiscal year 2005, the Office received
approximately 317,000 nonprovisional applications, and that about
62,870 of these nonprovisional applications were continuing
applications. In addition, the Office's PALM records show that the
Office received about 52,750 requests for continued examination in
fiscal year 2005. Thus, about thirty percent (63,000 + 52,000)/(317,000
+ 52,000) of the Office's patent examining resources must be applied to
examining continued examination filings that require reworking earlier
applications instead of examining new applications.
   In comparison, the Office issued over 289,000 first Office actions
on the merits in fiscal year 2005. Had there been no continued
examination filings, the Office could have issued an action for every
new application received in 2005 and reduced the backlog by issuing
actions in 35,000 older cases. Instead, the Office's backlog grew
because of the large number of continued examination filings.
   Thus, current continued examination practice and the filing of
multiple applications containing patentably indistinct claims are
impairing the Office's ability to examine new applications without real
certainty that these practices effectively advance prosecution, improve
patent quality, or serve the typical applicant or the public. These
proposed changes to the rules in title 37 of the Code of Federal
Regulations (CFR) are intended to ensure that continued examination
filings are used efficiently to move applications forward. The Office
expects that the new rules will lead to more focused and efficient
examination, improve the quality of issued patents, result in patents
that issue faster, and give the public earlier notice of just what
patentees claim. The changes to the rules also address the growing
practice of filing (by a common applicant or assignee) of multiple
applications containing patentably indistinct claims.
   Of the roughly 63,000 continuing applications filed in fiscal year
2005, about 44,500 were designated as continuation/continuation-in-part
(CIP) applications, and about 18,500 were designated as divisional
applications. About 11,800 of the continuation/CIP applications were
second or subsequent continuation/CIP applications. Of the over 52,000
requests for continued examination filed in fiscal year 2005, just
under 10,000 were second or subsequent requests for continued
examination. Thus, the Office's proposed requirements for seeking
second and subsequent continuations will not have an effect on the vast
majority of patent applications.
   35 U.S.C. 111(a) and 120, respectively, permit an applicant to file
a nonprovisional application and to claim the benefit of a prior-filed
nonprovisional application. Similarly, 35 U.S.C. 363 and 365(c),
respectively, permit an applicant to file an international application
under Patent Cooperation Treaty (PCT) Article 11 and 35 U.S.C. 363 and,
if the international application designates the United States of
America, claim the benefit of a prior-filed international application
designating the United States of America or a prior-filed
nonprovisional application. Similarly again, 35 U.S.C. 111(a) and
365(c) permit an applicant to file a nonprovisional application (filed
under 35 U.S.C. 111(a)) and claim the benefit of a prior-filed
international application designating the United States of America
(under 35 U.S.C. 365(c)).
   The practice of filing "continuation applications" arose early in
Office practice mainly as a procedural device to effectively permit the
applicant to amend an application after rejection and receive an
examination of the "amended" (or new) application. See In re Bogese,
22 USPQ2d 1821, 1824 (Comm'r Pats. 1991) (Bogese I). The concept of a
continuation application per se was first recognized in Godfrey v.
Eames, 68 U.S. (1 Wall.) 317, 325-26 (1864). See Bogese I, 22 USPQ2d at
1824. 35 U.S.C. 120 is a codification of the continuation application
practice recognized in Godfrey v. Eames. See id (citing In re Hogan,
559 F.2d 595, 603, 194 USPQ 527, 535 (CCPA 1977)).
   Applicants should understand, however, that there is not an
unfettered right to file multiple continuing applications without
making a bona fide attempt to claim the applicant's invention. See In
re Bogese, 303 F.3d 1362, 64 USPQ2d 1448 (Fed. Cir. 2002) (Bogese II).
While Bogese II was an extreme case, one of prosecution laches, it
makes clear that applicants face a general requirement of good faith in
prosecution and that the Director has the inherent authority, rooted in
35 U.S.C. 2, to ensure that applicants comply with that duty. See
Bogese II, 303 F.3d at 1368 n.5, 64 USPQ2d at 1452 n.5.
   The proposed rules are not an attempt to codify Bogese II or to
simply combat such extreme cases of prosecutions laches. Nor do these
rules set a per se limit on the number of continuing applications.
Compare In re Henriksen, 399 F.2d 253, 158 USPQ 224 (CCPA 1968).
Rather, they require that applicants who file multiple continuing
applications from the same initial application show that the third and
following applications in the chain are necessary to advance
prosecution. In particular, the proposed rules require that any second
or subsequent continuing application show to the satisfaction of the
Director that the amendment, argument, or evidence could not have been
submitted during the prosecution of the initial application or the
first continuing application.
   The Office is aware of case law which suggests that the Office has
no authority to place an absolute limit on the number of copending
continuing applications originating from an original application. See
In re Hogan, 559 F.2d at 603-05, 194 USPQ at 565-66; and Henriksen, 399
F.2d at 262, 158 USPQ at 231. The Office does not attempt that here. No
limit is placed on the number of continuing applications. Rather
applicants are required to show that later-filed applications in a
multiple-continuing chain are necessary to claim the invention - and do
not contain unnecessarily delayed evidence, arguments, or amendments
that could have been presented earlier. In addition, in those earlier
cases the Office had not promulgated any rules, let alone given the
public adequate notice of, or an opportunity to respond to, the ad hoc
limits imposed. See Henriksen, at 399 F.2d at 261-62, 158 USPQ at 231
(characterizing the action of the Office as akin to a retroactive rule
change that had no support in the rules of practice or Manual of Patent
Examining Procedure). Furthermore, the Court in Bogese II rejected the
view that its previous case law (e.g., Henriksen) stood for the broad
proposition that 35 U.S.C. 120 gave applicants carte blanche to prosecute
continuing applications in any desired manner. See Bogese II, 303 F.3d
at 1368 n.5, 64 USPQ2d at 1452 n.5.
   35 U.S.C. 132(b) provides for the request for continued examination
practice set forth in Sec. 1.114. Unlike continuation application
practice, the request for continued examination practice was recently
added to title 35, U.S.C., in section 4403 of the American Inventors
Protection Act of 1999. See Pub. L. 106-113, 113 Stat. 1501, 1501A-560
(1999). 35 U.S.C. 132(b) provides (inter alia) that the Office "shall
prescribe regulations to provide for the continued examination of
applications for patent at the request of the applicant." Nothing in
35 U.S.C. 132(b) or its legislative history suggests that the Office
must or even should permit an applicant to file an unlimited number of
requests for continued examination in an application. Therefore, the
Office is proposing rules that allow applicants to file their first
request for continued examination without any justification, but
require applicants to justify the need for any further requests for
continued examination in light of the past prosecution.
   The Office appreciates that appropriate continued examination
practice permits an applicant to obtain further examination and advance
an application to final action. The current unrestricted continued
examination practice, however, does not provide adequate incentives to
assure that the exchanges between an applicant and the examiner during
the examination process are efficient. The marginal value vis-a-vis the
patent examination process as a whole of exchanges between an applicant
and the examiner during the examination process tends to decrease after
the first continued examination filing. The Office resources absorbed
by the examination of a second or subsequent continued examination
filing are diverted away from the examination of new applications, thus
increasing the backlog of unexamined applications. Therefore, the
Office is proposing to require that an applicant filing a second or
subsequent continuing application or second or subsequent request for
continued examination include a showing as to why the amendment,
argument, or evidence could not have been previously submitted.
   The Office also appreciates that applicants sometimes use continued
examination practice to obtain further examination rather than file an
appeal to avoid the delays that historically have been associated with
the appeal process. The Office, however, has taken major steps to
eliminate such delays. The Board of Patent Appeals and Interferences
(BPAI) has radically reduced the inventory of pending appeals from
9,201 at the close of fiscal year 1997 to 882 at the close of fiscal
year 2005. The Office has also adopted an appeal conference program to
review the rejections in applications in which an appeal brief has been
filed to ensure that an appeal will not be forwarded to the BPAI for
decision absent the concurrence of experienced examiners. See Manual of
Patent Examining Procedure section 1208 (8th ed. 2001) (Rev. 3, August
2005) (MPEP). The Office is also in the process of adopting a pre-brief
appeal conference program to permit an applicant to request that a
panel of examiners review the rejections in his or her application
prior to the filing of an appeal brief. See New Pre-Appeal Brief
Conference Program, 1296 Off. Gaz. Pat. Office 67 (July 12, 2005).
These programs provide for a relatively expeditious review of
rejections in an application under appeal. Thus, for an applicant faced
with a rejection that he or she feels is improper from a seemingly
stubborn examiner, the appeal process offers a more effective
resolution than seeking further examination before the examiner.
   Efficient examination also requires that applicants share some of
the burden of examination when they file multiple applications
containing "conflicting" or patentably indistinct claims. The rules
of practice currently provide that "[w]here two or more applications
filed by the same applicant contain conflicting claims, elimination of
such claims from all but one application may be required in the absence
of good and sufficient reason for their retention during pendency in
more than one application." See current Sec. 1.78(b). The Office is
proposing to revise this rule so that, when an applicant (or assignee)
files multiple applications with the same effective filing date, a
common inventor and overlapping disclosures, the Office will presume
that the applications contain patentably indistinct claims. In such a
situation, the applicant must either rebut this presumption by
explaining to the satisfaction of the Director how the applications
contain only patentably distinct claims, or submit the appropriate
terminal disclaimers and explain to the satisfaction of the Director
why two or more pending applications containing "conflicting" or
patentably indistinct claims should be maintained. The effect of this
proposed rule will be to share the burden of examining multiple
applications, with overlapping disclosure, a common inventor, and the
same filing date, for double patenting.
   Double patenting exists because a party (or parties to a joint
research agreement under the Cooperative Research and Technology
Enhancement Act of 2004 (CREATE Act), Public Law 108-453, 118 Stat.
3596 (2004)) has filed multiple patent applications containing
patentably indistinct claims. The applicant (or the owner of the
application) is in a far better position than the Office to determine
whether there are one or more other applications or patents containing
patentably indistinct claims. For this reason, where an applicant
chooses to file multiple applications that are substantially the same,
it will be the applicant's responsibility to assist the Office in
resolving potential double patenting situations rather than taking no
action until faced with a double patenting rejection.
   Finally, the Office has a first action final rejection practice
under which the first Office action in a continuing application may be
made final under certain circumstances. See MPEP Sec. 706.07(b). If
the changes proposed in this notice are adopted, the Office will
discontinue this practice as no longer necessary in continuing
applications under 35 U.S.C. 120, 121, or 365(c) and in requests for
continued examination under 35 U.S.C. 132(b). The Office, however, does
not plan any change to the final action practice for the Office action
following a submission under Sec. 1.129(a). See Changes to the
Transitional Procedures for Limited Examination After Final Rejection
in Certain Applications Filed Before June 8, 1995, 70 FR 24005 (May 6,
2005), 1295 Off. Gaz. Pat. Office 22 (Jun. 7, 2005).

Discussion of Specific Rules

   Title 37 of the Code of Federal Regulations, Part 1, is proposed to
be amended as follows:

   Section 1.78: Section 1.78 is proposed to be reorganized as
follows: (1) Sec. 1.78(a) contains definitions of continuing
application, continuation application, divisional application, and
continuation-in-part application; (2) Sec. 1.78(b) contains provisions
relating to claims under 35 U.S.C. 119(e) for the benefit of a prior-
filed provisional application; (3) Sec. 1.78(c) contains provisions
relating to delayed claims under 35 U.S.C. 119(e) for the benefit of
a prior-filed provisional application; (4) Sec. 1.78(d) contains
provisions relating to claims under 35 U.S.C. 120, 121, or 365(c) for
the benefit of a prior-filed nonprovisional or international
application; (5) Sec. 1.78(e) contains provisions relating to delayed
claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-
filed nonprovisional or international application; (6) Sec. 1.78(f)
contains provisions relating to applications naming at least one
inventor in common and containing patentably indistinct claims; (7)
Sec. 1.78(g) contains provisions relating to applications or patents
under reexamination naming different inventors and containing
patentably indistinct claims; and (8) Sec. 1.78(h) contains provisions
pertaining to the treatment of parties to a joint research agreement
under the CREATE Act.
   Proposed 1.78(a)(1) defines a "continuing application" as a
nonprovisional application or international application designating the
United States of America that claims the benefit under 35 U.S.C. 120,
121, or 365(c) of a prior-filed nonprovisional application or
international application designating the United States of America.
Proposed 1.78(a)(1) further provides that an application that does not
claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-filed
application, is not a continuing application even if the application
claims the benefit under 35 U.S.C. 119(e) of a provisional application,
claims priority under 35 U.S.C. 119(a)-(d) or 365(b) to a foreign
application, or claims priority under 35 U.S.C. 365(a) or (b) to an
international application designating at least one country other than
the United States of America. A continuing application must be one of a
continuation application, a divisional application, or a continuation-
in-part application. See MPEP Sec. 201.11 ("To specify the
relationship between the applications, applicant must specify whether
the application is a continuation, divisional, or continuation-in-part
of the prior application. Note that the terms are exclusive. An
application cannot be, for example, both a continuation and a
divisional or a continuation and a continuation-in-part of the same
application.").
   Proposed 1.78(a)(2) defines a "continuation application" as a
continuing application as defined in Sec. 1.78(a)(1) that discloses
and claims only an invention or inventions that were disclosed in the
prior-filed application. See MPEP Sec. 201.07 (defines a continuation
application as an application that discloses (or discloses and claims)
only subject matter that was disclosed in the prior-filed nonprovisional
application).
   Proposed Sec. 1.78(a)(3) defines a "divisional application" as a
continuing application as defined in Sec. 1.78(a)(1) that discloses
and claims only an invention or inventions that were disclosed and
claimed in the prior-filed application, but were subject to a
requirement of unity of invention under PCT Rule 13 or a requirement
for restriction under 35 U.S.C. 121 and not elected for examination in
the prior-filed application. MPEP Sec. 201.06 defines a divisional
application as an application for an independent and distinct
invention, which discloses and claims only subject matter that was
disclosed in the prior-filed nonprovisional application. Proposed Sec.
1.78(a)(3), however, limits a the definition of "divisional
application" to an application that claims only an invention or
inventions that were subject to a requirement of unity of invention
under PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121
and not elected for examination in the prior-filed application. See 35
U.S.C. 121 ("[i]f two or more independent and distinct inventions are
claimed in one application, the Director may require the application to
be restricted to one of the inventions [and i]f the other invention is
made the subject of a divisional application which complies with the
requirements of [35 U.S.C.] 120 * * *").
   Proposed Sec. 1.78(a)(4) defines a "continuation-in-part application"
as a continuing application as defined in Sec. 1.78(a)(1) that discloses
subject matter that was not disclosed in the prior-filed application. See
MPEP Sec. 201.08 (a continuation-in-part repeats some substantial portion
or all of the earlier nonprovisional application and adds matter not
disclosed in the prior-filed nonprovisional application).
   Proposed Sec. 1.78(b) contains provisions relating to claims under
35 U.S.C. 119(e) for the benefit of a prior-filed provisional application.
35 U.S.C. 119(e)(1) requires that a provisional application disclose the
invention claimed in at least one claim of the later-filed application in
the manner provided by 35 U.S.C. 112, para. 1, for the later-filed
application to actually receive the benefit of the filing date of the
provisional application. See New Railhead Mfg., L.L.C. v. Vermeer Mfg.
Co., 298 F.3d 1290, 1294, 63 USPQ2d 1843, 1846 (Fed. Cir. 2002) (for a
nonprovisional application to actually receive the benefit of the filing
date of the provisional application, "the specification of the provisional
[application] must `contain a written description of the invention and the
manner and process of making and using it, in such full, clear, concise,
and exact terms,' 35 U.S.C. 112 para. 1, to enable an ordinarily skilled
artisan to practice the invention claimed in the nonprovisional
application"). Proposed Sec. 1.78(b), however, does not also state (as
does current Sec. 1.78(a)(4)) that the provisional application discloses
the invention claimed in at least one claim of the later-filed application
in the manner provided by 35 U.S.C. 112, para. 1, because: (1) It is not
necessary for the rules of practice to restate provisions of statute; and
(2) the Office does not require or check for such a disclosure as a
condition of permitting an application to claim the benefit of the filing
date of a provisional application.
   Proposed Sec. 1.78(b) also provides that the nonprovisional
application or international application designating the United States
of America must be filed not later than twelve months after the date on
which the provisional application was filed (35 U.S.C. 119(e)), and
that this twelve-month period is subject to 35 U.S.C. 21(b) and Sec.
1.7(a) (proposed Sec. 1.78(b)(1)). 35 U.S.C. 21(b) and Sec. 1.7(a)
provide that when the day, or the last day, for taking any action
(e.g., filing a nonprovisional application within twelve months of the
date on which the provisional application was filed) or paying any fee
in the Office falls on Saturday, Sunday, or a Federal holiday within
the District of Columbia, the action may be taken, or fee paid, on the
next succeeding secular or business day. Proposed Sec. 1.78(b)
otherwise contains the provisions of current Sec. 1.78(a)(4) and
(a)(5) (with the changes in Provisions for Claiming the Benefit of a
Provisional Application with a Non-English Specification and Other
Miscellaneous Matters, 70 FR 56119 (Sept. 26, 2005), 1299 Off. Gaz.
Pat. Office 142 (Oct. 25, 2005) (final rule)).
   Proposed Sec. 1.78(c) contains provisions relating to delayed
claims under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application. Proposed Sec. 1.78(c) contains the provisions
of current Sec. 1.78(a)(6).
   Proposed Sec. 1.78(d) contains provisions relating to claims under
35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed
nonprovisional or international application.
   Proposed Sec. 1.78(d)(1) provides certain conditions under which
an application may claim the benefit of a prior-filed nonprovisional
application or international application designating the United States
of America under 35 U.S.C. 120, 121, or 365(c) and Sec. 1.78.
The Office will refuse to enter, or will delete if already present, any
specific reference to a prior-filed application that is not permitted
by Sec. 1.78(d)(1) (i.e., any claim for the benefit of a prior-filed
nonprovisional application or international application designating the
United States of America that does not meet one of the conditions
specified in Secs. 1.78(d)(1)(i) through 1.78(d)(1)(iii) and in
which a petition under Sec. 1.78(d)(1)(iv) either has not been filed
or is not granted). If the claim for the benefit of a prior-filed
nonprovisional application or international application designating the
United States of America is not permitted by Sec. 1.78(d)(1), the
Office will refuse any benefit under 35 U.S.C. 120, 121, or 365(c) and
Sec. 1.78 of the prior-filed nonprovisional application or
international application designating the United States of America
during proceedings before the Office.
   Proposed Sec. 1.78(d)(1) provides that a nonprovisional application that
is a continuation application as defined in Sec. 1.78(a)(2) or a
continuation-in-part application as defined in Sec. 1.78(a)(4) may claim
the benefit under 35 U.S.C. 120, 121, or 365(c)) of only a single prior-
filed application, if the benefit of such prior-filed application is not
claimed in any other nonprovisional application other than a divisional
application in compliance with Sec. 1.78(d)(1)(ii), and no request for
continued examination under Sec. 1.114 has been filed in the prior-filed
application (proposed Sec. 1.78(d)(1)(i)). This provision will permit an
applicant to continue prosecution of an application (other than a
continuing application) via a continuation or continuation-in-part
application as an alternative to a request for continued examination under
Sec. 1.114 (in the event that the prior-filed application is a design
application, the applicant needs to add or claim subject matter not
disclosed in the prior-filed application, or the applicant has other
reasons for preferring a continuation or continuation-in-part application
over a request for continued examination under Sec. 1.114).
   Proposed Sec. 1.78(d)(1)(i) will also permit an applicant to
continue prosecution of claims in a continuation-in-part application
(via a "further" continuation or continuation-in-part application)
that are directed solely to subject matter added in a "first"
continuation-in-part application (provided that the "further"
continuation or continuation-in-part application does not also claim
the benefit of the prior-filed application relative to the "first"
continuation-in-part application). At least one claim of a later-filed
application must be disclosed in the prior-filed application in the
manner provided by 35 U.S.C. 112, para. 1, for the later-filed application
to actually receive the benefit of the filing date of the prior-filed
application (35 U.S.C. 120), and the term of any resulting patent will
be measured under 35 U.S.C. 154(a)(2) from the filing date of the
prior-filed application, even if the later-filed application never
receives any benefit from the prior-filed application. See Abbott Lab.
v. Novopharm Ltd., 104 F.3d 1305, 1309, 41 USPQ2d 1535, 1537 (Fed. Cir.
1997). Thus, the Office is not proposing to require that such
"further" continuation or continuation-in-part application contain a
showing that all of the claims are directed solely to subject matter
added in the "first" continuation-in-part application. Rather,
proposed Sec. 1.78(d)(1)(i) permits the "further" continuation or
continuation-in-part application to claim the benefit of the first
continuation-in-part application, but does not permit the "further"
continuation or continuation-in-part application to also claim the
benefit of the prior-filed initial application (the prior-filed
application relative to the first continuation-in-part application).
For example, consider an applicant who files: (1) An initial
application, "A": (2) a continuation-in-part application, "B,"
claiming the benefit of application A; and (3) a "further"
continuation or continuation-in-part application "C," claiming the
benefit of application B. Under proposed 1.78(d)(i), application C
could not claim any benefit from application A (except as permitted
under proposed Sec. 1.78(d)(1)(iv)).
   Proposed Sec. 1.78(d)(1)(i) will also permit an applicant whose
application (other than a continuing application) contains rejected
claims and allowed claims to obtain a patent on the allowed claims and
continue prosecution of the rejected or other claims in a continuation
or continuation-in-part application.
   Proposed Sec. 1.78(d)(1) also provides that a nonprovisional
application that is a divisional application as defined in Sec.
1.78(a)(3) may claim the benefit under 35 U.S.C. 120, 121, or 365(c))
of only a single prior-filed application, if the prior-filed
application was subject to a requirement of unity of invention under
PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121, and
the divisional application contains only claims directed to an
invention or inventions that were identified in such requirement of
unity of invention or for restriction but were not elected for
examination in the prior-filed application (proposed Sec. 1.78(d)(1)(ii)).
This will permit an applicant to obtain examination of claims that were
withdrawn from consideration in the prior-filed application due to a
requirement of unity of invention under PCT Rule 13 or a requirement for
restriction under 35 U.S.C. 121. Proposed Sec. 1.78(d)(1)(ii) permits
"involuntary" divisional applications (a continuing application filed as a
result of a requirement of unity of invention under PCT Rule 13 or
requirement for restriction under 35 U.S.C. 121 in the prior-filed
application), but does not permit "voluntary divisional" applications (a
continuing application not filed as a result of a requirement of unity of
invention under PCT Rule 13 or requirement for restriction under 35 U.S.C.
121 in the prior-filed application).
   Proposed Sec. 1.78(d)(1) also provides that a nonprovisional
application that is either a continuation application as defined in
Sec. 1.78(a)(2) or a continuation-in-part application as defined in
Sec. 1.78(a)(4) may claim the benefit under 35 U.S.C. 120, 121, or
365(c)) of only either a single divisional application in compliance
with Sec. 1.78(d)(1)(ii) and the prior-filed application whose benefit
is claimed in such single divisional application, if no request for
continued examination under Sec. 1.114 has been filed in the prior-
filed divisional application (proposed Sec. 1.78(d)(1)(iii)). This
provision will permit an applicant to continue prosecution of a
divisional application via a single continuation application or
continuation-in-part application as an alternative to a request for
continued examination under Sec. 1.114. Proposed Sec. 1.78(d)(1)(iii),
however, would not allow an applicant to file more than a single
continuation application or continuation-in-part application of a
divisional application as of right. Proposed Sec. 1.78(d)(1)(iii) will
also permit an applicant whose divisional application contains rejected
claims and allowed claims to obtain a patent on the allowed claims, and
continue prosecution of the rejected or other claims in a single
continuation or continuation-in-part application.
   Proposed Sec. 1.78(d)(1) also provides that a continuing
nonprovisional application that is filed to obtain consideration of an
amendment, argument, or evidence that could not have been submitted
during the prosecution of the prior-filed application may claim the
benefit under 35 U.S.C. 120, 121, or 365(c) of such prior-filed
application (proposed Sec. 1.78(d)(1)(iv)). Proposed Sec.
1.78(d)(1)(iv) specifically provides that such a continuing nonprovisional
application must have filed therein a petition accompanied by the fee
set forth in Sec. 1.17(f) and a showing to the satisfaction of the
Director that the amendment, argument, or evidence could not have been
submitted during the prosecution of the prior-filed application. This
will permit an applicant to continue prosecution of an application via
a continuing application to obtain consideration of an amendment,
argument, or evidence that could not have been submitted during the
prosecution of the prior-filed application. Applicants are permitted to
submit any desired amendment, argument, or evidence after the first
Office action in the prior-filed application, and are further permitted
to file either a single continuation or continuation-in-part
application (proposed Secs. 1.78(d)(1)(i) and 1.78(d)(1)(iii)) or
a single request for continued examination under Sec. 1.114 to submit
any desired amendment, argument, or evidence before or after the first
Office action in the continuation or continuation-in-part application
or request for continued examination under Sec. 1.114. Since multiple
opportunities are given to submit any desired amendment, argument, or
evidence, that an amendment, argument, or evidence is refused entry
because prosecution in the prior-filed application is again closed
(after the filing of a continuation or continuation-in-part application
(proposed Secs. 1.78(d)(1)(i) and 1.78(d)(1)(iii)) or a request
for continued examination under Sec. 1.114) will not by itself be a
sufficient reason to warrant the grant of a petition under Sec.
1.78(d)(1)(iv). Rather, an applicant will be expected to demonstrate
why the amendment, argument, or evidence could not have been submitted
prior to the close of prosecution in the prior-filed application.
Proposed Sec. 1.78(d)(1)(iv) also sets forth the time period within
which such a petition must be provided: (1) If the later-filed
continuing application is an application filed under 35 U.S.C. 111(a),
within four months from the actual filing date of the later-filed
application; and (2) if the later-filed continuing application is a
nonprovisional application which entered the national stage from an
international application after compliance with 35 U.S.C. 371, within
four months from the date on which the national stage commenced under
35 U.S.C. 371(b) or (f) in the later-filed international application.
   Proposed Sec. 1.78(d) also provides that the Office will refuse to
enter, or will delete if present, any specific reference to a prior-
filed application that is not permitted by proposed Sec. 1.78(d)
(proposed Sec. 1.78(d)(3)). If the claim for the benefit of a prior-
filed nonprovisional application or international application
designating the United States of America is not permitted by Sec.
1.78(d)(1), the Office will refuse any benefit under 35 U.S.C. 120,
121, or 365(c) and Sec. 1.78 of the prior-filed nonprovisional
application or international application designating the United States
of America during proceedings before the Office. Proposed Sec. 1.78(d)
also provides that the entry of or failure to delete a specific
reference to a prior-filed application that is not permitted by Sec.
1.78(d)(1) does not constitute a waiver of the provisions of Sec.
1.78(d)(1). The grant of a petition under Sec. 1.78(d)(1)(iv) or
waiver of a requirement of Sec. 1.78(d)(1) would be only by an
explicit decision by the Office, and would not occur by implication due
to the entry of or failure to delete a specific reference to a prior-
filed application that is not permitted by Sec. 1.78(d)(1).
   Proposed Sec. 1.78(d)(3) also includes the parenthetical "(i.e.,
whether the later-filed application is a continuation, divisional, or
continuation-in-part of the prior-filed nonprovisional application or
international application)" to clarify in the rules of practice what
is meant by the requirement that an applicant identify (currently
stated as indicate) the relationship of the applications. See MPEP
Sec. 201.11. Proposed Sec. 1.78(d)(3) also provides that if an
application is identified as a continuation-in-part application, the
applicant must identify which claim or claims in the continuation-in-
part application are disclosed in the manner provided by 35 U.S.C. 112,
para. 1, in the prior-filed application. Any claim in the continuation-
in-part application that is not identified as being disclosed in the
manner provided by 35 U.S.C. 112, para. 1, in the prior-filed application
will be treated as entitled only to the filing date of the
continuation-in-part application.
   Proposed Sec. 1.78(d) also does not contain the provision that the
prior-filed application disclose the invention claimed in at least one
claim of the later-filed application in the manner provided by 35
U.S.C. 112, para. 1. It is necessary for the prior-filed application to
disclose the invention claimed in at least one claim of the later-filed
application in the manner provided by 35 U.S.C. 112, para. 1, for the
later-filed application to actually receive the benefit of the filing
date of the prior-filed application (35 U.S.C. 120), but the Office
does not require such a disclosure as a condition of permitting an
application to claim the benefit of the filing date of a prior-filed
application. See MPEP Sec. 201.08 ("Unless the filing date of the
earlier nonprovisional application is actually needed * * *, there is
no need for the Office to make a determination as to whether the
requirement of 35 U.S.C. 120, that the earlier nonprovisional
application discloses the invention of the second application in the
manner provided by 35 U.S.C. 112, para. 1, is met and whether a substantial
portion of all of the earlier nonprovisional application is repeated in
the second application in a continuation-in-part situation.
Accordingly, an alleged continuation-in-part application should be
permitted to claim the benefit of the filing date of an earlier
nonprovisional application if the alleged continuation-in-part
application complies with the * * * formal requirements of 35 U.S.C.
120.").
   Proposed Sec. 1.78(d) also provides that cross-references to
applications for which a benefit is not claimed under title 35, United
States Code, must be located in a separate paragraph from the
references required by 35 U.S.C. 119(e) or 120 and Sec. 1.78 to
applications for which a benefit is claimed under 35 U.S.C. 119(e),
120, 121, or 365(c) (proposed Sec. 1.78(d)(6)).
   Proposed Sec. 1.78(d) otherwise contains the provisions of current
Sec. 1.78(a)(1) and (a)(2).
   Proposed Sec. 1.78(e) contains provisions relating to delayed
claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-
filed nonprovisional or international application. Proposed Sec.
1.78(e) provides that a petition to accept an unintentionally delayed
claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior-
filed application will not be granted in an application in which a
request for continued examination under Sec. 1.114 has been filed.
Proposed Sec. 1.114(f) does not permit a request for continued
examination in a continuing application (other than a divisional
application in compliance with Sec. 1.78(d)(1)(ii)), without a
petition showing to the satisfaction of the Director that the
amendment, argument, or evidence could not have been submitted prior to
the close of prosecution in the application. Thus, proposed Sec.
1.78(e) provides that an applicant may not add a delayed claim under 35
U.S.C. 120, 121, or 365(c) for the benefit of a prior-filed application
in an application in which a request for continued examination under
Sec. 1.114 has been filed. Proposed Sec. 1.78(e) otherwise contains
the provisions of current Sec. 1.78(a)(3).
   Proposed Sec. 1.78(f) contains provisions relating to applications
naming at least one inventor in common and containing patentably
indistinct claims. Proposed Sec. 1.78(f)(1) provides that if a
nonprovisional application has a filing date that is the same as or
within two months of the filing date of one or more other pending
nonprovisional applications or patents, taking into account any filing
date for which a benefit is sought under title 35, United States Code,
names at least one inventor in common with the one or more other
pending nonprovisional applications or patents, and is owned by the
same person, or subject to an obligation of assignment to the same
person, as the one or more other pending nonprovisional applications or
patents, the applicant must identify each such other application or
patent by application number (i.e., series code and serial number) and
patent number (if applicable). This identification requirement would
also apply to each identified application, because if the identifying
application has a filing date that is the same as or within two months
of the filing date of the identified application, the identified
application has a filing date that is the same as or within two months
of the filing date of the identifying application. The application or
patent may be identified in the specification in the paragraph
containing cross-references to applications for which a benefit is not
claimed under title 35, United States Code (proposed Sec. 1.78(d)(6)),
or may be identified in a separate paper. Proposed Sec. 1.78(f)(1)
also provides that the identification of one or more other
nonprovisional applications under this paragraph must be within four
months from the actual filing date of a nonprovisional application
filed under 35 U.S.C. 111(a), or within four months from the date on
which the national stage commenced under 35 U.S.C. 371(b) or (f) in a
nonprovisional application which entered the national stage from an
international application after compliance with 35 U.S.C. 371.
   Proposed Sec. 1.78(f)(2) provides that if the circumstances set
forth in proposed Sec. 1.78(f)(1) exist and the nonprovisional
application has the same filing date as the one or more other pending
nonprovisional applications or patents, taking into account any filing
date for which a benefit is sought under title 35, United States Code,
and contains substantial overlapping disclosure as the one or more
other pending nonprovisional applications or patents, a rebuttable
presumption shall exist that the nonprovisional application contains at
least one claim that is not patentably distinct from at least one of
the claims in the one or more other pending or patented nonprovisional
applications. Proposed Sec. 1.78(f)(2) also provides that in such a
situation, the applicant in the nonprovisional application must either:
(1) rebut this presumption by explaining to the satisfaction of the
Director how the application contains only claims that are patentably
distinct from the claims in each of such other pending applications or
patents; or (2) submit a terminal disclaimer in accordance with Sec.
1.321(c). In addition, proposed Sec. 1.78(f)(2) provides that where
one or more other pending nonprovisional applications containing
patentably indistinct claims have been identified, the applicant must
explain to the satisfaction of the Director why it is necessary that
there are two or more pending nonprovisional applications naming at
least one inventor in common and owned by the same person, or subject
to an obligation of assignment to the same person, which contain
patentably indistinct claims.
   As discussed previously, where an applicant chooses to file
multiple applications that are substantially the same it will be the
applicant's responsibility to assist the Office in resolving potential
double patenting situations rather than taking no action until faced
with a double patenting rejection. Thus, if an Office action must
include a double patenting rejection, it is because the applicant has
not yet met his or her responsibility to resolve the double patenting
situation by filing the appropriate terminal disclaimer. Therefore, the
inclusion of a new double patenting rejection in a second or subsequent
Office action will not preclude the Office action from being made final
(assuming that the conditions in MPEP Sec. 706.07(a) are otherwise
met).
   Proposed Sec. 1.78(f)(3) provides that in the absence of good and
sufficient reason for there being two or more pending nonprovisional
applications naming at least one inventor in common and owned by the
same person, or subject to an obligation of assignment to the same
person, which contain patentably indistinct claims, the Office may
require elimination of the patentably indistinct claims from all but
one of the applications. The Office expects to apply this provision
primarily in situations covered by proposed Sec. 1.78(f)(2)(ii), under
which applicants must explain to the satisfaction of the Director why
it is necessary that there are two or more pending nonprovisional
applications naming at least one inventor in common and owned by the
same person, or subject to an obligation of assignment to the same
person, which contain patentably indistinct claims. The Office,
however, may require that an applicant provide good and sufficient
reason whenever there are two or more pending nonprovisional
applications naming at least one inventor in common and owned by the
same person, or subject to an obligation of assignment to the same
person, which contain patentably indistinct claims (i.e., in situations
other than those covered by Sec. 1.78(f)(2) or even Sec. 1.78(f)(1)).
   Proposed Sec. 1.78(g) contains provisions relating to applications
or patents under reexamination naming different inventors and
containing patentably indistinct claims. Proposed Sec. 1.78(g)
contains the provisions of current Sec. 1.78(c), except that
"conflicting claims" is proposed to be changed to "patentably
indistinct claims" for clarity and for consistency with the language
of proposed Sec. 1.78(f).
   Proposed Sec. 1.78(h) covers the situation in which parties to a
joint research agreement are treated (in essence) as a common owner for
purposes of 35 U.S.C. 103 by virtue of the CREATE Act. Proposed Sec.
1.78(h) provides that if an application discloses or is amended to
disclose the names of parties to a joint research agreement (35 U.S.C.
103(c)(2)(C)), the parties to the joint research agreement are
considered to be the same person for purposes of Sec. 1.78. The CREATE
Act amended 35 U.S.C. 103(c) to provide that subject matter developed
by another person shall be treated as owned by the same person or
subject to an obligation of assignment to the same person for purposes
of determining obviousness if three conditions are met: (1) The claimed
invention was made by or on behalf of parties to a joint research
agreement that was in effect on or before the date the claimed
invention was made; (2) the claimed invention was made as a result of
activities undertaken within the scope of the joint research agreement;
and (3) the application for patent for the claimed invention discloses
or is amended to disclose the names of the parties to the joint
research agreement. See Changes to Implement the Cooperative Research
and Technology Enhancement Act of 2004, 70 FR 1818, 1818 (Jan. 11,
2005), 1291 Off. Gaz. Pat. Office 58, 58-59 (Feb. 8, 2005). Proposed
Sec. 1.78(h) also provides that if the application is amended to
disclose the names of parties to a joint research agreement under 35
U.S.C. 103(c)(2)(C), the identification of such one or more other
nonprovisional applications as required by Sec. 1.78(f)(1)
must be submitted with the amendment under 35 U.S.C. 103(c)(2)(C)
unless such identification is or has been submitted within the four-
month period specified in Sec. 1.78(f)(1).
   The proposed changes to Sec. 1.78 (if adopted) would be applicable
to any application filed on or after the effective date of the final
rule. Thus, any application filed on or after the effective date of the
final rule seeking to claim the benefit of more than a single prior-
filed nonprovisional application or international application under 35
U.S.C. 120, 121, 365(c) and Sec. 1.78 would need to either meet the
requirements specified in proposed Sec. 1.78(d)(1)(iii) or include a
petition under proposed Sec. 1.78(d)(1)(iv). That is, an applicant may
only file one continuation or continuation-in-part application (and not
"one more" continuation or continuation-in-part application) after
the effective date of the final rule without meeting the requirements
specified in proposed Sec. 1.78(d)(1)(iii) or including a petition
under proposed Sec. 1.78(d)(1)(iv).

   Conforming changes: The proposed reorganization and revision of
Sec. 1.78 would also require conforming changes to Secs. 1.17, 1.52,
1.53, 1.76, and 1.110.

   Section 1.114: Proposed Sec. 1.114(a) adds the phrase "subject to
the conditions of this section" to make clear that an applicant may
not file an unrestricted number of requests for continued examination.
Proposed Sec. 1.114(a) otherwise contains the provisions of current
Sec. 1.114(a).
   Proposed Sec. 1.114(f) provides that an applicant may not file
more than a single request for continued examination under Sec. 1.114
in any application, and that an applicant may not file a request for
continued examination under Sec. 1.114 in any continuing application
(Sec. 1.78(a)(1)) other than a divisional application in compliance
with Sec. 1.78(d)(1)(ii), unless the request for continued examination
also includes a petition accompanied by the fee set forth in Sec.
1.17(f) and a showing to the satisfaction of the Director that the
amendment, argument, or evidence could not have been submitted prior to
the close of prosecution in the application. Thus, an applicant may
file a single request for continued examination in a non-continuing
application, or in a divisional application in compliance with Sec.
1.78(d)(1)(ii), without a showing to the satisfaction of the Director
that the amendment, argument, or evidence could not have been submitted
prior to the close of prosecution in the application. Otherwise, a
request for continued examination must be accompanied by a petition
accompanied by the fee set forth in Sec. 1.17(f) and a showing to the
satisfaction of the Director that the amendment, argument, or evidence
could not have been submitted prior to the close of prosecution in the
application. Since multiple opportunities are given to submit any
desired amendment, argument, or evidence, that an amendment, argument,
or evidence is refused entry because prosecution in the application is
again closed (after the filing of a continuation or continuation-in-
part application (Secs. 1.78(d)(1)(i) and 1.78(d)(1)(iii)) or a
request for continued examination under Sec. 1.114) will not by itself
be a sufficient reason to warrant the grant of a petition under Sec.
1.114(f). Rather, an applicant will be expected to demonstrate why the
amendment, argument, or evidence could not have been submitted prior to
the close of prosecution in the application.
   Proposed Sec. 1.114(f) further provides that any other proffer of
a request for continued examination in an application not on appeal
will be treated as a submission under Sec. 1.116, and that any other
proffer of a request for continued examination in an application on
appeal will be treated only as a request to withdraw the appeal. Thus,
a second or subsequent request for continued examination that does not
include the required petition will not have the same effect as a first
request for continued examination.
   The proposed changes to Sec. 1.114 (if adopted) would be
applicable to any application in which a request for continued
examination is filed on or after the effective date of the final rule.
Thus, any request for continued examination filed on or after the
effective date of the final rule in an application in which a request
for continued examination has previously been filed must include a
petition under proposed Sec. 1.114(f). That is, an applicant may only
file one request for continued examination (and not "one more"
request for continued examination) after the effective date of the
final rule without a petition under proposed Sec. 1.114(f).

   Section 1.495: Proposed Sec. 1.495(g) provides that if the
documents and fees contain conflicting indications as between an
application under 35 U.S.C. 111 and a submission to enter the national
stage under 35 U.S.C. 371, the documents and fees will be treated as a
submission to enter the national stage under 35 U.S.C. 371. It is
Office experience that, in the majority of cases, documents and fees
that contain conflicting indications as between an application under 35
U.S.C. 111 and a submission to enter the national stage under 35 U.S.C.
371 were intended as a submission under 35 U.S.C. 371. In addition, the
changes to Sec. 1.78 (if adopted) would render the option of filing of
a "bypass" continuation application under 35 U.S.C. 111(a) less
preferable to simply entering the national stage under 35 U.S.C. 371 in
an international application. A "bypass" continuation application is
an application for patent filed under 35 U.S.C. 111(a) that claims the
benefit of the filing date of an earlier international application that
did not enter the national stage under 35 U.S.C. 371.

Rule Making Considerations

   Regulatory Flexibility Act: For the reasons set forth herein, the
Deputy General Counsel for General Law of the United States Patent and
Trademark Office has certified to the Chief Counsel for Advocacy of the
Small Business Administration that the changes proposed in this notice
will not have a significant economic impact on a substantial number of
small entities. See 5 U.S.C. 605(b).
   In Fiscal Year 2005, the Office received approximately 317,000
nonprovisional applications. Of those, about 62,870 (about 19,700 small
entity) were continuing applications. In addition, the Office received
about 52,750 (about 8,970 small entity) requests for continued
examination. This notice proposes to require that: (1) Any second or
subsequent continuation or continuation-in-part application and any
second or subsequent request for continued examination include a
showing to the satisfaction of the Director as to why the amendment,
argument, or evidence could not have been submitted prior to the close
of prosecution after a single continuation or continuation-in-part
application or request for continued examination; and (2) multiple
applications that have the same effective filing date, overlapping
disclosure, a common inventor, and a common assignee include either an
explanation to the satisfaction of the Director of how the claims are
patentably distinct, or a terminal disclaimer and explanation to the
satisfaction of the Director of why patentably indistinct claims have
been filed in multiple applications.

   Continuing Applications: This notice proposes to require that any
second or subsequent continuation or continuation-in-part application
include a petition (with a $400.00 petition fee) with a showing to the
satisfaction of the Director as to why the amendment, argument, or
evidence could not have been submitted prior to the close of
prosecution in the prior-filed application.
   This proposed rule change will not affect a substantial number of
small entities. Of the 62,870 continuing applications filed in fiscal
year 2005, about 44,500 (about 15,665 small entity) were designated as
continuation or continuation-in-part applications, and about 11,790
(about 4,470 small entity) of these applications were a second or
subsequent continuation or continuation-in-part application. Therefore,
the proposed petition fee and showing requirement would impact
relatively few applications (about 3.7 percent or 11,790 out of
317,000) and relatively few small entity applications (about 4.8
percent or 4,470 out of 93,000). It is also noted that this proposed
change would not disproportionately impact small entity applicants. The
primary impact of this change would be to require applicants to make a
bona fide attempt to advance the application to final agency action by
submitting any desired amendment, argument, or evidence prior to the
close of prosecution after a single continuation or continuation-in-
part application or single request for continued examination (except as
permitted by Sec. 1.116 or Sec. 41.33).
   The notice does not propose any petition fee or showing requirement
for a divisional application, but only requires that a divisional
application be the result of a requirement of unity of invention under
PCT Rule 13 or a requirement for restriction under 35 U.S.C. 121 in the
prior-filed application. Thus, an applicant may obtain examination of
claims to an invention in the prior-filed application because the
Office did not impose a requirement of unity of invention under PCT
Rule 13 or a requirement for restriction under 35 U.S.C. 121 in the
prior-filed application, or the applicant may obtain examination of
claims to an invention in a divisional application because the Office
did impose a requirement of unity of invention under PCT Rule 13 or a
requirement for restriction under 35 U.S.C. 121 in the prior-filed
application. Of the 62,870 continuing applications filed in fiscal year
2005, about 18,370 (about 4,000 small entity) were designated as
divisional applications.

   Requests for Continued Examination: This notice proposes to require
that any second or subsequent request for continued examination include
a petition (with a $400.00 petition fee) with a showing to the
satisfaction of the Director as to why the amendment, argument, or
evidence could not have been submitted prior to the close of
prosecution.
   This proposed rule change will not affect a substantial number of
small entities. Of the 52,750 requests for continued examination filed
in fiscal year 2005, about 9,925 (about 1,796 small entity) were a
second or subsequent request for continued examination. Therefore, the
proposed petition fee and showing requirement would impact relatively
few applicants (about 3.1 percent or 9,925 out of 317,000) and
relatively few small entity applicants (about 1.9 percent or 1,796 out
of 93,000). It is also noted that this proposed change would not
disproportionately impact small entity applicants. The primary impact
of this change would be to require applicants to make a bona fide
attempt to advance the application to final agency action by submitting
any desired amendment, argument, or evidence prior to the close of
prosecution after a single continuation application or single request
for continued examination (except as permitted by Sec. 1.116 or Sec.
41.33).

   Patentably Indistinct Claims: Finally, this notice proposes that
applicants (or assignees) who file multiple applications having the
same effective filing date, overlapping disclosure, and a common
inventor include either an explanation of how the claims are patentably
distinct, or a terminal disclaimer and explanation of why there are
patentably indistinct claims in multiple applications. An applicant who
files multiple applications containing patentably indistinct claims
must in any case submit the appropriate terminal disclaimers to avoid
double patenting. See In re Berg, 140 F.3d 1428, 1434, 46 USPQ2d 1226,
1231 (Fed. Cir. 1998) (applicants who may file all of their claims in a
single application, but instead chose to file such claims in multiple
applications, are not entitled to two-way double patenting test).
   This proposed rule change does not affect a substantial number of
small entities. The Office received about 17,600 (about 3,850 small
entity) terminal disclaimers in fiscal year 2004. Based upon the
Office's experience with double patenting situations, most of these
double patenting situations involved an application and a patent
(rather than two applications) containing patentably indistinct claims.
In addition, Sec. 1.78(b) currently provides where two or more
applications filed by the same applicant contain conflicting (i.e.,
patentably indistinct) claims, elimination of such claims from all but
one application may be required in the absence of good and sufficient
reason for their retention during pendency in more than one
application). Therefore, the requirement for an explanation up front as
to why there are two or more pending applications by the same applicant
(or assignee) containing patentably indistinct claims when that is the
case would impact relatively few applicants (about 5.7 percent or
17,600 out of 310,000) and relatively few small entity applicants
(about 4.1 percent or 3,850 out of 93,000). It is also noted that this
proposed change would not disproportionately impact small entity
applicants. Moreover, there are no fees associated with this proposed
rule change.

   Executive Order 13132: This rule making does not contain policies
with federalism implications sufficient to warrant preparation of a
Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).

   Executive Order 12866: This rule making has been determined to be
significant for purposes of Executive Order 12866 (Sept. 30, 1993).

   Paperwork Reduction Act: This notice 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 collection of information involved in this notice has been
reviewed and previously approved by OMB under OMB control number 0651-0031.
This notice proposes to require that: (1) Any second or subsequent
continuation or continuation-in-part application and any second or
subsequent request for continued examination include a showing to the
satisfaction of the Director as to why the amendment, argument, or evidence
could not have been submitted prior to the close of prosecution after a
single continuation application or request for continued examination; and
(2) multiple applications that have the same effective filing date,
overlapping disclosure, a common inventor, and a common assignee include
either an explanation to the satisfaction of the Director of how the claims
are patentably distinct, or a terminal disclaimer and explanation to the
satisfaction of the Director of why patentably indistinct claims have been
filed in multiple applications. The United States Patent and Trademark
Office is resubmitting an information collection package to OMB for its
review and approval because the changes in this notice do affect the
information collection requirements associated with the information
collection under OMB control number 0651-0031.
   The title, description and respondent description of the information
collection under OMB control number 0651-0031 is shown below with an
estimate of the annual reporting burdens. Included in the estimate is the
reviewing instructions, gathering and maintaining the data needed, and
completing and reviewing the collection of information.
   The title, description and respondent description of the
information collection under OMB control number 0651-0031 is shown
below with an estimate of the annual reporting burdens. Included in the
estimate is the time for reviewing instructions, gathering and maintaining
the data needed, and completing and reviewing the collection of
information.

   OMB Number: 0651-0031.
   Title: Patent Processing (Updating).
   Form Numbers: PTO/SB/08, PTO/SB/17i, PTO/SB/17p, PTO/SB/21-27,
   PTO/SB/24B, PTO/SB/30-32, PTO/SB/35-39, PTO/SB/42-43, PTO/SB/61-64,
   PTO/SB/64a, PTO/SB/67-68, PTO/SB/91-92, PTO/SB/96-97, PTO-2053-A/B,
   PTO-2054-A/B, PTO-2055-A/B, PTOL-413A.
   Type of Review: Approved through July of 2006.
   Affected Public: Individuals or households, business or other for-profit
   institutions, not-for-profit institutions, farms, Federal Government and
   State, Local and Tribal Governments.
   Estimated Number of Respondents: 2,284,439.
   Estimated Time per Response: 1 minute and 48 seconds to 12 hours.
   Estimated Total Annual Burden Hours: 2,732,441 hours.
   Needs and Uses: During the processing of an application for a patent,
   the applicant or applicant's representative 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 statement and citation, examination support
documents, requests for extensions of time, the establishment of small
entity status, abandonment and revival of abandoned applications,
disclaimers, appeals, petitions, expedited examination of design
applications, transmittal forms, requests to inspect, copy and access
patent applications, publication requests, and certificates of mailing,
transmittals, and submission of priority documents and amendments.

   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: (1) The Office of Information and Regulatory Affairs,
Office of Management and Budget, New Executive Office Building, Room
10202, 725 17th Street, NW., Washington, DC 20503, Attention: Desk
Officer for the Patent and Trademark Office; and (2) Robert J. Spar,
Director, Office of Patent Legal Administration, Commissioner for
Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
   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
proposed to be amended as follows:

PART 1 - RULES OF PRACTICE IN PATENT CASES

   1. The authority citation for 37 CFR part 1 continues to read as
follows:

   Authority: 35 U.S.C. 2(b)(2).

   2. Section 1.78 is revised to read as follows:

Sec. 1.78  Claiming benefit of earlier filing date and cross-references
to other applications.

   (a) Definitions. (1) Continuing application. A continuing application
is a nonprovisional application or an international application designating
the United States of America that claims the benefit under 35 U.S.C. 120,
121, or 365(c) of a prior-filed nonprovisional application or international
application designating the United States of America. An application that
does not claim the benefit under 35 U.S.C. 120, 121, or 365(c) of a prior-
filed application, is not a continuing application even if the application
claims the benefit under 35 U.S.C. 119(e) of a provisional application,
claims priority under 35 U.S.C. 119(a)-(d) or 365(b) to a foreign
application, or claims priority under 35 U.S.C. 365(a) or (b) to an
international application designating at least one country other than
the United States of America.
   (2) Continuation application. A continuation application is a
continuing application as defined in paragraph (a)(1) of this section
that discloses and claims only an invention or inventions that were
disclosed in the prior-filed application.
   (3) Divisional application. A divisional application is a
continuing application as defined in paragraph (a)(1) of this section
that discloses and claims only an invention or inventions that were
disclosed and claimed in the prior-filed application, but were subject
to a requirement of unity of invention under PCT Rule 13 or a
requirement for restriction under 35 U.S.C. 121 and not elected for
examination in the prior-filed application.
   (4) Continuation-in-part application. A continuation-in-part
application is a continuing application as defined in paragraph (a)(1)
of this section that discloses subject matter that was not disclosed in
the prior-filed application.
   (b) Claims under 35 U.S.C. 119(e) for the benefit of a prior-filed
provisional application. A nonprovisional application, other than for a
design patent, or an international application designating the United
States of America may claim the benefit of one or more prior-filed
provisional applications under the conditions set forth in 35 U.S.C.
119(e) and this paragraph.
   (1) The nonprovisional application or international application
designating the United States of America must be filed not later than
twelve months after the date on which the provisional application was
filed. This twelve-month period is subject to 35 U.S.C. 21(b) and Sec.
1.7(a).
   (2) Each prior-filed provisional application must name as an
inventor at least one inventor named in the later-filed application,
must be entitled to a filing date as set forth in Sec. 1.53(c), and
the basic filing fee set forth in Sec. 1.16(d) must be paid within the
time period set forth in Sec. 1.53(g).
   (3) Any nonprovisional application or international application
designating the United States of America claiming the benefit of one or
more prior-filed provisional applications must contain or be amended to
contain a reference to each such prior-filed provisional application,
identifying it by the provisional application number (consisting of
series code and serial number). If the later-filed application is a
nonprovisional application, the reference required by this paragraph
must be included in an application data sheet (Sec. 1.76), or the
specification must contain or be amended to contain such reference in the
first sentence(s) following the title.
   (4) The reference required by paragraph (b)(3) of this section must
be submitted during the pendency of the later-filed application. If the
later-filed application is an application filed under 35 U.S.C. 111(a),
this reference must also be submitted within the later of four months
from the actual filing date of the later-filed application or sixteen
months from the filing date of the prior-filed provisional application.
If the later-filed application is a nonprovisional application which
entered the national stage from an international application after
compliance with 35 U.S.C. 371, this reference must also be submitted
within the later of four months from the date on which the national
stage commenced under 35 U.S.C. 371(b) or (f) in the later-filed
international application or sixteen months from the filing date of the
prior-filed provisional application. These time periods are not
extendable. Except as provided in paragraph (c) of this section, the
failure to timely submit the reference is considered a waiver of any
benefit under 35 U.S.C. 119(e) of such prior-filed provisional
application. The time periods in this paragraph do not apply if the
later-filed application is:
   (i) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
   (ii) An international application filed under 35 U.S.C. 363 before
November 29, 2000.
   (5) If the prior-filed provisional application was filed in a
language other than English and both an English-language translation of
the prior-filed provisional application and a statement that the
translation is accurate were not previously filed in the prior-filed
provisional application, applicant will be notified and given a period
of time within which to file, in the prior-filed provisional
application, the translation and the statement. If the notice is mailed
in a pending nonprovisional application, a timely reply to such a
notice must include the filing in the nonprovisional application of
either a confirmation that the translation and statement were filed in
the provisional application, or an amendment or Supplemental
Application Data Sheet withdrawing the benefit claim, or the
nonprovisional application will be abandoned. The translation and
statement may be filed in the provisional application, even if the
provisional application has become abandoned.
   (c) Delayed claims under 35 U.S.C. 119(e) for the benefit of a
prior-filed provisional application. If the reference required by 35
U.S.C. 119(e) and paragraph (b)(3) of this section is presented in a
nonprovisional application after the time period provided by paragraph
(b)(4) of this section, the claim under 35 U.S.C. 119(e) for the
benefit of a prior-filed provisional application may be accepted if
submitted during the pendency of the later-filed application and if the
reference identifying the prior-filed application by provisional
application number was unintentionally delayed. A petition to accept an
unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of
a prior-filed provisional application must be accompanied by:
   (1) The reference required by 35 U.S.C. 119(e) and paragraph (b)(3)
of this section to the prior-filed provisional application, unless
previously submitted;
   (2) The surcharge set forth in Sec. 1.17(t); and
   (3) A statement that the entire delay between the date the claim
was due under paragraph (b)(4) of this section and the date the claim
was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
   (d) Claims under 35 U.S.C. 120, 121, or 365(c) for the benefit of a
prior-filed nonprovisional or international application. A
nonprovisional application (including an international application that
has entered the national stage after compliance with 35 U.S.C. 371) may
claim the benefit of one or more prior-filed copending nonprovisional
applications or international applications designating the United
States of America under the conditions set forth in 35 U.S.C. 120 and
this paragraph.
   (1) A nonprovisional application claiming the benefit of one or
more prior-filed copending nonprovisional applications or international
applications designating the United States of America must satisfy at
least one of the following conditions:
   (i) The nonprovisional application is either a continuation
application as defined in paragraph (a)(2) of this section or a
continuation-in-part application as defined in paragraph (a)(4) of this
section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of
only a single prior-filed application, the benefit of such prior-filed
application not being claimed in any other nonprovisional application
other than a divisional application in compliance with paragraph
(d)(1)(ii) of this section, and no request for continued examination
under Sec. 1.114 has been filed in the prior-filed application.
   (ii) The nonprovisional application is a divisional application as
defined in paragraph (a)(3) of this section that claims the benefit
under 35 U.S.C. 120, 121, or 365(c) of only a single prior-filed
application, the prior-filed application was subject to a requirement
of unity of invention under PCT Rule 13 or a requirement for
restriction under 35 U.S.C. 121, and the divisional application
contains only claims directed to an invention or inventions that were
identified in such requirement of unity of invention or requirement for
restriction but were not elected for examination in the prior-filed
application.
   (iii) The nonprovisional application is either a continuation
application as defined in paragraph (a)(2) of this section or a
continuation-in-part application as defined in paragraph (a)(4) of this
section that claims the benefit under 35 U.S.C. 120, 121, or 365(c) of
only a single divisional application in compliance with paragraph
(d)(1)(ii) of this section and the single prior-filed application whose
benefit is claimed in such divisional application, and no request for
continued examination under Sec. 1.114 has been filed in such prior-
filed divisional application.
   (iv) The nonprovisional application is a continuing application as
defined in paragraph (a)(1) of this section that claims the benefit
under 35 U.S.C. 120, 121, or 365(c) of a prior-filed application, which
continuing application is filed to obtain consideration of an
amendment, argument, or evidence that could not have been submitted
during the prosecution of the prior-filed application. The
nonprovisional application must have filed therein a petition
accompanied by the fee set forth in Sec. 1.17(f) and a showing to the
satisfaction of the Director that the amendment, argument, or evidence
could not have been submitted during the prosecution of the prior-filed
application. If the later-filed continuing application is an
application filed under 35 U.S.C. 111(a), this petition must be
submitted within four months from the actual filing date of the later-
filed continuing application, and if the later-filed continuing
application is a nonprovisional application which entered the national
stage from an international application after compliance with 35 U.S.C.
371, this petition must be submitted within four months from the date
on which the national stage commenced under 35 U.S.C. 371(b) or (f) in
the later-filed international application.
   (2) Each prior-filed application must name as an inventor at least
one inventor named in the later-filed application and must be either an
international application entitled to a filing date in accordance with
PCT Article 11 and designating the United States of America, or a
nonprovisional application under 35 U.S.C. 111(a) that is entitled to a
filing date as set forth in Sec. 1.53(b) or Sec. 1.53(d) and have
paid therein the basic filing fee set forth in Sec. 1.16 within the
pendency of the application.
   (3) Except for a continued prosecution application filed under
Sec. 1.53(d), any nonprovisional application, or international
application designating the United States of America, claiming the
benefit of one or more prior-filed copending nonprovisional
applications or international applications designating the United
States of America must contain or be amended to contain a reference to
each such prior-filed application, identifying it by application number
(consisting of the series code and serial number) or international
application number and international filing date and identifying the
relationship of the applications (i.e., whether the later-filed
application is a continuation, divisional, or continuation-in-part of
the prior-filed nonprovisional application or international
application). If an application is identified as a continuation-in-part
application, the applicant must identify which claim or claims in the
continuation-in-part application are disclosed in the manner provided
by the first paragraph of 35 U.S.C. 112 in the prior-filed application.
If the later-filed application is a nonprovisional application, the
reference required by this paragraph must be included in an application
data sheet (Sec. 1.76), or the specification must contain or be
amended to contain such reference in the first sentence(s) following
the title. The Office will refuse to enter, or will delete if present,
any specific reference to a prior-filed application that is not
permitted by paragraph (d)(1) of this section. The entry of or failure
to delete a specific reference to a prior-filed application that is not
permitted by paragraph (d)(1) of this section does not constitute a
waiver of the provisions of paragraph (d)(1) of this section.
   (4) The reference required by 35 U.S.C. 120 and paragraph (d)(3) of
this section must be submitted during the pendency of the later-filed
application. If the later-filed application is an application filed
under 35 U.S.C. 111(a), this reference must also be submitted within
the later of four months from the actual filing date of the later-filed
application or sixteen months from the filing date of the prior-filed
application. If the later-filed application is a nonprovisional
application which entered the national stage from an international
application after compliance with 35 U.S.C. 371, this reference must
also be submitted within the later of four months from the date on
which the national stage commenced under 35 U.S.C. 371(b) or (f) in the
later-filed international application or sixteen months from the filing
date of the prior-filed application. These time periods are not
extendable. Except as provided in paragraph (e) of this section, the
failure to timely submit the reference required by 35 U.S.C. 120 and
paragraph (d)(3) of this section is considered a waiver of any benefit
under 35 U.S.C. 120, 121, or 365(c) to such prior-filed application.
The time periods in this paragraph do not apply if the later-filed
application is:
   (i) An application for a design patent;
   (ii) An application filed under 35 U.S.C. 111(a) before November
29, 2000; or
   (iii) An international application filed under 35 U.S.C. 363 before
November 29, 2000.
   (5) The request for a continued prosecution application under Sec.
1.53(d) is the specific reference required by 35 U.S.C. 120 to the
prior-filed application. The identification of an application by
application number under this section is the identification of every
application assigned that application number necessary for a specific
reference required by 35 U.S.C. 120 to every such application assigned
that application number.
   (6) Cross-references to other related applications may be made when
appropriate (see Sec. 1.14). Cross-references to applications for
which a benefit is not claimed under title 35, United States Code, must
be located in a separate paragraph from the references required by 35
U.S.C. 119(e) or 120 and this section to applications for which a
benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c).
   (e) Delayed claims under 35 U.S.C. 120, 121, or 365(c) for the
benefit of a prior-filed nonprovisional application or international
application. If the reference required by 35 U.S.C. 120 and paragraph
(d)(3) of this section is presented after the time period provided by
paragraph (d)(4) of this section, the claim under 35 U.S.C. 120, 121,
or 365(c) for the benefit of a prior-filed copending nonprovisional
application or international application designating the United States
of America may be accepted if the reference identifying the prior-filed
application by application number or international application number
and international filing date was unintentionally delayed. A petition
to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or
365(c) for the benefit of a prior-filed application will not be granted
in an application in which a request for continued examination under
Sec. 1.114 has been filed. A petition to accept an unintentionally
delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a
prior-filed application must be accompanied by:
   (1) The reference required by 35 U.S.C. 120 and paragraph (d)(3) of
this section to the prior-filed application, unless previously
submitted;
   (2) The surcharge set forth in Sec. 1.17(t); and
   (3) A statement that the entire delay between the date the claim
was due under paragraph (d)(4) of this section and the date the claim
was filed was unintentional. The Director may require additional
information where there is a question whether the delay was unintentional.
   (f) Applications and patents naming at least one inventor in
common. (1) If a nonprovisional application has a filing date that is
the same as or within two months of the filing date of one or more
other pending or patented nonprovisional applications, taking into
account any filing date for which a benefit is sought under title 35,
United States Code, names at least one inventor in common with the one
or more other nonprovisional applications, and is owned by the same
person, or subject to an obligation of assignment to the same person,
as the one or more other nonprovisional applications, the applicant
must identify each such other application by application number (i.e.,
series code and serial number) and patent number (if applicable). The
identification of such one or more other nonprovisional applications if
required by this paragraph must be submitted within four months from
the actual filing date of a nonprovisional application filed under 35
U.S.C. 111(a), or within four months from the date on which the
national stage commenced under 35 U.S.C. 371(b) or (f) in a
nonprovisional application which entered the national stage from an
international application after compliance with 35 U.S.C. 371.
   (2) If a nonprovisional application has the same filing date as the
filing date of one or more other pending or patented nonprovisional
applications, taking into account any filing date for which a benefit
is sought under title 35, United States Code, names at least one inventor
in common with the one or more other pending or patented nonprovisional
applications, is owned by the same person, or subject to an obligation of
assignment to the same person, and contains substantial overlapping
disclosure as the one or more other pending or patented nonprovisional
applications, a rebuttable presumption shall exist that the nonprovisional
application contains at least one claim that is not patentably distinct
from at least one of the claims in the one or more other pending or
patented nonprovisional applications. In this situation, the applicant in
the nonprovisional application must either:
   (i) Rebut this presumption by explaining to the satisfaction of the
Director how the application contains only claims that are patentably
distinct from the claims in each of such other pending applications or
patents; or
   (ii) Submit a terminal disclaimer in accordance with Sec.
1.321(c). In addition, where one or more other pending nonprovisional
applications have been identified, the applicant must explain to the
satisfaction of the Director why there are two or more pending
nonprovisional applications naming at least one inventor in common and
owned by the same person, or subject to an obligation of assignment to
the same person, which contain patentably indistinct claims.
   (3) In the absence of good and sufficient reason for there being
two or more pending nonprovisional applications naming at least one
inventor in common and owned by the same person, or subject to an
obligation of assignment to the same person, which contain patentably
indistinct claims, the Office may require elimination of the patentably
indistinct claims from all but one of the applications.
   (g) Applications or patents under reexamination naming different
inventors and containing patentably indistinct claims. If an
application or a patent under reexamination and at least one other
application naming different inventors are owned by the same party and
contain patentably indistinct claims, and there is no statement of
record indicating that the claimed inventions were commonly owned or
subject to an obligation of assignment to the same person at the time
the later invention was made, the Office may require the assignee to
state whether the claimed inventions were commonly owned or subject to
an obligation of assignment to the same person at the time the later
invention was made, and if not, indicate which named inventor is the
prior inventor.
   (h) Parties to a joint research agreement. If an application
discloses or is amended to disclose the names of parties to a joint
research agreement (35 U.S.C. 103(c)(2)(C)), the parties to the joint
research agreement are considered to be the same person for purposes of
this section. If the application is amended to disclose the names of
parties to a joint research agreement under 35 U.S.C. 103(c)(2)(C), the
identification of such one or more other nonprovisional applications as
required by paragraph (f)(1) of this section must be submitted with the
amendment under 35 U.S.C. 103(c)(2)(C) unless such identification is or
has been submitted within the four-month period specified in paragraph
(f)(1) of this section.
   3. Section 1.114 is amended by revising the introductory text of
paragraph (a) and by adding a new paragraph (f) to read as follows:

Sec. 1.114  Request for continued examination.

   (a) If prosecution in an application is closed, an applicant may,
subject to the conditions of this section, file a request for continued
examination of the application by filing a submission and the fee set
forth in Sec. 1.17(e) prior to the earliest of:

* * * * *

   (f) An applicant may not file more than a single request for
continued examination under this section in any application, and may
not file any request for continued examination under this section in
any continuing application (Sec. 1.78(a)(1)) other than a divisional
application in compliance with Sec. 1.78(d)(1)(ii), unless the request
for continued examination also includes a petition accompanied by the
fee set forth in Sec. 1.17(f) and a showing to the satisfaction of the
Director that the amendment, argument, or evidence could not have been
submitted prior to the close of prosecution in the application. Any
other proffer of a request for continued examination in an application
not on appeal will be treated as a submission under Sec. 1.116. Any
other proffer of a request for continued examination in an application
on appeal will be treated only as a request to withdraw the appeal.

   4. Section 1.495 is amended by revising paragraph (g) to read as
follows:

Sec. 1.495  Entering the national stage in the United States of America.

* * * * *

   (g) The documents and fees submitted under paragraphs (b) and (c)
of this section must be clearly identified as a submission to enter the
national stage under 35 U.S.C. 371. If the documents and fees contain
conflicting indications as between an application under 35 U.S.C. 111
and a submission to enter the national stage under 35 U.S.C. 371, the
documents and fees will be treated as a submission to enter the
national stage under 35 U.S.C. 371.

* * * * *

December 19, 2005                                              JON W. DUDAS
                                            Under Secretary of Commerce for
                                                  Intellectual Property and
                                              Director of the United States
                                                Patent and Trademark Office