Consolidated Rules - Patent and Trademark Office

8/12/2019 Consolidated Rules - Patent and Trademark Office

1/389


2/389


3/389


4/389


5/389


6/389


7/389


8/389


9/389


10/389


11/389


12/389


13/389


14/389


15/389


16/389


17/389


18/389


19/389


20/389


21/389


22/389


23/389


24/389


25/389


26/389


27/389


28/389


29/389


30/389


31/389


32/389


33/389


34/389


35/389


36/389


37/389


38/389


39/389


40/389


41/389


42/389


43/389


44/389


45/389


46/389


47/389


48/389


49/389


50/389


51/389


52/389


53/389


54/389


55/389


56/389


57/389


58/389


59/389


60/389


61/389


62/389


63/389


64/389


65/389


66/389


67/389


68/389


69/389


70/389


71/389


72/389


73/389


74/389


75/389


76/389


77/389


78/389


79/389


80/389


81/389


82/389


83/389


84/389


85/389


86/389


87/389


88/389


89/389


90/389


91/389


92/389


93/389


94/389


95/389


96/389


97/389


98/389


99/389


100/389


101/389


102/389


103/389


104/389


105/389


106/389


107/389


108/389


109/389


110/389


111/389


112/389

MANUAL OF PATENT EXAMINING PROCEDURE

as provided in 1.981 or as permitted by 41.77(b)(1) of this title.

(g) After decision on appeal, amendments,af davits and other evidence can only be made asprovided in 1.198 and 1.981 , or to carry into effecta recommendation under 41.50(c) of this title.

[24 FR 10332, Dec. 22, 1959; 46 FR 29183, May 29, 1981;para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adoptedas nal, 65 FR 50092, Aug. 16, 2000); paras. (b) and (d) revised, 65FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 69 FR 49959,Aug. 12, 2004, effective Sept. 13, 2004]

1.117 [Reserved]

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, effectiveDec. 1, 1997; added, 72 FR 46716, Aug. 21, 2007 (implementationenjoined and never became effective); removed, 74 FR 52686, Oct. 14,2009, effective Oct. 14, 2009 (to remove changes made by the nalrules in 72 FR 46716 from the CFR)]

1.118 [Reserved]

[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; removedand reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

1.119 [Reserved]

[32 FR 13583, Sept. 28, 1967; removed and reserved, 62 FR53131, Oct. 10, 1997, effective Dec. 1, 1997]

1.121 Manner of making amendments inapplications.

(a) Amendments in applications, other than reissueapplications. Amendments in applications, other thanreissue applications, are made by ling a paper, incompliance with 1.52 , directing that speci edamendments be made.

(b) Speci cation . Amendments to the speci cation,other than the claims, computer listings ( 1.96 ) andsequence listings ( 1.825 ), must be made by adding,deleting or replacing a paragraph, by replacing a section,or by a substitute speci cation, in the manner speci edin this section.

(1) Amendment to delete, replace, or add a paragraph . Amendments to the speci cation, includingamendment to a section heading or the title ofthe invention which are considered for amendmentpurposes to be an amendment of a paragraph, must bemade by submitting:

(i) An instruction, which unambiguouslyidenti es the location, to delete one or moreparagraphs of the speci cation, replace a paragraphwith one or more replacement paragraphs, or addone or more paragraphs;

(ii) The full text of any replacement paragraphwith markings to show all the changes relative tothe previous version of the paragraph. The text ofany added subject matter must be shown byunderlining the added text. The text of any deleted

matter must be shown by strike-through except thatdouble brackets placed before and after the deletedcharacters may be used to show deletion of ve orfewer consecutive characters. The text of any deletedsubject matter must be shown by being placed withindouble brackets if strikethrough cannot be easilyperceived;

(iii) The full text of any added paragraphswithout any underlining; and

(iv) The text of a paragraph to be deleted mustnot be presented with strike-through or placed withindouble brackets. The instruction to delete mayidentify a paragraph by its paragraph number orinclude a few words from the beginning, and end,of the paragraph, if needed for paragraphidenti cation purposes.

(2) Amendment by replacement section . If the

sections of the speci

cation contain section headingsas provided in 1.77(b) , 1.154(b) , or 1.163(c) ,amendments to the speci cation, other than the claims,may be made by submitting:

(i) A reference to the section heading along withan instruction, which unambiguously identi es thelocation, to delete that section of the speci cationand to replace such deleted section with areplacement section; and;

(ii) A replacement section with markings toshow all changes relative to the previous version ofthe section. The text of any added subject mattermust be shown by underlining the added text. Thetext of any deleted matter must be shown bystrike-through except that double brackets placedbefore and after the deleted characters may be usedto show deletion of ve or fewer consecutivecharacters. The text of any deleted subject mattermust be shown by being placed within doublebrackets if strike-through cannot be easily perceived.

(3) Amendment by substitute speci cation . Thespeci cation, other than the claims, may also beamended by submitting:

(i) An instruction to replace the speci cation;and

(ii) A substitute speci cation in compliance with 1.125(b) and (c) .

(4) Reinstatement of previously deleted paragraphor section . A previously deleted paragraph or sectionmay be reinstated only by a subsequent amendmentadding the previously deleted paragraph or section.

(5) Presentation in subsequent amendmentdocument . Once a paragraph or section is amended in

a

rst amendment document, the paragraph or sectionshall not be represented in a subsequent amendment

Rev. , May 2013 R-112
http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-


113/389

CONSOLIDATED PATENT RULES 1.121

document unless it is amended again or a substitutespeci cation is provided.

(c) Claims . Amendments to a claim must be madeby rewriting the entire claim with all changes ( e.g.,additions and deletions) as indicated in this subsection,except when the claim is being canceled. Each

amendment document that includes a change to anexisting claim, cancellation of an existing claim oraddition of a new claim, must include a complete listingof all claims ever presented, including the text of allpending and withdrawn claims, in the application. Theclaim listing, including the text of the claims, in theamendment document will serve to replace all priorversions of the claims, in the application. In the claimlisting, the status of every claim must be indicated afterits claim number by using one of the following identi ersin a parenthetical expression: (Original), (Currentlyamended), (Canceled), (Withdrawn), (Previously

presented), (New), and (Not entered).(1) Claim listing. All of the claims presented in a

claim listing shall be presented in ascending numericalorder. Consecutive claims having the same status of canceled or not entered may be aggregated intoone statement ( e.g. , Claims 1 5 (canceled)). The claimlisting shall commence on a separate sheet of theamendment document and the sheet(s) that contain thetext of any part of the claims shall not contain anyother part of the amendment.

(2) When claim text with markings is required. All

claims being currently amended in an amendmentpaper shall be presented in the claim listing, indicatea status of currently amended, and be submitted withmarkings to indicate the changes that have been maderelative to the immediate prior version of the claims.The text of any added subject matter must be shownby underlining the added text. The text of any deletedmatter must be shown by strike-through except thatdouble brackets placed before and after the deletedcharacters may be used to show deletion of ve orfewer consecutive characters. The text of any deletedsubject matter must be shown by being placed within

double brackets if strike-through cannot be easilyperceived. Only claims having the status of currentlyamended, or withdrawn if also being amended, shallinclude markings. If a withdrawn claim is currentlyamended, its status in the claim listing may beidenti ed as withdrawn currently amended.

(3) When claim text in clean version is required.The text of all pending claims not being currentlyamended shall be presented in the claim listing in cleanversion, i.e., without any markings in the presentationof text. The presentation of a clean version of any claimhaving the status of original, withdrawn or previously presented will constitute an assertion that

it has not been changed relative to the immediate priorversion, except to omit markings that may have beenpresent in the immediate prior version of the claimsof the status of withdrawn or previously presented. Any claim added by amendment must be indicatedwith the status of new and presented in clean version,i.e., without any underlining.

(4) When claim text shall not be presented;canceling a claim.

(i) No claim text shall be presented for any claimin the claim listing with the status of canceled or not entered.

(ii) Cancellation of a claim shall be effected byan instruction to cancel a particular claim number.Identifying the status of a claim in the claim listingas canceled will constitute an instruction to cancelthe claim.

(5) Reinstatement of previously canceled claim.A claim which was previously canceled may bereinstated only by adding the claim as a new claimwith a new claim number.

(d) Drawings : One or more application drawingsshall be amended in the following manner: Any changesto an application drawing must be in compliance with 1.84 and must be submitted on a replacement sheet ofdrawings which shall be an attachment to the amendmentdocument and, in the top margin, labeled ReplacementSheet . Any replacement sheet of drawings shall includeall of the gures appearing on the immediate prior versionof the sheet, even if only one gure is amended. Any newsheet of drawings containing an additional gure mustbe labeled in the top margin as New Sheet . All changesto the drawings shall be explained, in detail, in either thedrawing amendment or remarks section of the amendmentpaper.

(1) A marked-up copy of any amended drawing gure, including annotations indicating the changesmade, may be included. The marked-up copy must beclearly labeled as Annotated Sheet and must bepresented in the amendment or remarks section that

explains the change to the drawings.(2) A marked-up copy of any amended drawing

gure, including annotations indicating the changesmade, must be provided when required by theexaminer.

(e) Disclosure consistency. The disclosure must beamended, when required by the Of ce, to correctinaccuracies of description and de nition, and to securesubstantial correspondence between the claims, theremainder of the speci cation, and the drawings.

(f) No new matter. No amendment may introducenew matter into the disclosure of an application.

R-113 Rev. , May 2013
http://-/?-http://-/?-


114/389


115/389


1.129 Transitional procedures for limitedexamination after nal rejection andrestriction practice.

(a) An applicant in an application, other than forreissue or a design patent, that has been pending for atleast two years as of June 8, 1995, taking into account

any reference made in such application to any earlier led application under 35 U.S.C. 120 , 121 and 365(c) ,is entitled to have a rst submission entered andconsidered on the merits after nal rejection under thefollowing circumstances: The Of ce will consider sucha submission, if the rst submission and the fee set forthin 1.17(r) are led prior to the ling of an appeal briefand prior to abandonment of the application. The nalityof the nal rejection is automatically withdrawn uponthe timely ling of the submission and payment of thefee set forth in 1.17(r) . If a subsequent nal rejectionis made in the application, applicant is entitled to have a

second submission entered and considered on the meritsafter the subsequent nal rejection under the followingcircumstances: The Of ce will consider such asubmission, if the second submission and a second feeset forth in 1.17(r) are led prior to the ling of anappeal brief and prior to abandonment of the application.The nality of the subsequent nal rejection isautomatically withdrawn upon the timely ling of thesubmission and payment of the second fee set forth in 1.17(r) . Any submission led after a nal rejectionmade in an application subsequent to the fee set forth in 1.17(r) having been twice paid will be treated as set

forth in 1.116 . A submission as used in this paragraphincludes, but is not limited to, an information disclosurestatement, an amendment to the written description,claims or drawings and a new substantive argument ornew evidence in support of patentability.

(b)

(1) In an application, other than for reissue or adesign patent, that has been pending for at least threeyears as of June 8, 1995, taking into account anyreference made in the application to any earlier ledapplication under 35 U.S.C. 120 , 121 and 365(c) , no

requirement for restriction or for the

ling of divisionalapplications shall be made or maintained in theapplication after June 8, 1995, except where:

(i) The requirement was rst made in theapplication or any earlier led application under35 U.S.C. 120 , 121 and 365(c) prior to April 8,1995;

(ii) The examiner has not made a requirementfor restriction in the present or parent applicationprior to April 8, 1995, due to actions by theapplicant; or

(iii) The required fee for examination of eachadditional invention was not paid.

(2) If the application contains more than oneindependent and distinct invention and a requirementfor restriction or for the ling of divisional applicationscannot be made or maintained pursuant to thisparagraph, applicant will be so noti ed and given atime period to:

(i) Elect the invention or inventions to besearched and examined, if no election has been madeprior to the notice, and pay the fee set forth in 1.17(s) for each independent and distinct inventionclaimed in the application in excess of one whichapplicant elects;

(ii) Con rm an election made prior to the noticeand pay the fee set forth in 1.17(s) for eachindependent and distinct invention claimed in theapplication in addition to the one invention whichapplicant previously elected; or

(iii) File a petition under this section traversingthe requirement. If the required petition is led ina timely manner, the original time period for electingand paying the fee set forth in 1.17(s) will bedeferred and any decision on the petition af rmingor modifying the requirement will set a new timeperiod to elect the invention or inventions to besearched and examined and to pay the fee set forthin 1.17(s) for each independent and distinctinvention claimed in the application in excess ofone which applicant elects.

(3) The additional inventions for which the required

fee has not been paid will be withdrawn fromconsideration under 1.142(b) . An applicant whodesires examination of an invention so withdrawn fromconsideration can le a divisional application under35 U.S.C. 121 .

(c) The provisions of this section shall not beapplicable to any application led after June 8, 1995.

[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995]

AFFIDAVITS OVERCOMING REJECTIONS

1.130 Af davit or declaration of attribution orprior public disclosure under theLeahy-Smith America Invents Act.

(a) Af davit or declaration of attribution . When anyclaim of an application or a patent under reexaminationis rejected, the applicant or patent owner may submit anappropriate af davit or declaration to disqualify adisclosure as prior art by establishing that the disclosurewas made by the inventor or a joint inventor, or thesubject matter disclosed was obtained directly orindirectly from the inventor or a joint inventor.

(b) Af davit or declaration of prior public disclosure .When any claim of an application or a patent under

R-115 Rev. , May 2013
http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-


116/389


reexamination is rejected, the applicant or patent ownermay submit an appropriate af davit or declaration todisqualify a disclosure as prior art by establishing thatthe subject matter disclosed had, before such disclosurewas made or before such subject matter was effectively led, been publicly disclosed by the inventor or a jointinventor or another who obtained the subject matterdisclosed directly or indirectly from the inventor or a

joint inventor. An af davit or declaration under thisparagraph must identify the subject matter publiclydisclosed and provide the date such subject matter waspublicly disclosed by the inventor or a joint inventor oranother who obtained the subject matter disclosed directlyor indirectly from the inventor or a joint inventor.

(1) If the subject matter publicly disclosed on thatdate was in a printed publication, the af davit ordeclaration must be accompanied by a copy of theprinted publication.

(2) If the subject matter publicly disclosed on thatdate was not in a printed publication, the af davit ordeclaration must describe the subject matter withsuf cient detail and particularity to determine whatsubject matter had been publicly disclosed on that dateby the inventor or a joint inventor or another whoobtained the subject matter disclosed directly orindirectly from the inventor or a joint inventor.

(c) When this section is not available . The provisionsof this section are not available if the rejection is basedupon a disclosure made more than one year before the

effective

ling date of the claimed invention. Theprovisions of this section may not be available if therejection is based upon a U.S. patent or U.S. patentapplication publication of a patented or pendingapplication naming another inventor, the patent orpending application claims an invention that is the sameor substantially the same as the applicant's or patentowner's claimed invention, and the af davit or declarationcontends that an inventor named in the U.S. patent orU.S. patent application publication derived the claimedinvention from the inventor or a joint inventor named inthe application or patent, in which case an applicant or a

patent owner may

le a petition for a derivationproceeding pursuant to 42.401 et seq. of this title.

(d) Applications and patents to which this section isapplicable . The provisions of this section apply to anyapplication for patent, and to any patent issuing thereon,that contains, or contained at any time:

(1) A claim to a claimed invention that has aneffective ling date as de ned in 35 U.S.C. 100(i) thatis on or after March 16, 2013; or

(2) A speci c reference under 35 U.S.C. 120 , 121 ,or 365(c) to any patent or application that contains, or

contained at any time, a claim to a claimed invention

that has an effective ling date as de ned in 35 U.S.C. 100(i) that is on or after March 16, 2013.

[Added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996;heading and para. (a) revised, 65 FR 57024, Sept. 20, 2000, effectiveNov. 29, 2000; para. (b) removed and reserved, 70 FR 1818, Jan. 11,2005, effective Dec. 10, 2004; revised, 78 FR 11024, Feb. 14, 2013,effective Mar. 16, 2013]

1.131 Af davit or declaration of prior inventionor to disqualify commonly owned patentor published application as prior art.

[Editor Note: Applicable to patent applications led under 35U.S.C. 111(a) or 363 on or after Sept. 16, 2012 *]

(a) When any claim of an application or a patentunder reexamination is rejected, the inventor of thesubject matter of the rejected claim, the owner of thepatent under reexamination, or the party quali ed under 1.42 or 1.46 , may submit an appropriate oath ordeclaration to establish invention of the subject matter

of the rejected claim prior to the effective date of thereference or activity on which the rejection is based. Theeffective date of a U.S. patent, U.S. patent applicationpublication, or international application publication underPCT Article 21(2) is the earlier of its publication dateor the date that it is effective as a reference under 35 U.S.C. 102(e) as in effect on March 15, 2013. Priorinvention may not be established under this section inany country other than the United States, a NAFTAcountry, or a WTO member country. Prior invention maynot be established under this section before December 8,1993, in a NAFTA country other than the United States,

or before January 1, 1996, in a WTO member countryother than a NAFTA country. Prior invention may notbe established under this section if either:

(1) The rejection is based upon a U.S. patent orU.S. patent application publication of a pending orpatented application naming another inventor whichclaims interfering subject matter as de ned in 41.203(a) of this title, in which case an applicant maysuggest an interference pursuant to 41.202(a) of thistitle; or

(2) The rejection is based upon a statutory bar.

(b) The showing of facts for an oath or declarationunder paragraph (a) of this section shall be such, incharacter and weight, as to establish reduction to practiceprior to the effective date of the reference, or conceptionof the invention prior to the effective date of the referencecoupled with due diligence from prior to said date to asubsequent reduction to practice or to the ling of theapplication. Original exhibits of drawings or records, orphotocopies thereof, must accompany and form part ofthe af davit or declaration or their absence must besatisfactorily explained.

(c) When any claim of an application or a patentunder reexamination is rejected under 35 U.S.C. 103 as

Rev. , May 2013 R-116
http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-


117/389


in effect on March 15, 2013, on a U.S. patent or U.S.patent application publication which is not prior art under35 U.S.C. 102(b) as in effect on March 15, 2013, and theinventions de ned by the claims in the application orpatent under reexamination and by the claims in the patentor published application are not identical but are notpatentably distinct, and the inventions are owned by thesame party, the applicant or owner of the patent underreexamination may disqualify the patent or patentapplication publication as prior art. The patent or patentapplication publication can be disquali ed as prior artby submission of:

(1) A terminal disclaimer in accordance with 1.321(c); and

(2) An oath or declaration stating that theapplication or patent under reexamination and patentor published application are currently owned by thesame party, and that the inventor named in theapplication or patent under reexamination is the priorinventor under 35 U.S.C. 104 as in effect on March15, 2013.

(d) The provisions of this section apply to anyapplication for patent, and to any patent issuing thereon,that contains, or contained at any time:

(1) A claim to an invention that has an effective ling date as de ned in 35 U.S.C. 100(i) that is beforeMarch 16, 2013; or

(2) A speci c reference under 35 U.S.C. 120 , 121 ,or 365(c) to any patent or application that contains, orcontained at any time, a claim to an invention that hasan effective ling date as de ned in 35 U.S.C. 100(i) that is before March 16, 2013.

(e) In an application for patent to which the provisionsof 1.130 apply, and to any patent issuing thereon, theprovisions of this section are applicable only with respectto a rejection under 35 U.S.C. 102(g) as in effect onMarch 15, 2013.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a),50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar.21, 1985; 53 FR 23733, June 23, 1988, effective Sept. 12, 1988; para.(a)(1) revised and para. (a)(2) added, 60 FR 21043, May 1, 1995,effective May 31, 1995; para. (a) revised, 61 FR 42790, Aug. 19, 1996,effective Sept. 23, 1996; heading and para. (a) revised, 65 FR 54604,Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 65 FR 57024,Sept. 20, 2000, effective Nov. 29, 2000; para. (a)(1) revised, 69 FR49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69FR 56481, Sept. 21, 2004, effective Oct. 21, 2004; para. (a) introductorytext revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012;revised, 78 FR 11024, Feb. 14, 2013, effective Mar. 16, 2013]

[*The changes to para. (a) effective Sept. 16, 2012 wereapplicable only to patent applications led under 35 U.S.C. 111(a) or363 on or after Sept. 16, 2012. See 1.131 (pre-AIA) for the ruleotherwise in effect.]

1.131 (pre-AIA) Af davit or declaration of priorinvention.

[Editor Note: Applicable to patent applications led beforeSept. 16, 2012 *]

(a) When any claim of an application or a patentunder reexamination is rejected, the inventor of thesubject matter of the rejected claim, the owner of thepatent under reexamination, or the party quali ed under 1.42 , 1.43 , or 1.47 , may submit an appropriate oathor declaration to establish invention of the subject matterof the rejected claim prior to the effective date of thereference or activity on which the rejection is based. Theeffective date of a U.S. patent, U.S. patent applicationpublication, or international application publication underPCT Article 21(2) is the earlier of its publication dateor date that it is effective as a reference under 35 U.S.C. 102(e) . Prior invention may not be established under thissection in any country other than the United States, aNAFTA country, or a WTO member country. Priorinvention may not be established under this section beforeDecember 8, 1993, in a NAFTA country other than theUnited States, or before January 1, 1996, in a WTOmember country other than a NAFTA country. Priorinvention may not be established under this section ifeither:

(1) The rejection is based upon a U.S. patent orU.S. patent application publication of a pending orpatented application to another or others which claimsthe same patentable invention as de ned in 41.203(a)of this title, in which case an applicant may suggestan interference pursuant to 41.202(a) of this title; or

(2) The rejection is based upon a statutory bar.

(b) The showing of facts shall be such, in characterand weight, as to establish reduction to practice prior tothe effective date of the reference, or conception of theinvention prior to the effective date of the referencecoupled with due diligence from prior to said date to asubsequent reduction to practice or to the ling of theapplication. Original exhibits of drawings or records, orphotocopies thereof, must accompany and form part ofthe af davit or declaration or their absence must besatisfactorily explained.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;

para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; para. (a),50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 50 FR 11366, Mar.21, 1985; 53 FR 23733, June 23, 1988, effective Sept. 12, 1988; para.(a)(1) revised and para. (a)(2) added, 60 FR 21043, May 1, 1995,effective May 31, 1995; para. (a) revised, 61 FR 42790, Aug. 19, 1996,effective Sept. 23, 1996; heading and para. (a) revised, 65 FR 54604,Sept. 8, 2000, effective Sept. 8, 2000; para. (a) revised, 65 FR 57024,Sept. 20, 2000, effective Nov. 29, 2000; para. (a)(1) revised, 69 FR49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 69FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]

[*See 1.131 for more information and for the rule applicableto patent applications led under 35 U.S.C. 111(a) or 363 on or afterSept. 16, 2012]

1.132 Af davits or declarations traversingrejections or objections.

R-117 Rev. , May 2013
http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-


118/389


When any claim of an application or a patent underreexamination is rejected or objected to, any evidencesubmitted to traverse the rejection or objection on a basisnot otherwise provided for must be by way of an oath ordeclaration under this section.

[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; revised,61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; revised, 65 FR54604, Sept. 8, 2000, effective Sept. 8, 2000; revised 65 FR 57024,Sept. 20, 2000, effective Nov. 29, 2000]

INTERVIEWS

1.133 Interviews.

(a)

(1) Interviews with examiners concerningapplications and other matters pending before theOf ce must be conducted on Of ce premises and

within Of

ce hours, as the respective examiners maydesignate. Interviews will not be permitted at any othertime or place without the authority of the Director.

(2) An interview for the discussion of thepatentability of a pending application will not occurbefore the rst Of ce action, unless the application isa continuing or substitute application or the examinerdetermines that such an interview would advanceprosecution of the application.

(3) The examiner may require that an interview bescheduled in advance.

(b) In every instance where reconsideration isrequested in view of an interview with an examiner, acomplete written statement of the reasons presented atthe interview as warranting favorable action must be ledby the applicant. An interview does not remove thenecessity for reply to Of ce actions as speci ed in 1.111 and 1.135 .

[Para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 1997; para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov.7, 2000; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, effectiveMay 1, 2003; para. (a)(2) revised, 70 FR 56119, Sept. 26, 2005, effectiveNov. 25, 2005]

TIME FOR REPLY BY APPLICANT;ABANDONMENT OF APPLICATION

1.134 Time period for reply to an Of ce action.

An Of ce action will notify the applicant of anynon-statutory or shortened statutory time period set forreply to an Of ce action. Unless the applicant is noti edin writing that a reply is required in less than six months,a maximum period of six months is allowed.

[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; revised,

62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

1.135 Abandonment for failure to reply withintime period.

(a) If an applicant of a patent application fails to replywithin the time period provided under 1.134 and 1.136 , the application will become abandoned unlessan Of ce action indicates otherwise.

(b) Prosecution of an application to save it fromabandonment pursuant to paragraph (a) of this sectionmust include such complete and proper reply as thecondition of the application may require. The admissionof, or refusal to admit, any amendment after nalrejection or any amendment not responsive to the lastaction, or any related proceedings, will not operate tosave the application from abandonment.

(c) When reply by the applicant is a bona de attemptto advance the application to nal action, and issubstantially a complete reply to the non- nal Of ce

action, but consideration of some matter or compliancewith some requirement has been inadvertently omitted,applicant may be given a new time period for reply under 1.134 to supply the omission.

[Paras. (a), (b), and (c), 47 FR 41276, Sept. 17, 1982, effectiveOct. 1, 1982; para. (d) deleted, 49 FR 555, Jan. 4, 1984, effective Apr.1, 1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

1.136 Extensions of time.

(a)

(1) If an applicant is required to reply within anonstatutory or shortened statutory time period,

applicant may extend the time period for reply up tothe earlier of the expiration of any maximum periodset by statute or ve months after the time period setfor reply, if a petition for an extension of time and thefee set in 1.17(a) are led, unless:

(i) Applicant is noti ed otherwise in an Of ceaction;

(ii) The reply is a reply brief submitted pursuantto 41.41 of this title;

(iii) The reply is a request for an oral hearingsubmitted pursuant to 41.47(a) of this title;

(iv) The reply is to a decision by the Patent Trialand Appeal Board pursuant to 1.304 or to 41.50 or 41.52 of this title; or

(v) The application is involved in a contestedcase ( 41.101(a) of this title) or a derivationproceeding ( 42.4(b) of this title).

(2) The date on which the petition and the fee havebeen led is the date for purposes of determining theperiod of extension and the corresponding amount ofthe fee. The expiration of the time period is determinedby the amount of the fee paid. A reply must be ledprior to the expiration of the period of extension to

Rev. , May 2013 R-118
http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-


119/389


avoid abandonment of the application ( 1.135 ), butin no situation may an applicant reply later than themaximum time period set by statute, or be granted anextension of time under paragraph (b) of this sectionwhen the provisions of this paragraph are available.See 1.304 for extensions of time to appeal to the U.S.Court of Appeals for the Federal Circuit or tocommence a civil action; 1.550(c) for extensions oftime in ex parte reexamination proceedings, 1.956 for extensions of time in inter partes reexaminationproceedings; 41.4(a) and 41.121(a)(3) of this titlefor extensions of time in contested cases before thePatent Trial and Appeal Board; and 42.5(c) of thistitle for extensions of time in trials before the PatentTrial and Appeal Board.

(3) A written request may be submitted in anapplication that is an authorization to treat anyconcurrent or future reply, requiring a petition for an

extension of time under this paragraph for its timelysubmission, as incorporating a petition for extensionof time for the appropriate length of time. Anauthorization to charge all required fees, fees under 1.17 , or all required extension of time fees will betreated as a constructive petition for an extension oftime in any concurrent or future reply requiring apetition for an extension of time under this paragraphfor its timely submission. Submission of the fee setforth in 1.17(a) will also be treated as a constructivepetition for an extension of time in any concurrentreply requiring a petition for an extension of time under

this paragraph for its timely submission.(b) When a reply cannot be led within the time

period set for such reply and the provisions of paragraph(a) of this section are not available, the period for replywill be extended only for suf cient cause and for areasonable time speci ed. Any request for an extensionof time under this paragraph must be led on or beforethe day on which such reply is due, but the mere lingof such a request will not effect any extension under thisparagraph. In no situation can any extension carry thedate on which reply is due beyond the maximum timeperiod set by statute. See 1.304 for extensions of timeto appeal to the U.S. Court of Appeals for the FederalCircuit or to commence a civil action; 1.550(c) forextensions of time in ex parte reexamination proceedings; 1.956 for extensions of time in inter partesreexamination proceedings; 41.4(a) and 41.121(a)(3) of this title for extensions of time in contested casesbefore the Patent Trial and Appeal Board; and 42.5(c) of this title for extensions of time in trials before thePatent Trial and Appeal Board. Any request under thissection must be accompanied by the petition fee set forthin 1.17(g) .

(c) If an applicant is noti

ed in aNotice ofAllowability that an application is otherwise in condition

for allowance, the following time periods are notextendable if set in the Notice of Allowability or in anOf ce action having a mail date on or after the mail dateof the Notice of Allowability :

(1) The period for submitting the inventor's oathor declaration;

(2) The period for submitting formal drawings setunder 1.85(c) ; and

(3) The period for making a deposit set under 1.809(c) .

[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; 49 FR555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 1984,effective Feb. 11, 1985; 54 FR 29551, July 13, 1989, effective Aug.20, 1989; para. (a) revised, 58 FR 54504, Oct. 22, 1993, effective Jan.3, 1994; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;para. (c) added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;paras. (a)(2) and (b) revised, 65 FR 76756, Dec. 7, 2000, effective Feb.5, 2001; para. (c) revised, 66 FR 21090, Apr. 27, 2001, effective May29, 2001; paras. (a)(1), (a)(2), and (b) revised, 69 FR 49959, Aug. 12,2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 56481, Sept.21, 2004, effective Nov. 22, 2004; para. (b) revised, 70 FR 3880, Jan.27, 2005, effective Dec. 8, 2004; para. (a)(1) revised, 72 FR 46716,Aug. 21, 2007 (implementation enjoined and never became effective);para. (a)(1) revised, 74 FR 52686, Oct. 14, 2009, effective Oct. 14,2009 (to remove changes made by the nal rules in 72 FR 46716 fromthe CFR); paras. (a)(1)(iv), (a)(1)(v), (a)(2), and (b) revised, 77 FR46615, Aug. 6, 2012, effective Sept. 16, 2012; para. (c)(1) revised, 77FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

1.137 Revival of abandoned application,terminated or limited reexaminationprosecution, or lapsed patent.

(a) Unavoidable . If the delay in reply by applicantor patent owner was unavoidable, a petition may be ledpursuant to this paragraph to revive an abandonedapplication, a reexamination prosecution terminated under 1.550(d) or 1.957(b) or limited under 1.957(c) , ora lapsed patent. A grantable petition pursuant to thisparagraph must be accompanied by:

(1) The reply required to the outstanding Of ceaction or notice, unless previously led;

(2) The petition fee as set forth in 1.17(l) ;

(3) A showing to the satisfaction of the Directorthat the entire delay in ling the required reply fromthe due date for the reply until the ling of a grantablepetition pursuant to this paragraph was unavoidable;and

(4) Any terminal disclaimer (and fee as set forthin 1.20(d)) required pursuant to paragraph (d) of thissection.

(b) Unintentional . If the delay in reply by applicantor patent owner was unintentional, a petition may be ledpursuant to this paragraph to revive an abandonedapplication, a reexamination prosecution terminated under 1.550(d) or 1.957(b) or limited under 1.957(c) , or

R-119 Rev. , May 2013
http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-


120/389


121/389


revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para.(d)(3) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004;heading, paras. (a) introductory text, (b) introductory text, and (e)revised, 72 FR 18892, Apr. 16, 2007, effective May 16, 2007]

1.138 Express abandonment.

(a) An application may be expressly abandoned by ling a written declaration of abandonment identifyingthe application in the United States Patent and TrademarkOf ce. Express abandonment of the application may notbe recognized by the Of ce before the date of issue orpublication unless it is actually received by appropriateof cials in time to act.

(b) A written declaration of abandonment must besigned by a party authorized under 1.33(b)(1) , (b)(3) ,or (b)(4) to sign a paper in the application, except asotherwise provided in this paragraph. A registeredattorney or agent, not of record, who acts in arepresentative capacity under the provisions of 1.34(a)

when ling a continuing application, may expresslyabandon the prior application as of the ling date grantedto the continuing application.

(c) An applicant seeking to abandon an applicationto avoid publication of the application (see 1.211(a)(1) )must submit a declaration of express abandonment byway of a petition under this paragraph including the feeset forth in 1.17(h) in suf cient time to permit theappropriate of cials to recognize the abandonment andremove the application from the publication process.Applicants should expect that the petition will not begranted and the application will be published in regularcourse unless such declaration of express abandonmentand petition are received by the appropriate of cials morethan four weeks prior to the projected date of publication.

(d) An applicant seeking to abandon an application led under 35 U.S.C. 111(a) and 1.53(b) on or afterDecember 8, 2004, to obtain a refund of the search feeand excess claims fee paid in the application, must submita declaration of express abandonment by way of a petitionunder this paragraph before an examination has beenmade of the application. The date indicated on anycerti cate of mailing or transmission under 1.8 will not

be taken into account in determining whether a petitionunder 1.138(d) was led before an examination hasbeen made of the application. If a request for refund ofthe search fee and excess claims fee paid in theapplication is not led with the declaration of expressabandonment under this paragraph or within two monthsfrom the date on which the declaration of expressabandonment under this paragraph was led, the Of cemay retain the entire search fee and excess claims feepaid in the application. This two-month period is notextendable. If a petition and declaration of expressabandonment under this paragraph are not led before

an examination has been made of the application, theOf ce will not refund any part of the search fee and

excess claims fee paid in the application except asprovided in 1.26 .

[47 FR 47244, Oct. 25, 1982, effective Feb. 27, 1983; 49 FR48416, Dec. 12, 1984, effective Feb. 11, 1985; revised, 65 FR 54604,Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised and para. (c)added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c)revised and para. (d) added, 71 FR 12284, Mar. 10, 2006, effective

Mar. 10, 2006] 1.139 [Reserved]

[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 1995;removed and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1,1997]

JOINDER OF INVENTIONS IN ONEAPPLICATION; RESTRICTION

1.141 Different inventions in one nationalapplication.

(a) Two or more independent and distinct inventionsmay not be claimed in one national application, exceptthat more than one species of an invention, not to exceeda reasonable number, may be speci cally claimed indifferent claims in one national application, provided theapplication also includes an allowable claim generic toall the claimed species and all the claims to species inexcess of one are written in dependent form ( 1.75 ) orotherwise include all the limitations of the generic claim.

(b) Where claims to all three categories, product,process of making, and process of use, are included in anational application, a three way requirement for

restriction can only be made where the process of makingis distinct from the product. If the process of making andthe product are not distinct, the process of using may be

joined with the claims directed to the product and theprocess of making the product even though a showing ofdistinctness between the product and process of usingthe product can be made.

[52 FR 20046, May 28, 1987, effective July 1, 1987]

1.142 Requirement for restriction.

(a) If two or more independent and distinct inventionsare claimed in a single application, the examiner in an

Of ce action will require the applicant in the reply tothat action to elect an invention to which the claims willbe restricted, this of cial action being called arequirement for restriction (also known as a requirementfor division). Such requirement will normally be madebefore any action on the merits; however, it may be madeat any time before nal action.

(b) Claims to the invention or inventions not elected,if not canceled, are nevertheless withdrawn from furtherconsideration by the examiner by the election, subjecthowever to reinstatement in the event the requirementfor restriction is withdrawn or overruled.

R-121 Rev. , May 2013
http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-


122/389


[Para (a) revised, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 1997; para. (a) revised and (c) added, 72 FR 46716, Aug. 21, 2007(implementation enjoined and never became effective); para. (a) revisedand (c) removed, 74 FR 52686, Oct. 14, 2009, effective Oct. 14, 2009(to remove changes made by the nal rules in 72 FR 46716 from theCFR)]

1.143 Reconsideration of requirement.

If the applicant disagrees with the requirement forrestriction, he may request reconsideration andwithdrawal or modi cation of the requirement, givingthe reasons therefor. (See 1.111 ). In requestingreconsideration the applicant must indicate a provisionalelection of one invention for prosecution, which inventionshall be the one elected in the event the requirementbecomes nal. The requirement for restriction will bereconsidered on such a request. If the requirement isrepeated and made nal, the examiner will at the sametime act on the claims to the invention elected.

1.144 Petition from requirement for restriction.

After a nal requirement for restriction, the applicant, inaddition to making any reply due on the remainder of theaction, may petition the Director to review therequirement. Petition may be deferred until after nalaction on or allowance of claims to the invention elected,but must be led not later than appeal. A petition willnot be considered if reconsideration of the requirementwas not requested (see 1.181 ).

[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003]

1.145 Subsequent presentation of claims fordifferent invention.

If, after an of ce action on an application, the applicantpresents claims directed to an invention distinct from andindependent of the invention previously claimed, theapplicant will be required to restrict the claims to theinvention previously claimed if the amendment is entered,subject to reconsideration and review as provided in 1.143 and 1.144 .

[Revised, 72 FR 46716, Aug. 21, 2007 (implementationenjoined and never became effective); revised, 74 FR 52686, Oct. 14,2009, effective Oct. 14, 2009 (to remove changes made by the nalrules in 72 FR 46716 from the CFR)]

1.146 Election of species.

In the rst action on an application containing a genericclaim to a generic invention (genus) and claims to morethan one patentably distinct species embraced thereby,the examiner may require the applicant in the reply tothat action to elect a species of his or her invention towhich his or her claim will be restricted if no claim tothe genus is found to be allowable. However, if such

application contains claims directed to more than a

reasonable number of species, the examiner may requirerestriction of the claims to not more than a reasonablenumber of species before taking further action in theapplication.

[43 FR 20465, May 11, 1978; revised, 62 FR 53131, Oct. 10,1997, effective Dec. 1, 1997]

DESIGN PATENTS

1.151 Rules applicable.

The rules relating to applications for patents for otherinventions or discoveries are also applicable toapplications for patents for designs except as otherwiseprovided.

1.152 Design drawings.

The design must be represented by a drawing thatcomplies with the requirements of 1.84 and mustcontain a suf cient number of views to constitute acomplete disclosure of the appearance of the design.Appropriate and adequate surface shading should be usedto show the character or contour of the surfacesrepresented. Solid black surface shading is not permittedexcept when used to represent the color black as well ascolor contrast. Broken lines may be used to show visibleenvironmental structure, but may not be used to showhidden planes and surfaces that cannot be seen throughopaque materials. Alternate positions of a designcomponent, illustrated by full and broken lines in thesame view are not permitted in a design drawing.Photographs and ink drawings are not permitted to becombined as formal drawings in one application.Photographs submitted in lieu of ink drawings in designpatent applications must not disclose environmentalstructure but must be limited to the design claimed forthe article.

[53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; amended,58 FR 38719, July 20, 1993, effective Oct. 1, 1993; revised, 62 FR53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604,Sept. 8, 2000, effective Sept. 8, 2000]

1.153 Title, description and claim, oath ordeclaration.

[Editor Note: Para. (b) below is applicable only to patentapplications led under 35 U.S.C. 111(a) or 363 on or after September16, 2012 *]

(a) The title of the design must designate theparticular article. No description, other than a referenceto the drawing, is ordinarily required. The claim shall bein formal terms to the ornamental design for the article(specifying name) as shown, or as shown and described.More than one claim is neither required nor permitted.

Rev. , May 2013 R-122
http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-


123/389


(b) The inventor's oath or declaration must complywith the requirements of 1.63 , or comply with therequirements of 1.64 for a substitute statement.

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964;para. (b), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; para. (b)revised, 77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[*The changes to para. (b) effective Sept. 16, 2012 areapplicable only to patent applications led under 35 U.S.C. 111(a) or363 on or after Sept. 16, 2012. See 1.153 (pre-AIA) for para. (b)otherwise in effect.]

1.153 (pre-AIA) Title, description and claim, oathor declaration.

[Editor Note: Para. (b) below is not applicable to patentapplications led under 35 U.S.C. 111(a) or 363 on or after Sept. 16,2012 *]

(a) The title of the design must designate theparticular article. No description, other than a referenceto the drawing, is ordinarily required. The claim shall bein formal terms to the ornamental design for the article(specifying name) as shown, or as shown and described.More than one claim is neither required nor permitted.

(b) The oath or declaration required of the applicantmust comply with 1.63 .

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964;para. (b), 48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983]

[*See 1.153 for more information and for para. (b) applicableto patent applications led under 35 U.S.C. 111(a) or 363 on or afterSept. 16, 2012]

1.154 Arrangement of application elements in adesign application.

(a) The elements of the design application, ifapplicable, should appear in the following order:

(1) Design application transmittal form.

(2) Fee transmittal form.

(3) Application data sheet (see 1.76 ).

(4) Speci cation.

(5) Drawings or photographs.

(6) The inventor's oath or declaration ( see 1.153(b) ).

(b) The speci cation should include the followingsections in order:

(1) Preamble, stating the name of the applicant,title of the design, and a brief description of the natureand intended use of the article in which the design isembodied.

(2) Cross-reference to related applications (unlessincluded in the application data sheet).

(3) Statement regarding federally sponsoredresearch or development.

(4) Description of the gure or gures of thedrawing.

(5) Feature description.

(6) A single claim.

(c) The text of the speci cation sections de ned in

paragraph (b) of this section, if applicable, should bepreceded by a section heading in uppercase letters withoutunderlining or bold type.

[24 FR 10332, Dec. 22, 1959, para. (e), 48 FR 2713, Jan. 20,1983, effective date Feb. 27, 1983; revised, 61 FR 42790, Aug. 19,1996, effective Sept. 23, 1996; para. (a)(3) revised, 62 FR 53131, Oct.10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000,effective Nov. 7, 2000; para. (a)(6) revised, 77 FR 48776, Aug. 14,2012, effective Sept. 16, 2012]

1.155 Expedited examination of designapplications.

(a) The applicant may request that the Of ce expedite

the examination of a design application. To qualify forexpedited examination:

(1) The application must include drawings incompliance with 1.84 ;

(2) The applicant must have conducted apreexamination search; and

(3) The applicant must le a request for expeditedexamination including:

(i) The fee set forth in 1.17(k) ; and

(ii) A statement that a preexamination search

was conducted. The statement must also indicatethe eld of search and include an informationdisclosure statement in compliance with 1.98 .

(b) The Of ce will not examine an application thatis not in condition for examination ( e.g. , missing basic ling fee) even if the applicant les a request forexpedited examination under this section.

[47 FR 41277, Sept. 17, 1982, effective date Oct. 1, 1982; paras.(b)-(d) amended, paras. (e) and (f) added, 58 FR 44277, Aug. 20, 1993,effective Sept. 20, 1993; revised, 62 FR 53131, Oct. 10, 1997, effectiveDec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8,2000]

PLANT PATENTS

1.161 Rules applicable.

The rules relating to applications for patent for otherinventions or discoveries are also applicable toapplications for patents for plants except as otherwiseprovided.

1.162 Applicant, oath or declaration.

[Editor Note: Applicable only to patent applications led under35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

R-123 Rev. , May 2013
http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-


124/389


The inventor named for a plant patent application mustbe the person who has invented or discovered andasexually reproduced the new and distinct variety of plantfor which a patent is sought. The inventor's oath ordeclaration, in addition to the averments required by 1.63 or 1.64 , must state that the inventor has asexuallyreproduced the plant. Where the plant is a newly foundplant, the inventor's oath or declaration must also statethat it was found in a cultivated area.

[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; revised,77 FR 48776, Aug. 14, 2012, effective Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are applicable only topatent applications led under 35 U.S.C. 111(a) or 363 on or after Sept.16, 2012. See 1.162 (pre-AIA) for the rule otherwise in effect.]

1.162 (pre-AIA) Applicant, oath or declaration.

[Editor Note: Not applicable to patent applications led under35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

The applicant for a plant patent must be the person whohas invented or discovered and asexually reproduced thenew and distinct variety of plant for which a patent issought (or as provided in 1.42 , 1.43 , and 1.47 ). Theoath or declaration required of the applicant, in additionto the averments required by 1.63 , must state that heor she has asexually reproduced the plant. Where theplant is a newly found plant the oath or declaration mustalso state that it was found in a cultivated area.

[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983]

[*See 1.162 for more information and for the rule applicable

to patent applications led under 35 U.S.C. 111(a) or 363 on or afterSept. 16, 2012]

1.163 Speci cation and arrangement ofapplication elements in a plant application.

(a) The speci cation must contain as full andcomplete a disclosure as possible of the plant and thecharacteristics thereof that distinguish the same overrelated known varieties, and its antecedents, and mustparticularly point out where and in what manner thevariety of plant has been asexually reproduced. For anewly found plant, the speci cation must particularlypoint out the location and character of the area where theplant was discovered.

(b) The elements of the plant application, ifapplicable, should appear in the following order:

(1) Plant application transmittal form.

(2) Fee transmittal form.

(3) Application data sheet (see 1.76 ).

(4) Speci cation.

(5) Drawings (in duplicate).

(6) The inventor's oath or declaration ( 1.162 ).

(c) The speci cation should include the followingsections in order:

(1) Title of the invention, which may include anintroductory portion stating the name, citizenship, andresidence of the applicant.

(2) Cross-reference to related applications (unlessincluded in the application data sheet).

(3) Statement regarding federally sponsoredresearch or development.

(4) Latin name of the genus and species of the plantclaimed.

(5) Variety denomination.

(6) Background of the invention.

(7) Brief summary of the invention.

(8) Brief description of the drawing.

(9) Detailed botanical description.(10) A single claim.

(11) Abstract of the disclosure.

(d) The text of the speci cation or sections de nedin paragraph (c) of this section, if applicable, should bepreceded by a section heading in upper case, withoutunderlining or bold type.

[24 FR 10332, Dec. 22, 1959; para. (b), 48 FR 2713, Jan. 20,1983, effective Feb. 27, 1983; paras. (c) and (d) added, 61 FR 42790,Aug. 19, 1996, effective Sept. 23, 1996; para. (b) revised, 62 FR 53131,Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 54604, Sept. 8,

2000, effective Nov. 7, 2000; para. (b)(6) revised, 77 FR 48776, Aug.14, 2012, effective Sept. 16, 2012]

1.164 Claim.

The claim shall be in formal terms to the new and distinctvariety of the speci ed plant as described and illustrated,and may also recite the principal distinguishingcharacteristics. More than one claim is not permitted.

1.165 Plant Drawings.

(a) Plant patent drawings should be artistically andcompetently executed and must comply with the

requirements of 1.84 . View numbers and referencecharacters need not be employed unless required by theexaminer. The drawing must disclose all the distinctivecharacteristics of the plant capable of visualrepresentation.

(b) The drawings may be in color. The drawing mustbe in color if color is a distinguishing characteristic ofthe new variety. Two copies of color drawings orphotographs must be submitted.

[24 FR 10332, Dec. 22, 1959; para. (b), 47 FR 41277, Sept. 17,1982, effective Oct. 1, 1982; paras. (a) and (b) amended, 58 FR 38719,July 20, 1993, effective Oct. 1, 1993; para. (b) revised, 65 FR 57024,Sept. 20, 2000, effective Nov. 29, 2000; para. (b) revised, 69 FR 56481,Sept. 21, 2004, effective Oct. 21, 2004]

Rev. , May 2013 R-124
http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-


125/389


1.166 Specimens.

The applicant may be required to furnish specimens ofthe plant, or its ower or fruit, in a quantity and at a timein its stage of growth as may be designated, for study andinspection. Such specimens, properly packed, must beforwarded in conformity with instructions furnished to

the applicant. When it is not possible to forward suchspecimens, plants must be made available for of cialinspection where grown.

1.167 Examination.

Applications may be submitted by the Patent andTrademark Of ce to the Department of Agriculture forstudy and report.

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 1969;revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

REISSUES

1.171 Application for reissue.

An application for reissue must contain the same partsrequired for an application for an original patent,complying with all the rules relating thereto except asotherwise provided, and in addition, must comply withthe requirements of the rules relating to reissueapplications.

[47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; revised,54 FR 6893, Feb. 17, 1989, 54 FR 9432, March 7, 1989, effective Apr.17, 1989; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; revised,62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997]

1.172 Reissue applicant.

[Editor Note: Applicable only to patent applications led under35 U.S.C. 111(a) or 363 on or after September 16, 2012 *]

(a) The reissue applicant is the original patentee, orthe current patent owner if there has been an assignment.A reissue application must be accompanied by the writtenconsent of all assignees, if any, currently owning anundivided interest in the patent. All assignees consentingto the reissue must establish their ownership in the patent

by ling in the reissue application a submission inaccordance with the provisions of 3.73(c) of thischapter.

(b) A reissue will be granted to the original patentee,his legal representatives or assigns as the interest mayappear.

[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20,1983, effective Feb. 27, 1983; para. (a) revised, 62 FR 53131, Oct. 10,1997, effective Dec. 1, 1997; revised, 77 FR 48776, Aug. 14, 2012,effective Sept. 16, 2012]

[*The changes effective Sept. 16, 2012 are applicable only topatent applications led under 35 U.S.C. 111(a) or 363 on or after Sept.

16, 2012. See 1.172 (pre-AIA) for the rule otherwise in effect.]

1.172 (pre-AIA) Applicants, assignees.

[Editor Note: Not applicable to patent applications led under35 U.S.C. 111(a) or 363 on or after Sept. 16, 2012 *]

(a) A reissue oath must be signed and sworn to ordeclaration made by the inventor or inventors except asotherwise provided (see 1.42 , 1.43 , 1.47 ), and must

be accompanied by the written consent of all assignees,if any, owning an undivided interest in the patent, but areissue oath may be made and sworn to or declarationmade by the assignee of the entire interest if theapplication does not seek to enlarge the scope of theclaims of the original patent. All assignees consenting tothe reissue must establish their ownership interest in thepatent by ling in the reissue application a submissionin accordance with the provisions of 3.73(b) of thischapter.

(b) A reissue will be granted to the original patentee,his legal representatives or assigns as the interest mayappear.

[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, Jan. 20,1983, effective Feb. 27, 1983; para. (a) revised, 62 FR 53131, Oct. 10,1997, effective Dec. 1, 1997]


1.173 Reissue speci cation, drawings, andamendments.

(a) Contents of a reissue application . An applicationfor reissue must contain the entire speci cation, including

the claims, and the drawings of the patent. No new mattershall be introduced into the application. No reissue patentshall be granted enlarging the scope of the claims of theoriginal patent unless applied for within two years fromthe grant of the original patent, pursuant to 35 U.S.C. 251.

(1) Speci cation, including claims. The entirespeci cation, including the claims, of the patent forwhich reissue is requested must be furnished in theform of a copy of the printed patent, in double columnformat, each page on only one side of a single sheetof paper. If an amendment of the reissue applicationis to be included, it must be made pursuant toparagraph (b) of this section. The formal requirementsfor papers making up the reissue application other thanthose set forth in this section are set out in 1.52 .Additionally, a copy of any disclaimer ( 1.321 ),certi cate of correction ( 1.322 through 1.324 ), orreexamination certi cate ( 1.570 ) issued in the patentmust be included. (See also 1.178 ).

(2) Drawings . Applicant must submit a clean copyof each drawing sheet of the printed patent at the timethe reissue application is led. If such copy complies

with 1.84 , no further drawings will be required.Where a drawing of the reissue application is to include

R-125 Rev. , May 2013
http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-http://-/?-http://-/?-http://-/?-http://localhost/var/www/apps/conversion/tmp/scratch_9/http://-/?-


126/389


any changes relative to the patent being reissued, thechanges to the drawing must be made in accordancewith paragraph (b)(3) of this section. The Of ce willnot transfer the drawings from the patent le to thereissue application.

(b) Making amendments in a reissue application . An

amendment in a reissue application is made either byphysically incorporating the changes into the speci cationwhen the application is led, or by a separate amendmentpaper. If amendment is made by incorporation, markingspursuant to paragraph (d) of this section must be used. Ifamendment is made by an amendment paper, the papermust direct that speci ed changes be made, as follows:

(1) Speci cation other than the claims . Changesto the speci cation, other than to the claims, must bemade by submission of the entire text of an added orrewritten paragraph, including markings pursuant toparagraph (d) of this section, except that an entireparagraph may be deleted by a statement deleting theparagraph without presentation of the text of theparagraph. The precise point in the speci cation mustbe identi ed where any added or rewritten paragraphis located. This paragraph applies whether theamendment is submitted on paper or compact disc (see 1.52(e)(1) and 1.821(c) , but not for discs submittedunder 1.821(e)).

(2) Claims . An amendment paper must includethe entire text of each claim being changed by suchamendment paper and of each claim being added by

such amendment paper. For any claim changed by theamendment paper, a parenthetical expression amended, twice amended, etc., should follow theclaim number. Each changed patent claim and eachadded claim must include markings pursuant toparagraph (d) of this section, except that a patent claimor added claim should be canceled by a statementcanceling the claim without presentation of the text ofthe claim.

(3) Drawings. One or more patent drawings shallbe amended in the following manner: Any changes toa patent drawing must be submitted as a replacement

sheet of drawings which shall be an attachment to theamendment document. Any replacement sheet ofdrawings must be in compliance with 1.84 and shallinclude all of the gures appearing on the originalversion of the sheet, even if only one gure isamended. Amended gures must be identi ed asAmended, and any added gure must be identi edas New. In the event that a gure is canceled, the gure must be surrounded by brackets and identi edas Canceled. All changes to the drawing(s) shall beexplained, in detail, beginning on a separate sheetaccompanying the papers including the amendment tothe drawings.

(i) A marked-up copy of any amended drawing gure, including annotations indicating the changesmade, may be included. The marked-up copy mustbe clearly labeled as Annotated Marked-upDrawings and must be presented in the amendmentor remarks section that explains the change to thedrawings.

(ii) A marked-up copy of any amended drawing gure, including annotations indicating the changesmade, must be provided when required by theexaminer.

(c) Status of claims and support for claim changes .Whenever there is an amendment to the claims pursuantto paragraph (b) of this section, there must also besupplied, on pages separate from the pages containingthe changes, the status ( i.e., pending or canceled), as ofthe date of the amendment, of all patent claims and of alladded claims, and an explanation of the support in thedisclosure of the patent for the changes made to theclaims.

(d) Changes shown by markings . Any changesrelative to the patent being reissued which are made tothe speci cation, including the claims, upon ling, or byan amendment paper in the reissue application, mustinclude the following markings:

(1) The matter to be omitted by reissue must beenclosed in brackets; and

(2) The matter to be added by reissue must beunderlined, except for amendments submitted oncompact discs ( 1.96 and 1.821(c) ). Matter addedby reissue on compact discs must be preceded with and end with to properly identify thematerial being added.

(e) Numbering of patent claims preserved. Patentclaims may not be renumbered. The numbering of anyclaim added in the reissue application must follow thenumber of the highest numbered patent claim.

(f) Amendment of disclosure may be required . Thedisclosure must be amended, when required by the Of ce,to correct inaccuracies of description and de nition, andto secure substantial correspondence between the claims,the remainder of the speci cation, and the drawings.

(g) Amendments made relative to the patent. Allamendments must be made relative to the patentspeci cation, including the claims, and drawings, whichare in effect as of the date of ling of the reissueapplication.

[Revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000;para. (b)(3) revised, 68 FR 38611, June 30, 2003, effective July 30,2003; para. (b) introductory text revised, 69 FR 56481, Sept. 21, 2004,effective Oct. 21, 2004]

1.174 [Reserved]

Rev. , May 2013 R-126
http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-http://-/?-


127/389


128/389


declaration required by this paragraph must besubmitted before allowance and may be submitted:

(i) With any amendment prior to allowance; or

(ii) In order to overcome a rejection under35 U.S.C. 251 made by the examiner where it isindicated that the submission of a supplemental oathor declaration as required by this paragraph willovercome the rejection.

(2) For any error sought to be corrected afterallowance, a supplemental oath or declaration mustaccompany the requested correction stating that theerror(s) to be corrected arose without any deceptiveintention on the part of the applicant.

(c) Having once stated an error upon which the reissueis based, as set forth in paragraph (a)(1), unless all errorspreviously stated in the oath or declaration are no longerbeing corrected, a subsequent oath or declaration under

paragraph (b) of this section need not speci cally identifyany other error or errors being corrected.

(d) The oath or declaration required by paragraph (a)of this section may be submitted under the provisions of 1.53(f) .

(e) The ling of any continuing reissue applicationwhich does not replace its parent reissue application mustinclude an oath or declaration which, pursuant toparagraph (a)(1) of this section, identi es at least oneerror in the original patent which has not been correctedby the parent reissue application or an earlier reissue

application. All other requirements relating to oaths ordeclarations must also be met.

[24 FR 10332, Dec. 22, 1959; 29 FR 18503, Dec. 29, 1964; 34FR 18857, Nov. 26, 1969; para. (a), 47 FR 21752, May 19, 1982,effective July 1,1982; para. (a), 48 FR 2713, Jan. 20, 1983, effectiveFeb. 27, 1983; para. (a)(7), 57 FR 2021, Jan. 17, 1992, effective Mar.16, 1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997;para. (e) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 2004]


1.176 Examination of reissue.

(a) A reissue application will be examined in the samemanner as a non-reissue, non-provisional application,and will be subject to all the requirements of the rulesrelated to non-reissue applications. Applications forreissue will be acted on by the examiner in advance ofother applications.

(b) Restriction between subject matter of the originalpatent claims and previously unclaimed subject mattermay be required (restriction involving only subject matterof the original patent claims will not be required). Ifrestriction is required, the subject matter of the originalpatent claims will be held to be constructively electedunless a disclaimer of all the patent claims is led in the

reissue application, which disclaimer cannot bewithdrawn by applicant.

[42 FR 5595, Jan. 28, 1977; revised, 65 FR 54604, Sept. 8,2000, effective Nov. 7, 2000]

1.177 Issuance of multiple reissue patents.

(a) The Of ce may reissue a patent as multiple reissuepatents. If applicant les more than one application forthe reissue of a single patent, each such application mustcontain or be amended to contain in the rst sentence ofthe speci cation a notice stating that more than onereissue application has been led and identifying eachof the reissue applications by relationship, applicationnumber and ling date. The Of ce may correct bycerti cate of correction under 1.322 any reissue patentresulting from an application to which this paragraphapplies that does not contain the required notice.

(b) If applicant les more than one application for

the reissue of a single patent, each claim of the patentbeing reissued must be presented in each of the reissueapplications as an amended, unamended, or canceled(shown in brackets) claim, with each such claim bearingthe same number as in the patent being reissued. Thesame claim of the patent being reissued may not bepresented in its original unamended form for examinationin more than one of such multiple reissue applications.The numbering of any added claims in any of the multiplereissue applications must follow the number of the highestnumbered original patent claim.

(c) If any one of the several reissue applications by

itself fails to correct an error in the original patent asrequired by 35 U.S.C. 251 but is otherwise in conditionfor allowance, the Of ce may suspend action in theallowable application until all issues are resolved as toat least one of the remaining reissue applications. TheOf ce may also merge two or more of the multiplereissue applications into a single reissue application. Noreissue application containing only unamended patentclaims and not correcting an error in the original patentwill be passed to issue by itself.

[47 FR 41278, Sept

Consolidated Rules - Patent and Trademark Office

Documents

Transcript of Consolidated Rules - Patent and Trademark Office