Federal Register: December 28, 2001 (Volume 66, Number 249)
DOCID: FR Doc 01-31872
DEPARTMENT OF COMMERCE
Patent and Trademark Office
CFR Citation: 37 CFR Part 1
Docket ID: [Docket No.: 010815207-1285-03]
RIN ID: RIN 0651-AB41
NOTICE: RULES
ACTION: Patent cases:
DOCUMENT ACTION: Final rule.
SUBJECT CATEGORY:
Requirements for Claiming the Benefit of Prior-Filed Applications Under Eighteen-Month Publication of Patent Applications
EFFECTIVE DATES: December 28, 2001.
DOCUMENT SUMMARY:
In implementing the provisions of the American Inventors Protection Act of 1999 related to the eighteenmonth publication of patent applications, the United States Patent and Trademark Office (Office) revised the rules of practice related to requirements for claiming the benefit of a priorfiled application. The Office is now revising the time period for claiming the benefit of a priorfiled application in an application filed under the Patent Cooperation Treaty (PCT), revising the time period for filing an English language translation of a nonEnglish language provisional application, and making other technical corrections to the rules of practice related to eighteenmonth publication.
SUMMARY:
Prior-filed applications; benefit claim under eighteen-month publication of patent applications; requirements,
SUPPLEMENTAL INFORMATION
The American Inventors Protection Act of
1999 was enacted into law on November 29, 1999. See Pub. L. 106113,
113 Stat. 1501, 1501A552 through 1501A591 (1999). The American
Inventors Protection Act of 1999 contained a number of changes to title
35, United States Code, including provisions for the publication of
pending applications for patent, with certain exceptions, promptly
after the expiration of a period of eighteen months from the earliest
filing date for which a benefit is sought under title 35, United States
Code (``eighteenmonth publication''). The Office implemented the
eighteenmonth publication provisions of the American Inventors
Protection Act of 1999 in a final rule published in September of 2000.
See Changes to Implement EighteenMonth Publication of Patent [[Page 67088]]
Applications, 65 FR 57023 (Sept. 20, 2000), 1239 Off. Gaz. Pat. Office 63 (Oct. 10, 2000) (final rule).
Section 4503(a) of the American Inventors Protection Act of 1999 amended 35 U.S.C. 119(b) to provide that no application for patent shall be entitled to a right of priority under 35 U.S.C. 119(a)(d) unless a claim identifying the foreign application is filed at such time during the pendency of the application as required by the Office. Section 4503(b) of the American Inventors Protection Act of 1999 amended 35 U.S.C. 119(e) and 120 to provide that no application shall be entitled to the benefit of a priorfiled application unless an amendment containing the specific reference to the priorfiled application is submitted at such time during the pendency of the application as required by the Office. Section 4503 of the American Inventors Protection Act of 1999 also amended 35 U.S.C. 119 and 120 to permit the Office to establish procedures for accepting an unintentionally delayed claim for the benefit of a priorfiled application. Section 4503 of the American Inventors Protection Act of 1999 applies to applications filed under 35 U.S.C. 111 on or after November 29, 2000, and to applications entering the national stage after compliance with 35 U.S.C. 371 that resulted from international applications filed on or after November 29, 2000. See Pub. L. 106113, Sec. 4508, 113 Stat. at 1501A566 through 1501A567. This final rule amends 37 CFR 1.55 and 1.78 to: (1) Revise the requirements for claiming the benefit of a priorfiled application in an application filed under the PCT; (2) revise the time period and requirements for filing an English language translation of a nonEnglish language provisional application; and (3) expressly indicate that the time period requirements which implement the provisions of Sec. 4503 of the American Inventors Protection Act of 1999 do not apply to applications filed before November 29, 2000.
Discussion of Specific Rules
Title 37 of the Code of Federal Regulations, Part 1, is amended as follows:
Section 1.14: Section 1.14(i)(2) is amended to correct its reference to ``35 U.S.C. 154(d)(4) (formerly indicated as ``35 U.S.C. 154(2)(d)(4)'').
Section 1.55: Section 1.55(a)(1)(i) is amended such that the rules of practice expressly indicate that the time periods in
Sec. 1.55(a)(1)(i) do not apply in an application under 35 U.S.C.
111(a) if the application is: (1) an application for a design patent;
or (2) an application filed before November 29, 2000. The Office
indicated that the changes to Sec. 1.55 (and Sec. 1.78) to implement
eighteenmonth publication applied only to applications filed on or
after November 29, 2000. See Changes to Implement EighteenMonth
Publication of Patent Applications, 65 FR at 57024, 1239 Off. Gaz. Pat.
Office at 63. The Office, however, has received enough inquiries about
whether the time periods set forth in Sec. 1.55(a)(1)(i) (and
Sec. 1.78(a)(2) and Sec. 1.78(a)(5)) apply to particular applications
that the Office has decided to place this information in Sec. 1.55 (and Sec. 1.78) itself.
Section 1.55(c) is amended to expressly indicate that a petition under Sec. 1.55(c) to accept the delayed claim must also be accompanied by the claim (i.e., the claim required by 35 U.S.C. 119(a)(d) and Sec. 1.55) for priority to the prior foreign application, unless previously submitted.
Section 1.78: Section 1.78(a)(1) is amended to Make its provisions applicable to international applications designating the United States of America. The phrase ``nonprovisional application'' as used in the rules of practice means either an application filed under 35 U.S.C. 111(a) or an international application filed under 35 U.S.C. 363 that entered the national stage after compliance with 35 U.S.C. 371. See Sec. 1.9(a)(3). Thus, provisions which apply only to a nonprovisional application (e.g., the requirement in Sec. 1.78(a)(2)(iii) for a specific reference in an application data sheet (Sec. 1.76) or the specification) do not apply to any international application that does not enter national stage processing under 35 U.S.C. 371. The specific reference requirements of 35 U.S.C. 119(e) and 120 are met in such an international application by a specific reference to the priorfiled application in the international application papers (e.g., in the Request (PCT Rule 4.10 and Sec. 1.434(d)(2)), or a correction or addition in accordance with PCT Rule 26bis).
Section 1.78(a)(2) is amended to place its provisions in separate paragraphs (a)(2)(i) through (a)(2)(iv) for clarity. Section 1.78(a)(2) is also amended to make its provisions applicable to international applications designating the United States of America, and to set forth the time period for making a claim (providing the specific reference required by Sec. 1.78(a)(2)(i)) for both an application filed under 35 U.S.C. 111(a) and an international application designating the United States of America which entered the national stage after compliance with 35 U.S.C. 371.
Specifically, if the laterfiled application is an application filed under 35 U.S.C. 111(a), the specific reference required by Sec. 1.78(a)(2)(i) must be submitted within the later of four months from the actual filing date of the laterfiled application or sixteen months from the filing date of the priorfiled application. If, however, the laterfiled application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, the specific reference required by Sec. 1.78(a)(2)(i) must 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 laterfiled international application or sixteen months from the filing date of the priorfiled application. This reference must, in any event, be submitted during the pendency of the laterfiled application. The provisions relating to an application filed under 35 U.S.C. 111(a) do not change the time period for submitting a specific reference in such applications. The provisions relating to an international application designating the United States of America which entered the national stage after compliance with 35 U.S.C. 371, however, do change the time period for submitting a specific reference to any priorfiled application for which a benefit is claimed in such international applications in that the fourmonth period is measured from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) rather than the actual filing date of the international application under 35 U.S.C. 363.
Section 1.78(a)(2) is also amended to eliminate the requirement that if the application claims the benefit of an international application, the first sentence of the specification must include an indication of whether the international application was published under PCT Article 21(2) in English. The Office is eliminating this requirement because: (1) The Office will not delay publication of the application if this requirement is not met; and (2) this information can be obtained from other sources.
Section 1.78(a)(2) is also amended such that the rules of practice
expressly indicate that the time periods in Sec. 1.78(a)(2)(ii) do not
apply if the laterfiled application is: (1) An application for a
design patent; (2) an application filed under 35 U.S.C. 111(a) before
November 29, 2000; or (3) 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. The Office indicated that the changes to Sec. 1.78 to implement eighteenmonth publication applied only to applications
[[Page 67089]]
filed on or after November 29, 2000. See Changes to Implement Eighteen
Month Publication of Patent Applications, 65 FR at 57024, 1239 Off.
Gaz. Pat. Office at 63. The Office, however, has received enough
inquiries about whether the time periods set forth in Sec. 1.78 apply
to particular applications that the Office has decided to place this information in Sec. 1.78 itself.
Section 1.78(a)(2) is also amended to change the sentence ``[t]he
identification of an application by application number under this
section is the specific reference required by 35 U.S.C. 120 to every application assigned that application number'' to ``[t]he
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.'' That is, a continued prosecution application under
Sec. 1.53(d) (CPA) does not require any additional identification of or
reference to the prior application (or any prior application assigned
the application number of such application under Sec. 1.53(d)) under 35
U.S.C. 120 and Sec. 1.78(a)(2) other than the identification of the
prior application in the request required by Sec. 1.53(d) for a CPA.
See Changes to Patent Practice and Procedure, 62 FR 53131, 53144 (Oct.
10, 1997), 1203 Off. Gaz. Pat. Office 63, 73 (Oct. 21, 1997) (final
rule). The change to this provision clarifies that the other provisions
of Sec. 1.78(a)(2) (e.g., that the claim be in the application data
sheet or the first sentence of the specification) remain applicable
when an application under Sec. 1.53(b) claims the benefit under 35
U.S.C. 120 of a continued prosecution application filed under Sec. 1.53(d).
Section 1.78(a)(3) is amended to expressly indicate that a petition under Sec. 1.78(a)(3) to accept the delayed claim must also be accompanied by the claim (i.e., the reference required by 35 U.S.C. 120 and Sec. 1.78(a)(2)) to the benefit of the priorfiled application, unless previously submitted. Section 1.78(a)(3) is also amended to change ``paragraph (a)(2)'' to paragraph ``(a)(2)(ii)'' for consistency with the changes to Sec. 1.78(a)(2).
Section 1.78(a)(3) provides that if the reference required by 35 U.S.C. 120 and Sec. 1.78(a)(2) of this section is presented in a nonprovisional application after the time period provided by Sec. 1.78(a)(2)(ii), the claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a priorfiled copending nonprovisional application or international application designating the United States may be accepted if the applicant files a petition to accept the delayed claim that is accompanied by: (1) the reference required by 35 U.S.C. 120 and Sec. 1.78(a)(2) to the priorfiled application (unless previously submitted); (2) the surcharge set forth in Sec. 1.17(t); and (3) a statement that the entire delay between the date the claim was due under Sec. 1.78(a)(2)(ii) and the date the claim was filed was unintentional.
If an applicant includes a claim to the benefit of a priorfiled
nonprovisional application or international application designating the
United States elsewhere in the application but not in the manner
specified in Sec. 1.78(a)(2)(i) and (iii) (e.g., if the claim is
included in an unexecuted oath or declaration or the application transmittal letter) within the time period set forth in
Sec. 1.78(a)(2)(ii), the Office will not require a petition (and the
surcharge under Sec. 1.17(t)) to correct the claim if the information
concerning the claim contained elsewhere in the application was
recognized by the Office as shown by its inclusion on a filing receipt.
This is because the application will have been scheduled for
publication on the basis of the information concerning the claim
contained elsewhere in the application within the time period set forth
in Sec. 1.78(a)(2)(ii). Of course, the applicant must still submit the
claim in the manner specified in Sec. 1.78(a)(2)(i) and (iii) (i.e., by
an amendment in the first sentence of the specification or in an
application data sheet) to have a proper claim under 35 U.S.C. 120 and
Sec. 1.78 to the benefit of a priorfiled application. If, however, an
applicant includes such a claim elsewhere in the application and not in
the manner specified in Sec. 1.78(a)(2)(i) and (iii), and the claim is
not recognized by the Office as shown by its absence on the filing
receipt (e.g., if the claim is in a part of the application where
priority or continuity claims are not conventionally located, such as
the body of the specification), the Office will require a petition (and
the surcharge under Sec. 1.17(t)) to correct such claim. This is
because the application will not have been scheduled for publication on
the basis of the information concerning the claim contained elsewhere in the application.
Section 1.78(a)(4) is amended to make its provisions applicable to international applications designating the United States of America.
Section 1.78(a)(5) is amended to place its provisions in separate paragraphs (a)(5)(i) through (a)(5)(iv) for clarity. Section 1.78(a)(5) is also amended to: (1) Make its provisions applicable to international applications designating the United States of America; (2) set forth the time period for making a claim (providing the specific reference required by Sec. 1.78(a)(5)) for both an application filed under 35 U.S.C. 111(a) and an international application designating the United States of America which entered the national stage after compliance with 35 U.S.C. 371; and (3) change the time period and requirements for filing an English language translation of a nonEnglish language provisional application.
Specifically, if the laterfiled application is an application filed under 35 U.S.C. 111(a), the specific reference required by Sec. 1.78(a)(5)(i) must be submitted within the later of four months from the actual filing date of the laterfiled application or sixteen months from the filing date of the priorfiled application. If, however, the laterfiled application is a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371, the specific reference required by Sec. 1.78(a)(5)(i) must 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 laterfiled international application or sixteen months from the filing date of the priorfiled application. This reference must, in any event, be submitted during the pendency of the laterfiled application. The provisions relating to an application filed under 35 U.S.C. 111(a) do not change the time period for submitting a specific reference in such applications. The provisions relating to an international application designating the United States of America which entered the national stage after compliance with 35 U.S.C. 371, however, do change the time period for submitting a specific reference to any priorfiled application for which a benefit is claimed in such international applications in that the fourmonth period is measured from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f) rather than the actual filing date of the international application under 35 U.S.C. 363.
Section 1.78(a)(5) is also amended such that the rules of practice expressly indicate that the time periods in Sec. 1.78(a)(5)(ii) do not apply if the laterfiled application is: (1) an application filed under 35 U.S.C. 111(a) before November 29, 2000; or (2) 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.
Section 1.78(a)(5) is also amended to provide that if a provisional
application was filed in a language other than [[Page 67090]]
English and an Englishlanguage translation of the provisional
application and a statement that the translation is accurate were not
previously filed in the provisional application or the nonprovisional
application, applicant will be notified and given a period of time
within which to file an Englishlanguage translation of the non
Englishlanguage provisional application and a statement that the
translation is accurate. In a pending nonprovisional application,
failure to timely reply to such a notice will result in abandonment of
the application. Thus, Sec. 1.78(a)(5) no longer provides that if a
provisional application was filed in a language other than English, a
claim to the benefit of such provisional application is waived if an
English language translation of a nonEnglish language provisional
application is not submitted within the later of four months from the
actual filing date of the nonprovisional application or sixteen months
from the filing date of the priorfiled provisional application. In the
event that the Office schedules an application that claims the benefit
of a provisional application filed in a language other than English for
publication without issuing a notice requiring the applicant to file
Englishlanguage translation of the nonEnglishlanguage provisional
application, the applicant should file the Englishlanguage translation
of the nonEnglishlanguage provisional application and a statement
that the translation is accurate before the scheduled publication date.
This change to Sec. 1.78(a)(5) allows applicant to file an English
language translation of a nonEnglish language provisional application
either in the provisional application or in each nonprovisional
application that claims the benefit of the provisional application.
Section 1.78(a)(5) is also amended to delete the term ``copending,'' as 35 U.S.C. 119(e) no longer requires copendency between a nonprovisional application and a provisional application for the nonprovisional application to claim the benefit of the filing date of the provisional application under 35 U.S.C. 119(e). 35 U.S.C. 119(e)(1) continues to require that any nonprovisional application claiming the benefit of a provisional application be filed within twelve months after the filing date of the provisional application (or the next succeeding business day if the date that is twelve months after the filing date of the provisional application falls on a Saturday, Sunday, or Federal holiday). See Request for Continued Examination Practice and Changes to Provisional Application Practice, 65 FR 50092, 50098 (Aug. 16, 2000), 1238 Off. Gaz. Pat. Office 13, 18 19 (Sept. 5, 2000) (final rule) (comment 2 and response).
Section 1.78(a)(6) is amended to expressly indicate that a petition under Sec. 1.78(a)(6) to accept the delayed claim must also be accompanied by the claim (i.e., the reference required by 35 U.S.C. 119(e) and Sec. 1.78(a)(5)) to the benefit of the priorfiled provisional application, unless previously submitted. Section 1.78(a)(6) is also amended to change ``paragraph (a)(5)'' to paragraph ``(a)(5)(ii)'' for consistency with the changes to Sec. 1.78(a)(5).
Section 1.78(a)(6) provides that 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 Sec. 1.78(a)(5)(ii), the claim under 35 U.S.C. 119(e) for the benefit of a priorfiled provisional application may be accepted if the applicant files a petition to accept the delayed claim that is accompanied by: (1) the reference required by 35 U.S.C. 119(e) and Sec. 1.78(a)(5) to the priorfiled provisional application (unless previously submitted); (2) the surcharge set forth in Sec. 1.17(t); and (3) a statement that the entire delay between the date the claim was due under Sec. 1.78(a)(5)(ii) and the date the claim was filed was unintentional.
If an applicant includes a claim to the benefit of a priorfiled
provisional application elsewhere in the application but not in the
manner specified in Sec. 1.78(a)(5)(i) and (iii) (e.g., if the claim is
included in an unexecuted oath or declaration or the application transmittal letter) within the time period set forth in
Sec. 1.78(a)(5)(ii), the Office will not require a petition (and the
surcharge under Sec. 1.17(t)) to correct the claim if the information
concerning the claim contained elsewhere in the application was
recognized by the Office as shown by its inclusion on a filing receipt.
This is because the application will have been scheduled for
publication on the basis of the information concerning the claim
contained elsewhere in the application within the time period set forth
in Sec. 1.78(a)(5)(ii). Of course, the applicant must still submit the
claim in the manner specified in Sec. 1.78(a)(5)(i) and (iii) (i.e., by
an amendment in the first sentence of the specification or in an
application data sheet) to have a proper claim under 35 U.S.C. 119(e)
and Sec. 1.78 to the benefit of a priorfiled provisional application.
If, however, an applicant includes such a claim elsewhere in the
application and not in the manner specified in Sec. 1.78(a)(5)(i) and
(iii), and the claim is not recognized by the Office as shown by its
absence on a filing receipt (e.g., if the claim is in a part of the
application where priority or continuity claims are not conventionally
located, such as the body of the specification), the Office will
require a petition (and the surcharge under Sec. 1.17(t)) to correct
such claim. This is because the application will not have been
scheduled for publication on the basis of the information concerning the claim contained elsewhere in the application.
Section 1.311: Section 1.311(a) is amended to correct the parenthetical reference to ``(Sec. 1.211(f))'' to ``(Sec. 1.211(e)).''
Section 1.434: Section 1.434(d)(2) is amended by deleting the term ``copending,'' as the prior national application may be a provisional application and 35 U.S.C. 119(e) no longer requires copendency for a nonprovisional application to claim the benefit of the filing date of a provisional application under 35 U.S.C. 119(e).
Section 1.491: The Office proposed amending Sec. 1.491 such that the regulations set forth the current language of 35 U.S.C. 371(b) that defines when national stage commencement occurs. The Office will adopt that proposed change to Sec. 1.491 in a separate final rule that implements an amendment to PCT Article 22.
Response to Comments
The Office published a notice proposing the abovementioned changes to the rules of practice. See Requirements for Claiming the Benefit of PriorFiled Applications Under EighteenMonth Publication of Patent Applications, 66 FR 46409 (Sept. 5, 2001), 1251 Off. Gaz. Pat. Office 16 (Oct. 2, 2001) (notice of proposed rulemaking). The Office received seven written comments (from intellectual property organizations, patent practitioners, and the general public) in response to the notice of proposed rulemaking. The comments are available for public inspection at the Office of the Commissioner for Patents, located in Crystal Park 2, Suite 910, 2121 Crystal Drive, Arlington, Virginia, and are also posted on the Office's Internet Web site (address: http:// www.uspto.gov).
Most of the comments expressed support for the proposed changes. None of the comments opposed the proposed changes, but several comments included additional suggestions. Those comments and the Office's responses follow (comments that generally support the proposed changes are not discussed):
[[Page 67091]]
Comment 1: Several comments suggested that the Office make clear that the time period requirements in Sec. 1.78(a)(2)(ii) and Sec. 1.78(a)(5)(ii) (and resulting waiver if these time period requirements are not met) do not apply to applications filed before November 29, 2000. Another comment suggested that the change to Sec. 1.78 be made retroactive to all applications filed on or after November 29, 2000.
Response: Sections 1.55 and 1.78 are now amended to expressly state that the time period requirements of Sec. 1.55(a)(1)(i),
Sec. 1.78(a)(2)(ii) and Sec. 1.78(a)(5)(ii) do not apply to
applications filed before November 29, 2000. Therefore, there is no
waiver of a benefit under 35 U.S.C. 119 or 120 for failure to comply with the time period requirements of Sec. 1.55(a)(1)(i),
Sec. 1.78(a)(2)(ii) or Sec. 1.78(a)(5)(ii) in an application filed before November 29, 2000.
Except where the terms of Sec. 1.55 and Sec. 1.78 indicate that a
provision of Sec. 1.55 or Sec. 1.78 applies only to applications filed on or after November 29, 2000 (i.e., Sec. 1.55(a)(1)(i),
Sec. 1.78(a)(2)(ii), and Sec. 1.78(a)(5)(2)(ii)), the provisions of
Sec. 1.55 and Sec. 1.78 as now amended are applicable to applications
filed before, on, or after November 29, 2000. For example, both the
elimination of the requirement that if the application claims the
benefit of an international application, the first sentence of the
specification must include an indication of whether the international
application was published under PCT Article 21(2) in English
(Sec. 1.78(a)(2)), and the more liberal time period and provisions for
filing an English language translation of a nonEnglish language
provisional application (Sec. 1.78(a)(5)), apply to applications filed
before, on, or after November 29, 2000. Sections 1.55 and 1.78 as now
amended, however, provide that the time period requirements of
Sec. 1.55(a)(1)(i), Sec. 1.78(a)(2)(ii) and Sec. 1.78(a)(5)(ii) do not
apply to applications filed before November 29, 2000.
Comment 2: Several comments suggested that Sec. 1.78 be amended to state that, if an applicant includes a claim under Sec. 1.78 to the benefit of a priorfiled application elsewhere in the application, but not in the manner specified in Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii), within the time period set forth in Sec. 1.78(a)(2)(ii) or Sec. 1.78(a)(5)(ii), respectively, the Office will not require a petition (and the surcharge under Sec. 1.17(t)) to correct the claim if the information concerning the claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on a filing receipt or in the patent application publication.
Response: The Office has adopted the following practice: if an applicant includes a claim under Sec. 1.78 to the benefit of a prior filed application elsewhere in the application, but not in the manner specified in Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii), within the time period set forth in Sec. 1.78(a)(2)(ii) or Sec. 1.78(a)(5)(ii), respectively, the Office will not require a petition (and the surcharge under Sec. 1.17(t)) to correct the claim if the information concerning the claim contained elsewhere in the application was recognized by the Office as shown by its inclusion on a filing receipt (not as shown by its inclusion in the patent application publication). The reason for this practice is to avoid the situation in which an applicant is required to file a petition (and pay the surcharge under Sec. 1.17(t)) even though the application was scheduled for publication on the basis of the information concerning the claim contained elsewhere in the application, but not in the manner specified in Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii), within the time period set forth in Sec. 1.78(a)(2)(ii). That is, whether an applicant is required to file a petition (and pay the surcharge under Sec. 1.17(t)) to correct a claim that does not comply with Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii) is based upon the effect the informal claim has on the scheduling of the application for publication, and not whether the informal claim is ultimately included in the patent application publication.
The Office's goal is to encourage applicants to provide claims to the benefit of any priorfiled application in the manner specified in Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii) within the time period set forth in Sec. 1.78(a)(2)(ii) or Sec. 1.78(a)(5)(ii). Amending Sec. 1.78 itself to expressly include the abovestated practice would give tacit approval to providing claim to the benefit of a priorfiled application in a manner that does not comply with Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii). The commentors' proposed amendment to Sec. 1.78 would have an effect contrary to the Office's goal of encouraging applicants to provide claims to the benefit of any priorfiled application in the manner specified in Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii) within the time period set forth in Sec. 1.78(a)(2)(ii) or Sec. 1.78(a)(5)(ii).
Finally, if a claim under Sec. 1.78 does not comply with Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii) (but is stated elsewhere in the application), such claim must eventually be presented in the manner specified in Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii) (i.e., by an amendment in the first sentence of the specification or in an application data sheet) to be a proper claim under 35 U.S.C. 119(e) or 120 and Sec. 1.78 to the benefit of a priorfiled application.
Comment 3: Several comments suggested that the Office should make it clear that if the requirements of Sec. 1.78(a)(2)(ii) have been met, the applicant has not waived priority or continuity benefits even if the priority or continuity claim is not included in the patent application publication.
Response: If a claim under Sec. 1.78 to the benefit of a prior filed application is stated in the manner specified in Sec. 1.78(a)(2)(i) and (iii) or Sec. 1.78(a)(5)(i) and (iii) within the time period set forth in Sec. 1.78(a)(2)(ii) or Sec. 1.78(a)(5)(ii), the applicant has not waived the claim regardless of whether the Office includes the claim in the patent application publication. Nothing in Sec. 1.78 suggests that the propriety of claim under Sec. 1.78 is dependent upon its inclusion in the patent application publication.
Comment 4: Several comments suggested that the Office should provide applicants with the greatest possible flexibility in satisfying priority claim requirements, and should avoid adding technical requirements that may result in a loss of patent rights. The comments specifically suggested that since Office employees are familiar with checking the declaration for priority claims, Sec. 1.78(a)(2)(iii) should be further amended to allow the reference required by Sec. 1.78(a)(2)(i) to be included in the declaration.
Response: The Office allows applicants to provide claims under
Sec. 1.78 to the benefit of any priorfiled application either in the
first line of the specification (where Sec. 1.78 formerly required such
a claim to be) or in an application data sheet (Sec. 1.76). Providing
even this level of flexibility hinders the patent application
publication and patent printing process when the specification and
application data sheet (Sec. 1.76) contain conflicting information.
Providing the oath or declaration under Sec. 1.63 as an additional
possible location for claims under Sec. 1.78 to the benefit of any
priorfiled application would result in confusion in situations in
which: (1) the applicant has submitted multiple oaths or declarations
under Sec. 1.63; or (2) information submitted in the oath or
declaration conflicts with information submitted in the specification
or the application data sheet (Sec. 1.76). Providing the oath or
declaration under Sec. 1.63 as an additional possible location for claims to the benefit of any prior
[[Page 67092]]
filed application would also cause problems in the situation in which
it is desirable to delete a claim to the benefit of a priorfiled
application (for patent term purposes), in that a substitute oath or
declaration not containing the claim would be necessary to eliminate a
claim if such claim is made by a statement in the oath or declaration (Sec. 1.63).
Comment 5: Several comments suggested that the Office should take all steps necessary to ensure that all proper priority or benefit claims are included in the first paragraph of the patent application publication.
Response: The applicant and application information (i.e., inventor
names, including order, title, priority/benefit, assignee name) that is
in the Office's Patent Application Locating and Monitoring (PALM)
system at the time the application content is extracted from the
Office's Patent Application Capture and Review (PACR) database for
publication will be reflected on the front page of the patent
application publication. Thus, if an application is filed without any
priority or benefit claim, but a priority or benefit claim is
subsequently submitted before the application content has been
extracted for publication, the priority or benefit claim will be
reflected on the front page of the patent application publication. The
application content is currently extracted for publication
approximately nine weeks before the projected publication date. The time period in Sec. 1.55(a)(1), Sec. 1.78(a)(2)(ii), and
Sec. 1.78(a)(5)(ii) for submitting a priority or continuity claim is
four months from the actual filing date of the application or sixteen
months from the filing date of the priorfiled application, which does
not appear to expire until after the time at which application content
is extracted for publication. As a practical matter, however, this time
period will expire before the time at which application content is
extracted for publication (and, as such, any timely priority or
continuity claim should be entered into the Office's PALM system before
the time at which application content is extracted for publication)
because the failure to state a priority or continuity claim before a
publication date is originally calculated will result in projected
publication date that is later than the projected publication date
would have been if such priority or continuity claim were taken into account.
If an untimely claim under Sec. 1.78 to the benefit of a prior filed application is accepted under Sec. 1.78(a)(3) or Sec. 1.78(a)(6) after the application content has been extracted for publication purposes, the Office plans to correct its electronic records relating to the patent application publication such that the claim under Sec. 1.78 will be reflected on the Office's electronic records of the patent application publication (the eighteenmonth publication process does not involve the creation of paperbased records).
Finally, while priority and continuity claims will be reflected on the front page of the patent application publication, continuity claims under Sec. 1.78 will not additionally be stated on the first line of the specification unless the claim is included in the first line of the specification as originally filed or as filed in a copy of the application submitted by the Office electronic filing system under Sec. 1.215(c). Specifically, claims under Sec. 1.78 will not additionally be stated on the first line of the specification if the claim is included in a preliminary amendment to the specification (see Sec. 1.215(c) (the patent application publication will not include any amendments, including preliminary amendments, unless applicant supplies a copy of the application containing the amendment pursuant to Sec. 1.215(c))) or in an application data sheet (cf. Changes to Implement the Patent Business Goals, 65 FR 78958, 78959 (Dec. 18, 2000), 1242 Off. Gaz. Pat. Office 65 (Jan. 9, 2001) (final rule and correction) (``If continuity data is included in an application data sheet, but not in the first sentence of the specification, the continuity data to be set forth in the application data sheet will not be printed in the first line of the specification in the patent'')).
Comment 6: One comment questioned whether there is any mechanism for correcting the absence of a priority claim in an international application if an applicant files the international application designating the United States of America, but subsequently files a continuation application that claims the benefit of the international application and the international application never enters the national stage under 35 U.S.C. 371.
Response: The requirement that a claim to the benefit of a prior filed provisional application, a priorfiled nonprovisional application, or a priorfiled international application designating the United States 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 laterfiled international application or sixteen months from the filing date of the priorfiled application does not apply to an international application that never entered the national stage under 35 U.S.C. 371. Therefore, to amend the laterfiled international application to add a claim to the benefit of a priorfiled provisional application, a priorfiled nonprovisional application, or a priorfiled international application designating the United States, the applicant need only file a petition under Sec. 1.182 to amend an abandoned application (the laterfiled international application) with the claim to the benefit of a priorfiled application (regardless of whether the laterfiled international application was filed in the United States Receiving Office).
Comment 7: Several comments supported the proposed change by which the Office would issue a notice in a nonprovisional application claiming the benefit of a nonEnglish language provisional application that sets a time period within which the English translation must be filed, but noted that if the Office fails to issue such a notice and the applicant does not provide such a translation before publication, the burden will fall on applicants against whom the resulting patent application publication is cited as a reference to obtain a translation of the provisional application.
Response: The Office plans to check during the preexamination processing of a nonprovisional application to determine whether the nonprovisional application claims the benefit of a provisional application that was filed in a language other than English and, if so, whether an Englishlanguage translation of the provisional application was filed in the provisional application. If the nonprovisional application claims the benefit of a provisional application that was filed in a language other than English and no Englishlanguage translation of the provisional application was filed in the provisional application, the Office will issue a notice requiring the applicant to timely file an Englishlanguage translation and a statement that the translation is accurate. If the Office schedules an application that claims the benefit of a provisional application filed in a language other than English for publication without issuing a notice requiring the applicant to file an Englishlanguage translation of the non Englishlanguage provisional application, the applicant should file the Englishlanguage translation of the nonEnglishlanguage provisional application and a statement that the translation is accurate before the scheduled publication date.
The situation in which a patent application publication results
from a nonprovisional application that claims the benefit of a
provisional application that was filed in a language other than [[Page 67093]]
English, and no Englishlanguage translation of the provisional
application was filed in either the provisional application or the
nonprovisional application, will not occur unless: (1) The Office fails
to issue a notice during the preexamination processing of the
nonprovisional application requiring the applicant to timely file an
Englishlanguage translation of the provisional application; and (2)
the applicant fails to provide the Englishlanguage translation of the
nonEnglishlanguage provisional application before the publication
date of the patent application publication. Once this situation comes
to the Office's attention, Sec. 1.78(a)(5)(iv) as now amended provides
that the Office may issue a notice requiring the applicant (in the
nonprovisional application that resulted in the patent application
publication) to provide an Englishlanguage translation of the non
Englishlanguage provisional application and a statement that the
translation is accurate (the Office may also simply obtain its own
Englishlanguage translation of the nonEnglishlanguage provisional
application if that appears to be the most convenient course of
action). Failure to timely provide an Englishlanguage translation of
the nonEnglishlanguage provisional application and a statement that
the translation is accurate in reply to such a notice will result in
abandonment in a pending nonprovisional application, and may jeopardize
the claim to the benefit of the provisional application in any
situation (since the requirements of Sec. 1.78(a)(5) have not been complied with).
Comment 8: One comment questioned whether a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371 must include a reference under Sec. 1.78 to the underlying international application.
Response: A reference under Sec. 1.78 to the underlying international application is neither necessary nor appropriate in a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371. See Manual of Patent Examining Procedure Sec. 1893.03(c) (8th ed. 2001) (a national stage application filed under 35 U.S.C. 371 may not claim benefit of the filing date of the international application of which it is the national stage since its filing date is the date of filing of that international application).
Comment 9: One comment suggested that the surcharge for the unintentionally delayed submission of a priority claim was excessive.
Response: As indicated in the final rule to implement eighteen month publication, this surcharge amount must be sufficient to provide an incentive for applicant to exercise care to ensure that any desired claim under 35 U.S.C. 119, 120, 121, or 365(a) or (c) is timely presented. As such, the surcharge amount tracks the fee amount for a petition to revive an unintentionally abandoned application (35 U.S.C. 41(a)(7)). See Changes to Implement EighteenMonth Publication of Patent Applications, 65 FR at 57040, 1239 Off. Gaz. Pat. Office at 77 (comment 8 and response).
Comment 10: One comment noted that a nonprovisional application which entered the national stage from an international application after compliance with 35 U.S.C. 371 has already been published as an international application.
Response: As indicated in the final rule to implement eighteen
month publication, the International Bureau publication of an
international application will not be included in the Office's patent
application publication search database. The Office must (re)publish
international applications that entered the national stage to place
these applications into its patent application publication search
database. The benefit gained by ensuring that these prior art documents
will be included in the Office's patent application publication search
database outweighs the cost of (re)publishing these applications. See
Changes to Implement EighteenMonth Publication of Patent Applications,
65 FR at 57045, 1239 Off. Gaz. Pat. Office at 82 (comment 47 and response).
Classification
Administrative Procedure Act
The changes in this final rule concern only the procedures for filing claims for the benefit of a priorfiled application under 35 U.S.C. 119(e) or 120, the procedures for filing an English language translation of a nonEnglish language provisional application, and technical corrections to the provisions of Secs. 1.78, 1.311, and 1.434. Because all of the changes relate to Office practices and procedures, prior notice and an opportunity for public comment was not required pursuant to 5 U.S.C. 553(b)(A) (or any other law), and thirty day advance publication is not required pursuant to 5 U.S.C. 553(d) (or any other law). However, because the Office desired the benefit of public comment on this topic, the Office voluntarily accepted comments pursuant to a published notice proposing the abovementioned changes. Regulatory Flexibility Act
As prior notice and an opportunity for public comment are not required pursuant to 5 U.S.C. 553 (or any other law), the analytical requirements of the Regulatory Flexibility Act (5 U.S.C. 601 et seq.) are inapplicable. As such, the regulatory flexibility analysis is not required, and none has been provided. See 5 U.S.C. 603.
Executive Order 13132
This rulemaking does not contain policies with federalism implications sufficient to warrant preparation of a Federalism Assessment under Executive Order 13132 (Aug. 4, 1999).
Executive Order 12866
This rulemaking has been determined to be not significant for purposes of Executive Order 12866 (Sept. 30, 1993).
Paperwork Reduction Act
This final rule involves information collection requirements that are subject to review by the Office of Management and Budget (OMB) under the Paperwork Reduction Act of 1995 (44 U.S.C. 3501 et seq.). The collections of information involved in this final rule have been reviewed and previously approved by OMB under the following control numbers: 06510021, 06510031, 06510032, and 06510033.
The title, description and respondent description of each of the
information collections are shown below with an estimate of each of the
annual reporting burdens. Included in each estimate is the time for
reviewing instructions, gathering and maintaining the data needed, and completing and reviewing the collection of information.
OMB Number: 06510021.
Title: Patent Cooperation Treaty.
Form Numbers: PCT/RO/101,ANNEX/134/144, PTO1382, PCT/IPEA/401, PCT/IB/328.
Type of Review: Regular submission (approved through December of 2003).
Affected Public: Individuals or Households, Business or Other For
Profit Institutions, Federal Agencies or Employees, NotforProfit Institutions, Small Businesses or Organizations.
Estimated Number of Respondents: 331,288.
Estimated Time Per Response: Between 15 minutes and 4 hours.
Estimated Total Annual Burden Hours: 401,083.
Needs and Uses: The information collected is required by the Patent
Cooperation Treaty (PCT). The general purpose of the PCT is to simplify the
[[Page 67094]]
filing of patent applications on the same invention in different
countries. It provides for a centralized filing procedure and a standardized application format.
OMB Number: 06510031.
Title: Patent Processing (Updating).
Form Numbers: PTO/SB/08/2127/3032/3537/42/43/61/62/63/64/67/68/ 91/92/ 96/97/PTO2053/PTO2055.
Type of Review: Regular submission (approved through October of 2002).
Affected Public: Individuals or Households, Business or Other For
Profit Institutions, NotforProfit Institutions and Federal Government.
Estimated Number of Respondents: 2,247,389.
Estimated Time Per Response: 0.45 hours.
Estimated Total Annual Burden Hours: 1,021,941 hours.
Needs and Uses: During the processing of an application for a
patent, the applicant/agent may be required or desire to submit
additional information to the United States Patent and Trademark Office
concerning the examination of a specific application. The specific
information required or which may be submitted includes: Information
Disclosure Statements; Terminal Disclaimers; Petitions to Revive;
Express Abandonments; Appeal Notices; Petitions for Access; Powers to
Inspect; Certificates of Mailing or Transmission; Statements under
Sec. 3.73(b); Amendments; Petitions and their Transmittal Letters; and Deposit Account Order Forms.
OMB Number: 06510032.
Title: Initial Patent Application.
Form Number: PTO/SB/0107/13PCT/1719/29/101110.
Type of Review: Regular submission (approved through October of 2002).
Affected Public: Individuals or Households, Business or Other For
Profit Institutions, NotforProfit Institutions and Federal Government.
Estimated Number of Respondents: 319,350.
Estimated Time Per Response: 9.35 hours.
Estimated Total Annual Burden Hours: 2,984,360 hours.
Needs and Uses: The purpose of this information collection is to permit the Office to determine whether an application meets the criteria set forth in the patent statute and regulations. The standard Fee Transmittal form, New Utility Patent Application Transmittal form, New Design Patent Application Transmittal form, New Plant Patent Application Transmittal form, Declaration, and Plant Patent Application Declaration will assist applicants in complying with the requirements of the patent statute and regulations, and will further assist the Office in the processing and examination of the application.
OMB Number: 06510033.
Title: Post Allowance and Refiling.
Form Numbers: PTO/SB/13/14/44/5057; PTOL85b.
Type of Review: Regular submission (approved through September of 2000).
Affected Public: Individuals or Households, Business or Other For
Profit Institutions, NotforProfit Institutions and Federal Government.
Estimated Number of Respondents: 135,250.
Estimated Time Per Response: 0.325 hour.
Estimated Total Annual Burden Hours: 43,893 hours.
Needs and Uses: This collection of information is required to administer the patent laws pursuant to title 35, U.S.C., concerning the issuance of patents and related actions including correcting errors in printed patents, refiling of patent applications, requesting reexamination of a patent, and requesting a reissue patent to correct an error in a patent. The affected public includes any individual or institution whose application for a patent has been allowed or who takes action as covered by the applicable rules. 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 record keeping requirements, Small Businesses.
For the reasons set forth in the preamble, 37 CFR part 1 is amended as follows:
PART 1RULES OF PRACTICE IN PATENT CASES
1. The authority citation for 37 CFR Part 1 continues to read as follows:
Authority: 35 U.S.C. 2(b)(2).
2. Section 1.14 is amended by revising paragraph (i)(2) to read as follows:
Sec. 1.14 Patent applications preserved in confidence.
* * * * *
(i) * * *
(2) A copy of an English language translation of an international
application which has been filed in the United States Patent and
Trademark Office pursuant to 35 U.S.C. 154(d)(4) will be furnished upon
written request including a showing that the publication of the
application in accordance with PCT Article 21(2) has occurred and that
the U.S. was designated, and upon payment of the appropriate fee (Sec. 1.19(b)(2) or Sec. 1.19(b)(3)).
* * * * *
3. Section 1.55 is amended by revising paragraphs (a)(1)(i) and (c) to read as follows:
Sec. 1.55 Claim for foreign priority.
(a) * * *
(1)(i) In an original application filed under 35 U.S.C. 111(a), the
claim for priority must be presented during the pendency of the
application, and within the later of four months from the actual filing
date of the application or sixteen months from the filing date of the
prior foreign application. This time period is not extendable. The
claim must identify the foreign application for which priority is
claimed, as well as any foreign application for the same subject matter
and having a filing date before that of the application for which
priority is claimed, by specifying the application number, country (or
intellectual property authority), day, month, and year of its filing.
The time periods in this paragraph do not apply in an application under 35 U.S.C. 111(a) if the application is:
(A) A design application; or
(B) An application filed before November 29, 2000. * * * * *
(c) Unless such claim is accepted in accordance with the provisions
of this paragraph, any claim for priority under 35 U.S.C. 119(a)(d) or
365(a) not presented within the time period provided by paragraph (a)
of this section is considered to have been waived. If a claim for
priority under 35 U.S.C. 119(a)(d) or 365(a) is presented after the
time period provided by paragraph (a) of this section, the claim may be
accepted if the claim identifying the prior foreign application by
specifying its application number, country (or intellectual property
authority), and the day, month, and year of its filing was
unintentionally delayed. A petition to accept a delayed claim for
priority under 35 U.S.C. 119(a)(d) or 365(a) must be accompanied by:
(1) The claim under 35 U.S.C. 119(a)(d) or 365(a) and this section to the prior
[[Page 67095]]
foreign application, unless previously submitted;
(2) The surcharge set forth in Sec. 1.17(t); and
(3) A statement that the entire delay between the date the claim
was due under paragraph (a)(1) of this section and the date the claim
was filed was unintentional. The Commissioner may require additional
information where there is a question whether the delay was unintentional.
4. Section 1.78 is amended by revising paragraph (a) 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 priorfiled copending nonprovisional
applications or international applications designating the United
States of America. In order for an application to claim the benefit of
a priorfiled copending nonprovisional application or international
application designating the United States of America, each priorfiled
application must name as an inventor at least one inventor named in the
laterfiled application and disclose the named inventor's invention
claimed in at least one claim of the laterfiled application in the
manner provided by the first paragraph of 35 U.S.C. 112. In addition, each priorfiled 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) Complete as set forth in Sec. 1.51(b); or
(iii) Entitled to a filing date as set forth in Sec. 1.53(b) or
Sec. 1.53(d) and include the basic filing fee set forth in Sec. 1.16; or
(iv) Entitled to a filing date as set forth in Sec. 1.53(b) and
have paid therein the processing and retention fee set forth in
Sec. 1.21(l) within the time period set forth in Sec. 1.53(f).
(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 priorfiled copending nonprovisional
applications or international applications designating the United
States of America must contain or be amended to contain a reference to
each such priorfiled 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
laterfiled application. If the laterfiled 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 laterfiled application or sixteen months from the filing date
of the priorfiled application. If the laterfiled 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 laterfiled international application or sixteen months
from the filing date of the priorfiled 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
priorfiled application. The time periods in this paragraph do not apply if the laterfiled 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 laterfiled 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 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
priorfiled 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 in a nonprovisional application 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 priorfiled
copending nonprovisional application or international application
designating the United States of America may be accepted if the
reference identifying the priorfiled 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
priorfiled application must be accompanied by:
(i) The reference required by 35 U.S.C. 120 and paragraph (a)(2) of
this section to the priorfiled 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 Commissioner 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 priorfiled
provisional applications. In order for an application to claim the
benefit of one or more priorfiled provisional applications, each
priorfiled provisional application must name as an inventor at least
one inventor named in the laterfiled 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 priorfiled 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(k) 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 priorfiled provisional applications must contain or be amended to
contain a reference to each such priorfiled 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
laterfiled application. If the laterfiled application is an
application filed under 35 U.S.C. 111(a), this reference must also be submitted within the later of four
[[Page 67096]]
months from the actual filing date of the laterfiled application or
sixteen months from the filing date of the priorfiled provisional
application. If the laterfiled 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
FOR FURTHER INFORMATION CONTACT
Robert A. Clarke or Joni Y. Chang, Legal Advisors, Office of Patent Legal Administration, by telephone at (703) 3086906, or by mail addressed to: Box CommentsPatents, Commissioner for Patents, Washington, DC 20231, or by facsimile to (703) 8729399, marked to the attention of Robert A. Clarke.