[Federal Register Volume 74, Number 197 (Wednesday, October 14, 2009)]
[Rules and Regulations]
[Pages 52686-52691]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-24667]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
37 CFR Part 1
[Docket No.: PTO-P-2009-0049]
RIN 0651-AC36
Changes to Practice for Continued Examination Filings, Patent
Applications Containing Patentably Indistinct Claims, and Examination
of Claims in Patent Applications
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Final rule.
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SUMMARY: The United States Patent and Trademark Office (Office)
published a final rule in the Federal Register in August of 2007 to
revise the rules of practice for patent cases pertaining to continuing
applications and requests for continued examination practices, and for
the examination of claims in patent applications (Claims and
Continuations Final Rule). The Office is revising the rules of practice
in this final rule to remove the changes in the Claims and
Continuations Final Rule from the Code of Federal Regulations.
DATES: Effective Date: October 14, 2009.
FOR FURTHER INFORMATION CONTACT: Robert W. Bahr, Senior Patent Counsel,
Office of the Deputy Commissioner for Patent Examination Policy, by
telephone at (571) 272-8800; or by mail addressed to: Mail Stop
Comments Patents, Commissioner for Patents, P.O. Box 1450, Alexandria,
VA 22313-1450.
SUPPLEMENTARY INFORMATION: The Office published the Claims and
Continuations Final Rule in the Federal Register in August of 2007,
which revised the rules of practice in title 37 of the Code of Federal
Regulations for patent cases pertaining to continuing applications and
requests for continued examination practices, and for the examination
of claims in patent applications. See Changes to Practice for Continued
Examination Filings, Patent Applications Containing Patentably
Indistinct Claims, and Examination of Claims in Patent Applications, 72
FR 46716 (Aug. 21, 2007), 1322 Off. Gaz. Pat. Office 76 (Sept. 11,
2007). The United States District Court for the Eastern District of
Virginia (District Court) issued an injunction, enjoining the Office
from implementing the changes in the Claims and Continuations Final
Rule. See Tafas v. Dudas, 541 F. Supp. 2d 805, 86 U.S.P.Q.2d 1623 (E.D.
Va. 2008) (permanent injunction), and Tafas v. Dudas, 511 F. Supp. 2d
652, 86 U.S.P.Q.2d 1548 (E.D. Va. 2007) (preliminary injunction). The
Office appealed this decision to the United States Court of Appeals for
the Federal Circuit (Federal Circuit). The Federal Circuit issued a
panel decision holding that all of the changes in the Claims and
Continuations Final Rule fall within the Office's rule making authority
to govern the conduct of proceedings before the Office, but that the
provisions pertaining to continuing applications were inconsistent with
35 U.S.C. 120. See Tafas v. Doll, 559 F.3d 1345, 90 U.S.P.Q.2d 1129
(Fed. Cir. 2009). The Federal Circuit en banc then issued an order
granting a petition for rehearing en banc and vacating the panel
decision. See Tafas v. Doll, 2009 U.S. App. LEXIS 14611, 91 U.S.P.Q. 2d
1153 (Fed. Cir., July 6, 2009).
The changes in the Claims and Continuations Final Rule were added
to the Code of Federal Regulations, but have been the subject of
litigation since August of 2007 and have never taken effect. See
Clarification of Patent
[[Page 52687]]
Regulations Currently in Effect, and Revision in Applicability Date of
Provisions Relating to Patent Applications Containing Patentably
Indistinct Claims, 73 FR 45999 (Aug. 7, 2008) (notice). The changes in
the Claims and Continuations Final Rule addressed the Office's patent
application pendency and quality issues, but did so with provisions
that were objectionable to a large segment of the patent user
community. In addition, the circumstances have changed since the Office
published the Claims and Continuations Final Rule in August of 2007,
and the Office is now considering other initiatives that would garner
more of a consensus with the patent user community to address the
challenges it currently faces. Thus, the Office has decided that it is
no longer interested in pursuing the changes in the Claims and
Continuations Final Rule that were the subject of the District Court's
decision in Tafas. Therefore, the Office is revising the rules of
practice in title 37 of the Code of Federal Regulations for patent
cases to remove the changes in the Claims and Continuations Final Rule
from the Code of Federal Regulations.
Discussion of Specific Rules
This final rule amends title 37, part 1, of the Code of Federal
Regulations, as follows:
Sections 1.17(f), 1.26(a) and (b), 1.52(d)(2), 1.53(b) and (c)(4),
1.75(b) and (c), 1.76(b)(5), 1.78, 1.104(a)(1) and (b), 1.110, 1.114(a)
and (d), 1.136(a)(1), 1.142(a), 1.145, and 1.495(g) are amended to
remove the changes in these provisions in the Claims and Continuations
Final Rule.
Sections 1.105(a)(1)(ix), 1.114(f), (g), and (h), 1.117, 1.142(c),
and 1.265, and 1.704(c)(11) are removed. These provisions were added in
the Claims and Continuations Final Rule.
Section 1.704(c)(12) is redesignated as Sec. 1.704(c)(11).
Rule Making Considerations
A. Administrative Procedure Act: The Under Secretary of Commerce
for Intellectual Property and Director of the United States Patent and
Trademark Office finds good cause under 5 U.S.C. 553(b)(B) to waive any
requirement to provide prior notice and opportunity for public comment
as such procedures are unnecessary. The changes in this final rule
revise the rules of practice as published in title 37 of the Code of
Federal Regulations to reflect the rules of practice that are currently
in effect. The changes in this final rule will not result in any
changes in the requirements with which applicants, patentees, or other
members of the public must comply during proceedings before the Office.
Therefore, prior notice and an opportunity for public comment are not
required pursuant to 5 U.S.C. 553(b)(A) or (B) or any other law. In
addition, thirty-day advance publication is not required under 5 U.S.C.
553(d) for this final rule as it merely relieves restrictions contained
in the rules of practice as published in title 37 of the Code of
Federal Regulations.
B. Regulatory Flexibility Act: As prior notice and an opportunity
for public comment are not required pursuant to 5 U.S.C. 553 or any
other law, neither a regulatory flexibility analysis nor a
certification under the Regulatory Flexibility Act (5 U.S.C. 601 et
seq.) is required. See 5 U.S.C. 603.
C. Executive Order 12866 (Regulatory Planning and Review): This
rule making has been determined to be significant for purposes of
Executive Order 12866 (Sept. 30, 1993).
D. Executive Order 13132 (Federalism): 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).
E. Executive Order 13175 (Tribal Consultation): This rule making
will not: (1) Have substantial direct effects on one or more Indian
Tribes; (2) impose substantial direct compliance costs on Indian Tribal
governments; or (3) preempt Tribal law. Therefore, a Tribal summary
impact statement is not required under Executive Order 13175 (Nov. 6,
2000).
F. Executive Order 13211 (Energy Effects): This rule making is not
a significant energy action under Executive Order 13211 because this
rule making is not likely to have a significant adverse effect on the
supply, distribution, or use of energy. Therefore, a Statement of
Energy Effects is not required under Executive Order 13211 (May 18,
2001).
G. Executive Order 12988 (Civil Justice Reform): This rule making
meets applicable standards to minimize litigation, eliminate ambiguity,
and reduce burden as set forth in sections 3(a) and 3(b)(2) of
Executive Order 12988 (Feb. 5, 1996).
H. Executive Order 13045 (Protection of Children): This rule making
does not concern an environmental risk to health or safety that may
disproportionately affect children under Executive Order 13045 (Apr,
21, 1997).
I. Executive Order 12630 (Taking of Private Property): This rule
making will not effect a taking of private property or otherwise have
taking implications under Executive Order 12630 (Mar. 15, 1988).
J. Congressional Review Act: Under the Congressional Review Act
provisions of the Small Business Regulatory Enforcement Fairness Act of
1996 (5 U.S.C. 801 et seq.), the United States Patent and Trademark
Office will submit a report containing this final rule and other
required information to the U.S. Senate, the U.S. House of
Representatives and the Comptroller General of the Government
Accountability Office. The changes in this final rule will not result
in an annual effect on the economy of 100 million dollars or more, a
major increase in costs or prices, or significant adverse effects on
competition, employment, investment, productivity, innovation, or the
ability of United States-based enterprises to compete with foreign-
based enterprises in domestic and export markets. Therefore, this final
rule is not a ``major rule'' as defined in 5 U.S.C. 804(2).
K. Unfunded Mandates Reform Act of 1995: The changes proposed in
this notice do not involve a Federal intergovernmental mandate that
will result in the expenditure by State, local, and Tribal governments,
in the aggregate, of 100 million dollars (as adjusted) or more in any
one year, or a Federal private sector mandate that will result in the
expenditure by the private sector of 100 million dollars (as adjusted)
or more in any one year, and will not significantly or uniquely affect
small governments. Therefore, no actions are necessary under the
provisions of the Unfunded Mandates Reform Act of 1995. See 2 U.S.C.
1501 et seq.
L. National Environmental Policy Act: This rule making will not
have any effect on the quality of environment and is thus categorically
excluded from review under the National Environmental Policy Act of
1969. See 42 U.S.C. 4321 et seq.
M. National Technology Transfer and Advancement Act: The
requirements of section 12(d) of the National Technology Transfer and
Advancement Act of 1995 (15 U.S.C. 272 note) are inapplicable because
this rule making does not contain provisions which involve the use of
technical standards.
N. Paperwork Reduction Act: This final rule involves information
collection requirements which are subject to review by the Office of
Management and Budget (OMB) under the Paperwork Reduction Act of 1995
(44 U.S.C. 3501 et seq.). The collection of information involved in
this final rule has been reviewed and approved by OMB under OMB control
number 0651-
[[Page 52688]]
0031. The United States Patent and Trademark Office is not submitting
an information collection package to OMB for its review and approval
because the changes in this notice do not affect the information
collection requirements associated with the information collection
under OMB control number 0651-0031.
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.
0
For the reasons set forth in the preamble, 37 CFR part 1 is amended as
follows:
PART 1--RULES OF PRACTICE IN PATENT CASES
0
1. The authority citation for 37 CFR part 1 continues to read as
follows:
Authority: 35 U.S.C. 2(b)(2).
0
2. Section 1.17 is amended by revising paragraph (f) to read as
follows:
Sec. 1.17 Patent application and reexamination processing fees.
* * * * *
(f) For filing a petition under one of the following sections which
refers to this paragraph: $400.00.
Sec. 1.36(a)--for revocation of a power of attorney by fewer than
all of the applicants.
Sec. 1.53(e)--to accord a filing date.
Sec. 1.57(a)--to accord a filing date.
Sec. 1.182--for decision on a question not specifically provided
for.
Sec. 1.183--to suspend the rules.
Sec. 1.378(e)--for reconsideration of decision on petition
refusing to accept delayed payment of maintenance fee in an expired
patent.
Sec. 1.741(b)--to accord a filing date to an application under
Sec. 1.740 for extension of a patent term.
* * * * *
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3. Section 1.26 is amended by revising paragraphs (a) and (b) to read
as follows:
Sec. 1.26 Refunds.
(a) The Director may refund any fee paid by mistake or in excess of
that required. A change of purpose after the payment of a fee, such as
when a party desires to withdraw a patent filing for which the fee was
paid, including an application, an appeal, or a request for an oral
hearing, will not entitle a party to a refund of such fee. The Office
will not refund amounts of twenty-five dollars or less unless a refund
is specifically requested, and will not notify the payor of such
amounts. If a party paying a fee or requesting a refund does not
provide the banking information necessary for making refunds by
electronic funds transfer (31 U.S.C. 3332 and 31 CFR part 208), or
instruct the Office that refunds are to be credited to a deposit
account, the Director may require such information, or use the banking
information on the payment instrument to make a refund. Any refund of a
fee paid by credit card will be by a credit to the credit card account
to which the fee was charged.
(b) Any request for refund must be filed within two years from the
date the fee was paid, except as otherwise provided in this paragraph
or in Sec. 1.28(a). If the Office charges a deposit account by an
amount other than an amount specifically indicated in an authorization
(Sec. 1.25(b)), any request for refund based upon such charge must be
filed within two years from the date of the deposit account statement
indicating such charge, and include a copy of that deposit account
statement. The time periods set forth in this paragraph are not
extendable.
* * * * *
0
4. Section 1.52 is amended by revising paragraph (d)(2) to read as
follows:
Sec. 1.52 Language, paper, writing, margins, compact disc
specifications.
* * * * *
(d) * * *
(2) Provisional application. If a provisional application is filed
in a language other than English, an English language translation of
the non-English language provisional application will not be required
in the provisional application. See Sec. 1.78(a) for the requirements
for claiming the benefit of such provisional application in a
nonprovisional application.
* * * * *
0
5. Section 1.53 is amended by revising paragraphs (b) and (c)(4) to
read as follows:
Sec. 1.53 Application number, filing date, and completion of
application.
* * * * *
(b) Application filing requirements--Nonprovisional application.
The filing date of an application for patent filed under this section,
except for a provisional application under paragraph (c) of this
section or a continued prosecution application under paragraph (d) of
this section, is the date on which a specification as prescribed by 35
U.S.C. 112 containing a description pursuant to Sec. 1.71 and at least
one claim pursuant to Sec. 1.75, and any drawing required by Sec.
1.81(a) are filed in the Patent and Trademark Office. No new matter may
be introduced into an application after its filing date. A continuing
application, which may be a continuation, divisional, or continuation-
in-part application, may be filed under the conditions specified in 35
U.S.C. 120, 121 or 365(c) and Sec. 1.78(a).
(1) A continuation or divisional application that names as
inventors the same or fewer than all of the inventors named in the
prior application may be filed under this paragraph or paragraph (d) of
this section.
(2) A continuation-in-part application (which may disclose and
claim subject matter not disclosed in the prior application) or a
continuation or divisional application naming an inventor not named in
the prior application must be filed under this paragraph.
(c) * * *
(4) A provisional application is not entitled to the right of
priority under 35 U.S.C. 119 or 365(a) or Sec. 1.55, or to the benefit
of an earlier filing date under 35 U.S.C. 120, 121 or 365(c) or Sec.
1.78 of any other application. No claim for priority under 35 U.S.C.
119(e) or Sec. 1.78(a)(4) may be made in a design application based on
a provisional application. No request under Sec. 1.293 for a statutory
invention registration may be filed in a provisional application. The
requirements of Sec. Sec. 1.821 through 1.825 regarding application
disclosures containing nucleotide and/or amino acid sequences are not
mandatory for provisional applications.
* * * * *
0
6. Section 1.75 is amended by revising paragraphs (b) and (c) to read
as follows:
Sec. 1.75 Claim(s).
* * * * *
(b) More than one claim may be presented provided they differ
substantially from each other and are not unduly multiplied.
(c) One or more claims may be presented in dependent form,
referring back to and further limiting another claim or claims in the
same application. Any dependent claim which refers to more than one
other claim (``multiple dependent claim'') shall refer to such other
claims in the alternative only. A multiple dependent claim shall not
[[Page 52689]]
serve as a basis for any other multiple dependent claim. For fee
calculation purposes under Sec. 1.16, a multiple dependent claim will
be considered to be that number of claims to which direct reference is
made therein. For fee calculation purposes also, any claim depending
from a multiple dependent claim will be considered to be that number of
claims to which direct reference is made in that multiple dependent
claim. In addition to the other filing fees, any original application
which is filed with, or is amended to include, multiple dependent
claims must have paid therein the fee set forth in Sec. 1.16(j).
Claims in dependent form shall be construed to include all the
limitations of the claim incorporated by reference into the dependent
claim. A multiple dependent claim shall be construed to incorporate by
reference all the limitations of each of the particular claims in
relation to which it is being considered.
* * * * *
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7. Section 1.76 is amended by revising paragraph (b)(5) to read as
follows:
Sec. 1.76 Application data sheet.
* * * * *
(b) * * *
(5) Domestic priority information. This information includes the
application number, the filing date, the status (including patent
number if available), and relationship of each application for which a
benefit is claimed under 35 U.S.C. 119(e), 120, 121, or 365(c).
Providing this information in the application data sheet constitutes
the specific reference required by 35 U.S.C. 119(e) or 120, and Sec.
1.78(a)(2) or Sec. 1.78(a)(5), and need not otherwise be made part of
the specification.
* * * * *
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8. 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)(1) A nonprovisional application or international application
designating the United States of America may claim an invention
disclosed in one or more prior-filed copending nonprovisional
applications or international applications designating the United
States of America. In order for an application to claim the benefit of
a prior-filed copending nonprovisional application or international
application designating the United States of America, each prior-filed
application must name as an inventor at least one inventor named in the
later-filed application and disclose the named inventor's invention
claimed in at least one claim of the later-filed application in the
manner provided by the first paragraph of 35 U.S.C. 112. In addition,
each prior-filed application must be:
(i) An international application entitled to a filing date in
accordance with PCT Article 11 and designating the United States of
America; or
(ii) Entitled to a filing date as set forth in 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.
(2)(i) 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 indicating the
relationship of the applications. Cross references to other related
applications may be made when appropriate (see Sec. 1.14).
(ii) This reference 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 (a)(3) of this
section, the failure to timely submit the reference required by 35
U.S.C. 120 and paragraph (a)(2)(i) of this section is considered a
waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such
prior-filed application. The time periods in this paragraph do not
apply if the later-filed application is:
(A) An application for a design patent;
(B) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(C) A nonprovisional application which entered the national stage
after compliance with 35 U.S.C. 371 from an international application
filed under 35 U.S.C. 363 before November 29, 2000.
(iii) If the later-filed application is a nonprovisional
application, the reference required by this paragraph must be included
in an application data sheet (Sec. 1.76), or the specification must
contain or be amended to contain such reference in the first
sentence(s) following the title.
(iv) The request for a continued prosecution 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.
(3) If the reference required by 35 U.S.C. 120 and paragraph (a)(2)
of this section is presented after the time period provided by
paragraph (a)(2)(ii) of this section, the claim under 35 U.S.C. 120,
121, or 365(c) for the benefit of a prior-filed copending
nonprovisional application or international application designating the
United States of America may be accepted if the reference identifying
the prior-filed application by application number or international
application number and international 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
must be accompanied by:
(i) The reference required by 35 U.S.C. 120 and paragraph (a)(2) of
this section to the prior-filed application, unless previously
submitted;
(ii) The surcharge set forth in Sec. 1.17(t); and
(iii) A statement that the entire delay between the date the claim
was due under paragraph (a)(2)(ii) of this section and the date the
claim was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
(4) A nonprovisional application, other than for a design patent,
or an international application designating the United States of
America may claim an invention disclosed in one or more prior-filed
provisional applications. In order for an application to claim the
benefit of one or more prior-filed
[[Page 52690]]
provisional applications, each prior-filed provisional application must
name as an inventor at least one inventor named in the later-filed
application and disclose the named inventor's invention claimed in at
least one claim of the later-filed application in the manner provided
by the first paragraph of 35 U.S.C. 112. In addition, each prior-filed
provisional 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).
(5)(i) Any nonprovisional application or international application
designating the United States of America claiming the benefit of one or
more prior-filed provisional applications must contain or be amended to
contain a reference to each such prior-filed provisional application,
identifying it by the provisional application number (consisting of
series code and serial number).
(ii) This reference must be submitted during the 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 (a)(6) of this section, the failure to timely submit the
reference is considered a waiver of any benefit under 35 U.S.C. 119(e)
to such prior-filed provisional application. The time periods in this
paragraph do not apply if the later-filed application is:
(A) An application filed under 35 U.S.C. 111(a) before November 29,
2000; or
(B) A nonprovisional application which entered the national stage
after compliance with 35 U.S.C. 371 from an international application
filed under 35 U.S.C. 363 before November 29, 2000.
(iii) If the later-filed application is a nonprovisional
application, the reference required by this paragraph must be included
in an application data sheet (Sec. 1.76), or the specification must
contain or be amended to contain such reference in the first
sentence(s) following the title.
(iv) If the prior-filed provisional application was filed in a
language other than English and both an English-language translation of
the prior-filed provisional application and a 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.
(6) If the reference required by 35 U.S.C. 119(e) and paragraph
(a)(5) of this section is presented in a nonprovisional application
after the time period provided by paragraph (a)(5)(ii) of this section,
the claim under 35 U.S.C. 119(e) for the benefit of a prior filed
provisional application may be accepted during the pendency of the
later-filed application if the reference identifying the prior-filed
application by provisional application number was unintentionally
delayed. A petition to accept an unintentionally delayed claim under 35
U.S.C. 119(e) for the benefit of a prior-filed provisional application
must be accompanied by:
(i) The reference required by 35 U.S.C. 119(e) and paragraph (a)(5)
of this section to the prior-filed provisional application, unless
previously submitted;
(ii) The surcharge set forth in Sec. 1.17(t); and
(iii) A statement that the entire delay between the date the claim
was due under paragraph (a)(5)(ii) of this section and the date the
claim was filed was unintentional. The Director may require additional
information where there is a question whether the delay was
unintentional.
(b) Where 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.
(c) If an application or a patent under reexamination and at least
one other application naming different inventors are owned by the same
person and contain conflicting 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. Even if 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 conflicting claims may be rejected
under the doctrine of double patenting in view of such commonly owned
or assigned applications or patents under reexamination.
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9. Section 1.104 is amended by revising paragraphs (a)(1) and (b) to
read as follows:
Sec. 1.104 Nature of examination.
(a) Examiner's action. (1) On taking up an application for
examination or a patent in a reexamination proceeding, the examiner
shall make a thorough study thereof and shall make a thorough
investigation of the available prior art relating to the subject matter
of the claimed invention. The examination shall be complete with
respect both to compliance of the application or patent under
reexamination with the applicable statutes and rules and to the
patentability of the invention as claimed, as well as with respect to
matters of form, unless otherwise indicated.
* * * * *
(b) Completeness of examiner's action. The examiner's action will
be complete as to all matters, except that in appropriate
circumstances, such as misjoinder of invention, fundamental defects in
the application, and the like, the action of the examiner may be
limited to such matters before further action is made. However, matters
of form need not be raised by the examiner until a claim is found
allowable.
* * * * *
Sec. 1.105 [Amended]
0
10. Section 1.105 is amended by removing paragraph (a)(1)(ix).
0
11. Section 1.110 is revised to read as follows:
[[Page 52691]]
Sec. 1.110 Inventorship and date of invention of the subject matter
of individual claims.
When more than one inventor is named in an application or patent,
the Patent and Trademark Office, when necessary for purposes of an
Office proceeding, may require an applicant, patentee, or owner to
identify the inventive entity of the subject matter of each claim in
the application or patent. Where appropriate, the invention dates of
the subject matter of each claim and the ownership of the subject
matter on the date of invention may be required of the applicant,
patentee or owner. See also Sec. Sec. 1.78(c) and 1.130.
0
12. Section 1.114 is amended by removing paragraphs (f), (g), and (h)
and by revising paragraphs (a) and (d) to read as follows:
Sec. 1.114 Request for continued examination.
(a) If prosecution in an application is closed, an applicant may
request continued examination of the application by filing a submission
and the fee set forth in Sec. 1.17(e) prior to the earliest of:
(1) Payment of the issue fee, unless a petition under Sec. 1.313
is granted;
(2) Abandonment of the application; or
(3) The filing of a notice of appeal to the U.S. Court of Appeals
for the Federal Circuit under 35 U.S.C. 141, or the commencement of a
civil action under 35 U.S.C. 145 or 146, unless the appeal or civil
action is terminated.
* * * * *
(d) If an applicant timely files a submission and fee set forth in
Sec. 1.17(e), the Office will withdraw the finality of any Office
action and the submission will be entered and considered. If an
applicant files a request for continued examination under this section
after appeal, but prior to a decision on the appeal, it will be treated
as a request to withdraw the appeal and to reopen prosecution of the
application before the examiner. An appeal brief (Sec. 41.37 of this
title) or a reply brief (Sec. 41.41 of this title), or related papers,
will not be considered a submission under this section.
* * * * *
Sec. 1.117 [Removed and Reserved]
0
13. Section 1.117 is removed and reserved.
0
14. Section 1.136 is amended by revising paragraph (a)(1) to read as
follows:
Sec. 1.136 Extensions of time.
(a)(1) If an applicant is required to reply within a nonstatutory
or shortened statutory time period, applicant may extend the time
period for reply up to the earlier of the expiration of any maximum
period set by statute or five months after the time period set for
reply, if a petition for an extension of time and the fee set in Sec.
1.17(a) are filed, unless:
(i) Applicant is notified otherwise in an Office action;
(ii) The reply is a reply brief submitted pursuant to Sec. 41.41
of this title;
(iii) The reply is a request for an oral hearing submitted pursuant
to Sec. 41.47(a) of this title;
(iv) The reply is to a decision by the Board of Patent Appeals and
Interferences pursuant to Sec. 1.304 or to Sec. 41.50 or Sec. 41.52
of this title; or
(v) The application is involved in a contested case (Sec.
41.101(a) of this title).
* * * * *
0
15. Section 1.142 is amended by removing paragraph (c) and by revising
paragraph (a) to read as follows:
Sec. 1.142 Requirement for restriction.
(a) If two or more independent and distinct inventions are claimed
in a single application, the examiner in an Office action will require
the applicant in the reply to that action to elect an invention to
which the claims will be restricted, this official action being called
a requirement for restriction (also known as a requirement for
division). Such requirement will normally be made before any action on
the merits; however, it may be made at any time before final action.
* * * * *
0
16. Section 1.145 is revised to read as follows:
Sec. 1.145 Subsequent presentation of claims for different invention.
If, after an Office action on an application, the applicant
presents claims directed to an invention distinct from and independent
of the invention previously claimed, the applicant will be required to
restrict the claims to the invention previously claimed if the
amendment is entered, subject to reconsideration and review as provided
in Sec. Sec. 1.143 and 1.144.
Sec. 1.265 [Removed]
0
17. Section 1.265 is removed.
0
18. 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. Otherwise, the submission will be
considered as being made under 35 U.S.C. 111(a).
* * * * *
Sec. 1.704 [Amended]
0
19. Section 1.704 is amended by removing existing paragraph (c)(11) and
redesignating paragraph (c)(12) as paragraph (c)(11).
Dated: October 7, 2009.
David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. E9-24667 Filed 10-13-09; 8:45 am]
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