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57024 Federal Register / Vol. 65, No. 183 / Wednesday, September 20, 2000 / Rules and Regulations DEPARTMENT OF COMMERCE Patent and Trademark Office 37 CFR Parts 1 and 5 RIN 0651–AB05 Changes to Implement Eighteen-Month Publication of Patent Applications AGENCY: United States Patent and Trademark Office, Commerce. ACTION: Final rule. SUMMARY: The United States Patent and Trademark Office (Office) is revising the rules of practice in patent cases to implement certain provisions of the American Inventors Protection Act of 1999. These provisions of the American Inventors Protection Act of 1999 provide, with certain exceptions, for the publication of pending patent applications (other than design applications) at eighteen months from the earliest claimed priority date. DATES: Effective Date: November 29, 2000. Applicability Date: Sections 1.103(d), 1.211, 1.213, 1.215, 1.217, 1.219, and 1.221, and the changes to §§ 1.14, 1.55, 1.72, 1.78, 1.85, 1.99, 1.137, 1.138, and 1.311, apply to any patent application filed on or after November 29, 2000, and to any patent application in which applicant requests voluntary publication. FOR FURTHER INFORMATION CONTACT: Concerning this final rule: Robert W. Bahr, Karin L. Tyson, or Robert A. Clarke by telephone at (703) 308–6906, or by mail addressed to: Box Comments—Patents, Assistant Commissioner for Patents, Washington, D.C. 20231, or by facsimile to (703) 872– 9411, marked to the attention of Robert W. Bahr. Concerning the electronic filing system (EFS): Jay Lucas or Michael Lewis by electronic mail message via the Internet addressed to jay.lucas@uspto.gov. SUPPLEMENTARY INFORMATION: The American Inventors Protection Act of 1999 (Title IV of the Intellectual Property and Communications Omnibus Reform Act of 1999 (S. 1948) as introduced in the 106th Congress on November 17, 1999) was incorporated and enacted into law on November 29, 1999, by section 1000(a)(9), Division B, of Public Law 106–113, 113 Stat. 1501 (1999). The American Inventors Protection Act of 1999 contains a number of changes to title 35, United States Code. This notice revises the rules of practice to implement the provisions of sections 4501 through 4508 (Subtitle E, Domestic Publication of Patent Applications Published Abroad) of the American Inventors Protection Act of 1999. These provisions of the American Inventors Protection Act of 1999 provide that, with certain exceptions, applications for patent shall be published 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 (‘‘eighteen-month publication’’). Section 4502 of the American Inventors Protection Act of 1999 amends 35 U.S.C. 122 (35 U.S.C. 122(b)) to provide that applications for patent shall be published 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, and that an application may be published earlier than the end of such eighteen-month period at the request of the applicant. Section 4502 of the American Inventors Protection Act of 1999 (35 U.S.C. 122(b)) also contains a number of exceptions to eighteen-month publication of patent applications. First: An application shall not be published if it is: (1) No longer pending; (2) subject to a secrecy order under 35 U.S.C. 181 or an application for which publication or disclosure would be detrimental to national security; (3) a provisional application under 35 U.S.C. 111(b); or (4) an application for a design patent under 35 U.S.C. chapter 16. See 35 U.S.C. 122(b)(2)(A) and (d). Second: An application shall not be published if an applicant makes a request upon filing, certifying that the invention disclosed in the application has not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires eighteen-month publication. An applicant may rescind such a request at any time. In addition, an applicant who has made such a request but who subsequently files an application directed to the invention disclosed in the application filed in the Office in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication, must notify the Office of such filing within forty-five days after the date of the filing of such foreign or international application. An applicant’s failure to timely provide such a notice to the Office will result in abandonment of the application (subject to revival if it is shown that the delay in submitting the notice was unintentional). If an applicant rescinds such a request or notifies the Office that an application was filed in a foreign country, or under a multilateral international agreement, that requires eighteen-month publication, the application is subject to eighteen-month publication. See 35 U.S.C. 122(b)(2)(B)(i)–(iv). Third: If an applicant has filed applications in one or more foreign countries, directly or through a multilateral international agreement, and such foreign-filed applications or the description of the invention in such foreign-filed applications is less extensive than the application or description of the invention in the application filed in the Office, the applicant may submit a redacted copy of the application filed in the Office eliminating any part or description of the invention in such application that is not also contained in any of the corresponding applications filed in a foreign country. If the redacted copy of the application is received within sixteen months after the earliest filing date for which a benefit is sought under title 35, United States Code, the Office may publish only the redacted copy of the application. See 35 U.S.C. 122(b)(2)(B)(v). Section 4503(a) of the American Inventors Protection Act of 1999 amends 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 is filed in the Office, identifying the foreign application by specifying the application number of that foreign application, the intellectual property authority or country in or for which the application was filed, and the date of filing the application, at such time during the pendency of the application as required by the Office. Section 4503(a) of the American Inventors Protection Act of 1999 also amends 35 U.S.C. 119(b) to provide that the Office may consider the failure of the applicant to timely file a claim for priority as a waiver of any such claim, and may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed claim under 35 U.S.C. 119(b)–(d). Section 4503(a) of the American Inventors Protection Act of 1999 also amends 35 U.S.C. 119(b) to authorize the Office to determine whether to require a certified copy of the original foreign application. Section 4503(b)(1) of the American Inventors Protection Act of 1999 amends 35 U.S.C. 120 to provide that no application shall be entitled to the benefit of an earlier filed application under 35 U.S.C. 120 unless an amendment containing the specific reference to the earlier filed application is submitted at such time during the Federal Register / Vol. 65, No. 183 / Wednesday, September 20, 2000 / Rules and Regulations pendency of the application as required by the Office. Section 4503(b)(1) of the American Inventors Protection Act of 1999 also amends 35 U.S.C. 120 to provide that the Office may consider the failure to submit such an amendment within that time period as a waiver of any benefit under 35 U.S.C. 120, and may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under 35 U.S.C. 120. Section 4503(b)(2) of the American Inventors Protection Act of 1999 amends 35 U.S.C. 119(e) to provide that no application shall be entitled to the benefit of an earlier filed provisional application under 35 U.S.C. 119(e) unless an amendment containing the specific reference to the earlier filed provisional application is submitted at such time during the pendency of the application as required by the Office. Section 4503(b)(2) of the American Inventors Protection Act of 1999 also amends 35 U.S.C. 119(e) to provide that the Office may consider the failure to submit such an amendment within that time period as a waiver of any benefit under 35 U.S.C. 119(e), and the Office may establish procedures, including the payment of a surcharge, to accept an unintentionally delayed submission of an amendment under 35 U.S.C. 119(e) during the pendency of the application. Case law has indicated that, in certain instances, priority claims may be perfected after issuance. The U.S. Court of Appeals for the District of Columbia has held that the equitable or remedial provisions of 35 U.S.C. 251 authorize patentees to correct or perfect a claim for priority under 35 U.S.C. 119 in an issued patent by reissue. See Brenner v. State of Israel, 400 F.2d 789, 158 USPQ 584 (D.C. Cir. 1968). The U.S. District Court for the District of Columbia applied this rationale to permit a patentee to amend an intermediate abandoned application in a chain of applications for which a benefit was claimed under 35 U.S.C. 120 to include the specific reference required by 35 U.S.C. 120. See Sampson v. Commissioner, 195 USPQ 136 (D.D.C. 1976). In appropriate circumstances, the Office has permitted patentees to perfect claims under 35 U.S.C. 119, 120, or 121 in an issued patent by certificate of correction under 35 U.S.C. 255 and § 1.323. See In re Schuurs, 218 USPQ 443 (Comm’r Pat. 1983); In re Lambrech, 202 USPQ 620 (Comm’r Pat. 1976); In re Van Esdonk, 187 USPQ 671 (Comm’r Pat. 1975). The amendments to 35 U.S.C. 119 and 120 provide that the Office may consider the failure of the applicant to file a timely claim under 35 U.S.C. 119 or 120 as a waiver of any such claim. Sections 1.55 and 1.78 implement these amendments to 35 U.S.C. 119 and 120 by specifying time periods during the pendency of the application within which claims under 35 U.S.C. 119(a)– (d), 119(e), and 120 must be stated or are considered waived. 35 U.S.C. 119(b), 119(e), and 120 each provide that the Office may establish procedures to accept an unintentionally delayed submission of a claim under 35 U.S.C. 119(b), 119(e), or 120 (respectively); however, 35 U.S.C. 119(e) requires that such unintentionally delayed claim (amendment) be submitted during the pendency of the application. Thus, a claim under 35 U.S.C. 119(a)–(d) or 120 for the benefit of a prior application may be added (or corrected) in an issued patent by reissue or certificate of correction (assuming the conditions for reissue or certificate of correction are otherwise met) by submitting such untimely claim under the procedures established in § 1.55 or § 1.78 (including payment of any applicable surcharge). A claim under 35 U.S.C. 119(e) for the benefit of a prior provisional application, however, must be added or corrected during the pendency of the application. Section 4504 of the American Inventors Protection Act of 1999 amends 35 U.S.C. 154 to provide that, subject to a number of conditions, a patent includes the right to obtain a reasonable royalty during the period beginning on the date of publication of the application for such patent under 35 U.S.C. 122(b) (or the date of publication under Patent Cooperation Treaty (PCT) Article 21(2) of an international application designating the United States) and ending on the date the patent is issued (‘‘provisional rights’’). Section 4505 of the American Inventors Protection Act of 1999 amends 35 U.S.C. 102(e) to, inter alia, set forth the conditions under which an application published under 35 U.S.C. 122(b) or under PCT Article 21(2) is prior art as of its filing date. Section 4506 of the American Inventors Protection Act of 1999 provides that the Office shall recover the cost of early publication required by 35 U.S.C. 122(b) by charging a separate publication fee after a notice of allowance is given under 35 U.S.C. 151. Section 4508 of the American Inventors Protection Act of 1999 provides that its eighteen-month publication provisions take effect on November 29, 2000, and apply to applications (other than for a design patent) filed under 35 U.S.C. 111(a) on or after November 29, 2000, and to applications in compliance with 35 57025 U.S.C. 371 that resulted from international applications filed under 35 U.S.C. 363 on or after November 29, 2000. The Office published a notice proposing changes to the rules of practice to implement the provisions of §§ 4501 through 4508 (Subtitle E, Domestic Publication of Patent Applications Published Abroad) of the American Inventors Protection Act of 1999. See Changes to Implement Eighteen-Month Publication of Patent Applications, Notice of Proposed Rulemaking, 65 FR 17946 (Apr. 5, 2000), 1233 Off. Gaz. Pat. Office 121 (Apr. 25, 2000) (notice of proposed rulemaking). This final rule adopts changes to the rules of practice to implement the provisions of §§ 4501 through 4508 of the American Inventors Protection Act of 1999. The Office’s planning approach to eighteen-month publication includes: (1) Disseminating a publication document (patent application publication) for each published application; and (2) providing (under conditions set forth below) any member of the public with access to the file wrapper and contents of each published application (which may be limited to a copy of the file wrapper and contents of the application). Patent application publication: The patent application publication will include a front page containing information similar to that contained on the front page of a patent, and the drawings (if any) and specification (including claims) of the published application. To create the patent application publication, the Office plans to use its Patent Application Capture and Review (PACR) system to create an electronic database (PACR database) containing: (1) The application papers and drawings deposited on the filing date of the application; and (2) any subsequently filed application papers and drawings needed to create the patent application publication. The application information contained in the Office’s PACR database will be used to create the patent application publication, unless the applicant provides a copy of the application via the Office’s electronic filing system (EFS) to be used to create the patent application publication (discussed below). The Office currently uses the PACR database as the Office’s record of the application papers submitted on the filing date of the application (i.e., the original disclosure of the invention). The application papers submitted on the filing date of the application, however, may not include the content needed 57026 Federal Register / Vol. 65, No. 183 / Wednesday, September 20, 2000 / Rules and Regulations (e.g., an abstract), and the application papers or drawings may not be of sufficient quality (e.g., papers not having sufficient contrast to permit electronic capture by digital imaging and conversion to text by optical character recognition or drawings not having sufficient quality) to be used to create a patent application publication. Since the patent application publication will be a prior art document (and, in most cases, the prior art document having the earliest effective date under 35 U.S.C. 102(a), (b), and (e)), the Office must consider the usability of the patent application publication as a prior art document when determining what drawing quality is needed to create the patent application publication. If the application papers submitted on the filing date of the application do not include the content needed, or the application papers or drawings are not of sufficient quality to be used, to create a patent application publication, the Office of Initial Patent Examination (OIPE) will issue a notice requiring that the applicant submit the needed application content, or application papers or drawings of sufficient quality, for use in creating a patent application publication. The applicant’s reply to that notice (application papers and drawings needed to create the patent application publication) will then be added to the PACR database. The Office must separate the application papers and drawings deposited on the filing date of the application and the subsequently filed application papers and drawings in its PACR database because the PACR database is also used to create any requested certified copy of the application (which may only include the application papers and drawings deposited on the filing date of the application). Initially, an application filed under 35 U.S.C. 111(a) (nonprovisional) must be entitled to a filing date (i.e., contains a written description of the invention, a drawing (if necessary for an understanding of the invention), and at least one claim) for the application to be in condition for publication. In addition, if an application filed under 35 U.S.C. 111(a) otherwise entitled to a filing date appears to omit a portion of the description or a drawing figure, the omitted portion of the description or drawing figure(s) must be supplied, or the period for supplying such portion of the description or drawing figure(s) must have expired, for the application to be in condition for publication. The requirements for an application filed under 35 U.S.C. 111(a) to be entitled to a filing date and the treatment of an application filed under 35 U.S.C. 111(a) that appears to omit a portion of the description or a drawing figure is set forth in sections 601.01(d) through 601.01(g) of the Manual of Patent Examining Procedure (7th ed. 1998) (Rev. 1, Feb. 2000) (MPEP). In addition, an application filed under 35 U.S.C. 111(a) must include an executed oath or declaration (§ 1.63), an abstract (§ 1.72(b)), and an English translation (if filed in a language other than English), for the application to have the content necessary to create the patent application publication. For eighteen-month publication purposes, the oath or declaration must at a minimum: (1) Name each inventor at least by a family and given name; and (2) be signed by each inventor or a party qualified to sign under §§ 1.42, 1.43, or 1.47 in compliance with § 1.64. Finally, an application filed under 35 U.S.C. 111(a) will not be published until the basic filing fee (§ 1.16(a) or (g)) is paid. A PCT international application must satisfy the requirements of 35 U.S.C. 371 to be subject to eighteen-month publication under 35 U.S.C. 122(b) (and to have the content necessary to create the patent application publication). Even if an application has the content necessary to create the patent application publication, the application papers and drawings must also be reviewed to determine whether they are of sufficient quality to be used in creating the patent application publication. To be of sufficient quality to create the patent application publication, the specification must be on sheets of paper that: (1) Are flexible, strong, smooth, non-shiny, durable, and white; (2) are either A4 (21 cm × 29.7 cm) or 81⁄2″ × 11″ with each sheet having a left margin of at least 2.5 cm (1″) and top, bottom, and right margins of at least 2.0 cm (3⁄4″); (3) are written on one side only in portrait orientation; (4) are plainly and legibly written either by a typewriter or machine printer in permanent dark ink or its equivalent; (5) have lines that are either 11⁄2 or doublespaced; and (6) have sufficient clarity and contrast between the paper and the writing on the paper to permit direct reproduction and electronic capture by digital imaging and optical character recognition. These quality standards and requirements are currently set forth in § 1.52(a) and (b). In addition, the title must meet the length requirement of § 1.72(a); the abstract must commence on a separate sheet and meet the wordlength requirement of § 1.72(b); the claims must commence on a separate sheet; and the sequence listing (if applicable) must comply with §§ 1.821 through 1.825. As discussed above, the Office must consider not only whether drawings are of sufficient quality to create a publication (the patent application publication), but whether they are sufficient for the publication to be routinely used as a prior art document. Thus, the drawing sheets (if drawings are included) must comply with the following requirements of § 1.84. Drawings must be done in dark ink (not pencil), except where color drawings or photographs are permitted. Photographs (or photomicrographs) are not permitted unless they are reproducible and the invention cannot be clearly illustrated in an ink drawing. See Interim Waiver of 37 CFR § 1.84(b)(1) for Petitions to Accept Black and White Photographs and Advance Notice of Change to M.P.E.P. § 608.02, Notice, 1213 Off. Gaz. Pat. Office 108 (Aug. 4, 1998). Drawing sheets must be reasonably free from erasures and must be free from alterations, overwritings, interlineations, folds, and copy marks. Drawing sheets must be either 21.0 cm by 29.7 cm (DIN size A4) or 21.6 cm by 27.9 cm (8 1⁄2 by 11 inches). Each drawing sheet must include a top margin of at least 2.5 cm (1 inch), a left side margin of at least 2.5 cm (1 inch), a right side margin of at least 1.5 cm (5⁄8 inch), and a bottom margin of at least 1.0 cm (3⁄8 inch). Lines, numbers, and letters must be clean, dark (not of poor line quality), uniformly thick, and well defined. The English alphabet must be used for letters, except where another alphabet is customarily used (such as the Greek alphabet to indicate angles, wavelengths, and mathematical formulas). Numbers, letters, and reference characters must measure at least 0.32 cm (1⁄8 inch) in height. Lead lines are required for each reference character (except for those which indicate the surface or cross section on which they are placed, in which case the reference character must be underlined to make it clear that a lead line has not been left out by mistake). The drawing views must also be numbered in consecutive Arabic numerals, starting with 1. Finally, the specification (including the claims) must not contain drawings or flow diagrams. See § 1.58(a). In September of 1996, the Office revised the standard and format requirements for the specification (including the abstract and claims), drawings, and other application papers set forth in § 1.52 and § 1.84 for the purpose of obtaining initial application papers in condition for eighteen-month publication. See Miscellaneous Changes in Patent Practice, Final Rule Notice, 61 FR 42790 (Aug. 19, 1996), 1190 Off. Gaz. Federal Register / Vol. 65, No. 183 / Wednesday, September 20, 2000 / Rules and Regulations Pat. Office 67 (Sept. 17, 1996). Applicants are advised that the Office will: (1) Begin enforcement of the provisions of § 1.52(a) and (b) and § 1.84 during the pre-examination processing of patent applications; and (2) not permit applicants to request that objections under § 1.52(a) and (b) and § 1.84 made during the pre-examination processing of a patent application be held in abeyance pending allowance of the application. As discussed below, if applicant timely provides the Office with a copy of the application via the Office electronic filing system, the Office will use the electronic copy provided by the applicant (rather than the PACR database records) to create the patent application publication. Applicants may use this procedure to obtain inclusion of amendments submitted during prosecution in the patent application publication. Applicants must use this procedure when requesting: (1) Voluntary publication of an application; (2) republication of a previously published application; or (3) publication of only a redacted copy of an application. Electronic filing system: The electronic filing system (EFS) is an electronic system for the submission of patent applications to the Office. The EFS encompasses the preparation of the application parts in a special manner on the applicant’s computer (authoring), the assembling of the pieces of the application so authored, and the secure communication of that application to the Office. The same EFS software must be used by applicants who wish to submit a copy of the application for the patent application publication. The steps for submission of an electronic version of a patent application are as follows: (1) Obtaining a digital certificate; (2) obtaining the authoring and the submission-software packages from the Office; (3) authoring the patent application; and (4) assembling the parts of the application, and validating, digitally signing, and submitting the application. To file a copy of an application using the EFS, an applicant (or representative) must submit a request and receive an Office digital certificate to enable secure communication between the applicant and the Office. A digital certificate will allow the authorized person to conduct electronic filing of one or more applications, as well as have access to the Office’s Patent Application Information Retrieval (PAIR) software to display patent application status information. The digital certificate is given to individuals and firms that obtain a customer number, and also request a digital certificate. Instructions on how to obtain the necessary digital certificate are located at the Office’s Electronic Business Center on the Office’s Internet Web site (http://www.uspto.gov) (under the section Electronic Business Center, select New User for the PAIR system). The Office makes its branded version of the security software product called Entrust Direct software available to authorized persons. The software operates in conjunction with an Office Public Key Infrastructure (PKI) that is secure and enables communication only between the Office and authorized persons who are registered with the Office. A person signing up for EFS application filing receives a package with his or her digital certificate including: (1) the software that will attach a digital signature to a document or set of documents; (2) an authoring tool that will allow the applicant to convert a standard patent application into a specialized format; and (3) the electronic Packaging and Validation Engine (ePave) program that will assemble the parts of the application, validate that the parts are complete, encrypt and digitally sign them, and then send them to the Office. The applicant is responsible for correctly authoring the electronic application, which is defined as reformatting the application into a form that complies with the requirements of XML (the standard eXtensible Markup Language of Internet authoring). The XML requires that all the pieces of information in the application (e.g., the inventor’s name, title of the invention, and the claims) are tagged with standard XML named tags before and after each piece of information. For example, XML could require that the title be tagged: MAKING A WIDGIT The tagged information, in turn, is ordered and positioned on the submitted document according to the formula for that document in the document type definition (DTD). The DTD contains a list of all the tagged data elements (pieces of information) that should be on that document, and the relative positioning of the elements. When combined with the document’s style sheet (which contains formatting information), the DTD will completely define what the document should contain and, when printed or viewed, what it will look like. The applicant does the authoring using the software authoring tool given to him or her by the Office and operating on the applicant’s computer. 57027 The authoring tool displays a template on applicant’s computer screen listing all of the data elements that should be in a patent application (according to the Office’s DTD). The applicant clicks in the desired data element and types information into the template. For example, the applicant clicks the data element ‘‘TITLE’’ and types ‘‘MAKING A WIDGIT’’ into the template. The authoring tool will add the tags, paragraph numbers, and other elements that are required by XML. The applicant can continue through this whole process adding the required information to each of the data elements in the template until the application is fully authored. The applicant can also use the authoring tool to ‘‘cut and paste’’ a previously written application into the proper format. In this mode, the applicant will open up that written application, and also open up the authoring tool template to reveal the data elements. When the applicant clicks in the data element, the applicant will copy the relevant section from the previously written application and paste that section into the template (for tagging by the authoring tool). Paper copies of the oath or declaration (§ 1.63), drawings, and certain other documents are scanned on the applicant’s digital scanner and stored in tagged image file format (TIFF). The TIFF is not tagged by the authoring tool, but is similar to an electronic photograph. Using either mode, the applicant will produce a copy of the application in compliance with the Office EFS, including a specification and claims (in XML), an oath or declaration (in TIFF), and drawings (also in TIFF). Once the various parts of the application are prepared, the applicant will use the software tool ePave to assemble those parts and submit the application to the Office. The ePave software interacts with the applicant to fill out an electronic transmittal and fee information letter. This document is developed in the tagged XML format. The applicant then uses the ePave software to associate these documents with the previously produced application. This association of the related files to be submitted is called bundling. The bundle of files that will be sent to the Office will be compressed using Zip technology to reduce their size. Then ePave will apply the digital signature to the compressed bundle, to indicate who is sending the package to the Office, and check the file’s integrity. The digital signature process also encrypts the bundle, for safety during transmission. 57028 Federal Register / Vol. 65, No. 183 / Wednesday, September 20, 2000 / Rules and Regulations The authoring tool and ePave software on the applicant’s computer perform all of this activity almost invisibly. The applicant must enter a password to apply the digital signature, and the software will finish processing the application for submission to the Office. During the processing of a copy of an application for submission to the Office for use in a patent application publication, the applicant will be advised that the application of a digital signature constitutes a statement that the EFS copy of the application contains no new matter, and, except for a redacted copy of an application (which requires the concurrent submission of other certifications on paper), that the EFS copy of the application corresponds to the application as amended by any amendment filed in the application. When processing is finished, the software will ask the applicant if the list of displayed files should be sent to the Office. The applicant will click or otherwise express his or her concurrence, and the EFS application files are electronically transmitted to the Office. On receipt of the bundle of files comprising the application, the Office stores the bundle and takes it apart. The bundle is decrypted, the digital signature is checked, and the integrity of the package is confirmed. In the course of events, the Office sends an acknowledgment back to the applicant’s computer providing the date and time of submission, the names and sizes of the files received, and other information to confirm the submission. Obviously, an application submitted via EFS cannot include a payment by check or money order. Therefore, any publication fee or processing fee required for a copy of an application submitted via EFS for use in the patent application publication must be paid by an authorization to charge the fee to a credit card or Office deposit account. The Office originally indicated that if a copy of an application being submitted to the Office for eighteenmonth publication purposes contains a sequence listing, and the sequence listing is identical to a sequence listing previously submitted to the Office in compliance with §§ 1.821 through 1.825, the EFS copy of the application may contain a reference to the previously filed sequence listing in lieu of a copy of the previously filed sequence listing. See Changes to Implement Eighteen-Month Publication of Patent Applications, 65 FR at 17950, 1233 Off. Gaz. Pat. Office at 124. The Office, however, has determined that permitting an EFS copy of an application to reference a previously filed sequence listing (rather than include a copy of the sequence listing) will increase the chance for errors in the sequence listing included in the patent application publication. Thus, the Office is requiring that if a copy of an application being submitted to the Office for eighteen-month publication purposes contains a sequence listing, the EFS copy of the application must contain a text file copy of the sequence listing that if printed out on paper would be in compliance with § 1.823. Finally, if the file containing a copy of an application being submitted to the Office for eighteen-month publication purposes occupies ten megabytes of memory or more, the copy of the application should be submitted on a Compact Disk-Read Only Memory (CD– ROM) or Compact Disk-Recordable (CD– R). The CD–ROM or CD–R containing the copy of the application should be addressed to: Box PGPub. While the Office is using EFS for both new application filing and submission of a copy of a previously filed application for publication purposes, an EFS submission of a copy of an application for publication purposes will be different from the EFS submission of a new application. For example, the EFS submission of a copy of an application for publication purposes will not require an oath or declaration (in TIFF). In addition, the acknowledgment receipts issued by the Office will be different for the EFS submission of a copy of an application for publication purposes than it will be for the EFS submission of a new application. Publication process: The current planning approach involves a fourteenweek publication cycle that results in the publication of patent application publications on Thursday of each week. Ideally, the publication date of an application will be the first Thursday after the date that is eighteen months after the filing date of the application, or if the application claims the benefit of an earlier filing date, the first Thursday after the date that is eighteen months after the earliest filing date for which a benefit is sought. An application, however, may not be published the first Thursday after the date that is eighteen months after the earliest filing date for which a benefit is sought if the application is not in condition for publication approximately fourteen months after the earliest filing date for which a benefit is sought (eighteen months less the fourteen-week publication cycle). Obviously, there are events that will delay publication of some applications until a later date: e.g., (1) The application claims the benefit under 35 U.S.C. 120 of an application filed more than eighteen months before the actual filing date of the application; (2) the basic filing fee or oath (or declaration) is not provided within eighteen months after the earliest filing date for which a benefit is sought; or (3) the application does not contain papers or drawings of publication quality within eighteen months after the earliest filing date for which a benefit is sought. In such situations, the publication date of an application will be the first Thursday after the date that is fourteen weeks after the application is in condition for publication. Applicants who attempt to delay publication by intentionally delaying the submission of the application content necessary for publication, however, may encounter a reduction in any patent term adjustment under 35 U.S.C. 154(b) (see 35 U.S.C. 154(b)(2)(C)(ii) and § 1.704(b)). The Office plans to indicate a projected publication date on the filing receipt or indicate ‘‘to be determined’’ if the application is not in condition for publication. If events change the projected publication date by more than two weeks (e.g., claim for priority under 35 U.S.C. 119(e) presented after mailing of the filing receipt) or the application content necessary for publication is provided, the Office will issue a change notification indicating the revised projected publication date. The publication process involves producing weekly volumes of patent application publications on a variety of media: e.g., the Office’s Examiner Automated Search Tool (EAST) and Web-based Examiner Search Tool (WEST) search systems, optical disk products for sale to the public, and exchange with the Office’s Intellectual Property exchange partners. Patent application publications will be available for viewing by the public in the Public Search Room via an on-line search system. The Office does not plan to provide paper copies of the patent application publications for placement in either the Public Search Room or the examiners’ search rooms. The Office, however, will provide paper copies of the patent application publications to any member of the public on request (for a fee) in the manner that paper copies of patents are currently provided. The publication process provides for: (1) Assembly of application bibliographic information for the patent application publication at fourteen weeks prior to the projected publication date; (2) assembly of the technical content (specification, including claims and abstract, and drawings) of the application for the patent application Federal Register / Vol. 65, No. 183 / Wednesday, September 20, 2000 / Rules and Regulations publication at nine weeks prior to the projected publication date; and (3) placement of the application information as assembled into the patent application publication on publication media (e.g., optical disks, magnetic tape) at four weeks prior to the projected publication date. Any applicant seeking to abandon the application for the purpose of avoiding publication must take appropriate action (see § 1.138 discussed below) well prior to the projected publication date. If the application is not expressly abandoned at least four weeks prior to the projected publication date, the Office will probably not be able to avoid publication of the application or at least some application information because the Office will place the application (along with the thousands of other applications being published each week) on publication media (e.g., optical disks, magnetic tape) four weeks prior to the projected date. This does not imply that a request to expressly abandon an application to avoid publication (§ 1.138) filed prior to this ‘‘four-week’’ time frame will ensure that the Office will be able to remove an application from publication. The Office simply cannot ensure that it can remove an application from publication or avoid publication of application information any time after the publication process for the application is initiated. Access to the file wrapper and contents of a published application: The Office plans to permit: (1) Any member of the public to obtain (for a fee) a copy of the complete file wrapper and contents of, or a copy of a specific paper in, any published application, provided that no redacted copy was timely submitted for publication; (2) any member of the public to obtain (for a fee) an appropriately redacted copy of the file wrapper and contents of, or a copy of a specific paper in, any published application for which a redacted copy was timely submitted for publication; and (3) any member of the public to physically inspect (subject to the same conditions that apply to inspection of patented files) the file of any abandoned published application, provided that no redacted copy was timely submitted for publication. Any member of the public may obtain status information concerning any published application via the Office’s PAIR system. Permitting physical inspection of pending published applications, however, would interfere with the Office’s ability to act on the applications within the time frames set forth in 35 U.S.C. 154(b)(1)(A) and (B). Thus, the Office must limit public access to the file wrapper of pending published applications to obtaining a copy produced by the Office (for a fee) to avoid conferring patent term adjustment on the applicant due to actions by members of the public. Section 4805 of the American Inventors Protection Act of 1999 provides that the Comptroller General (in consultation with the Office) shall conduct a study and submit a report to Congress on the potential risks to the United States biotechnology industry relating to biological deposits in support of biotechnology patents, and that the Office shall consider the recommendations of such study in drafting regulations affecting biological deposits (including any modification of § 1.801 et seq.). Therefore, this notice does not contain any amendment to § 1.801 et seq. concerning the treatment of biological deposits in applications subject to eighteen-month publication. Section 4732 of the American Inventors Protection Act of 1999 changed (among other things) the title ‘‘Commissioner’’ to ‘‘Director.’’ The title ‘‘Commissioner,’’ however, is not being changed to ‘‘Director’’ where it appears in the rules of practice involved in this final rule because legislation is pending before Congress that (if enacted) would restore the former title ‘‘Commissioner.’’ See Intellectual Property Technical Amendments Act of 2000, H.R. 4870, 106th Cong. (2000). Discussion of Specific Rules Title 37 of the Code of Federal Regulations, Parts 1 and 5, are amended as follows: Section 1.9: Section 1.9(c) is amended to define a published application as used in 37 CFR chapter I to mean an application for patent which has been published under 35 U.S.C. 122(b). Section 1.11: Section 1.11(a) is amended to include the file of an abandoned published application (except if a redacted copy of the application was used for the patent application publication) among the files that are open to inspection by the public. Section 1.12: Section 1.12(a)(1) is amended to include the assignment records of a published patent application among the patent assignment records that are available to the public. Section 1.12(b) is amended to provide that the patent assignment records, digests, and indexes are available to the public unless they relate to pending or abandoned patent applications that have not been published under 35 U.S.C. 122(b). Section 1.13: Section 1.13 is amended to include patent application publications among the records of the 57029 United States Patent and Trademark Office that are open to the public, and of which a copy (certified or uncertified) will be furnished (upon payment of the appropriate fee). Section 1.14: Section 1.14(a) is amended to generally maintain the confidentiality of applications that have not been published as a U.S. patent application publication (see 35 U.S.C. 122(b)) pursuant to 35 U.S.C. 122(a). Status information is defined to include identification of whether the application has been published under 35 U.S.C. 122(b), as well as whether the application is pending, abandoned, or patented, and the application numerical identifier. Section 1.14(b) is amended to provide that status information may also be supplied when the application is referred to by its numerical identifier in a U.S. patent application publication as well as a U.S. patent or a published international application. Section 1.14(b) is also amended to provide that status information may be supplied for an application which claims the benefit of the filing date of an application for which status information may be supplied. As a result, the public will be able to obtain continuity data for applications that have been published as a U.S. patent application publication or as a U.S. patent. Section 1.14(c)(1) provides that a copy of an application-as-filed or a file wrapper and contents may be supplied where the appropriate fee is paid, and: (1) The application is incorporated by reference in a U.S. patent application publication or U.S. patent; or (2) the application is relied upon for priority under 35 U.S.C. 119(e) or 120 in a U.S. patent application publication or U.S. patent. Section 1.14(c)(2) provides that copies of the file wrapper and contents of an application are available to the public when the application has been published as a U.S. patent application publication. Section 1.14(e) is amended to provide public access to an abandoned application that is referenced in a U.S. patent application publication, as well as a U.S. patent, or another application that is open to public inspection. Section 1.14(i) provides for greater access to international application files kept by the Office and applies to applications having an international filing date on or after November 29, 2000. Specifically, 35 U.S.C. 374 equates the publication under the PCT of an international application designating the U.S. to the publication of a U.S. application under 35 U.S.C. 122(b). After publication of an 57030 Federal Register / Vol. 65, No. 183 / Wednesday, September 20, 2000 / Rules and Regulations application under 35 U.S.C. 122(b), the Office will make available copies of the application files and also allow for access to those files in accordance with § 1.14(c) and (e), respectively. Therefore, after publication of an international application designating the U.S. under PCT Article 21, the Office will make available copies of, and allow access to, those international application files which are kept in the Office (the Home, Search, and Examination Copies) to the extent permitted under the PCT. Additionally, § 1.14(i)(2) provides that copies of English language translations of international applications, which were published in a non-English language and which designated the U.S., and which have been submitted to the Office pursuant to 35 U.S.C. 154(d)(4), will also be available to the public. Requests for copies of, or access to, an application file under § 1.14(i) must be in the form of a written request and must include a showing that the international application has been published and that the U.S. was designated. Such a showing should preferably be in the form of the submission of a copy of the front page of the published international application. Additionally, requests for copies of international application files must also be accompanied by the appropriate fee. Section 1.14(j) is amended to provide that this section not only applies when the Office provides access to or copies of the application, but also when the Office provides access to or copies of a part of an application. Section 1.17: The heading of § 1.17 is amended to include a reference to reexamination to clarify that the enumerated fees in § 1.17 may also apply during reexamination proceedings, as well as to patent applications. Section 1.17(h) is amended to include a petition under § 1.138(c) to expressly abandon an application to avoid publication among the petitions requiring the fee ($130) set forth in § 1.17(h). Section 1.17(i) is amended to include processing a redacted copy of a paper submitted in the file of an application in which a redacted copy was submitted for the patent application publication (§ 1.217), processing a request for voluntary publication or republication of an application (§ 1.221), and processing a belated submission under § 1.99 (§ 1.99(e)) to the processing services requiring the processing fee ($130) set forth in § 1.17(i). Sections 1.17(l) and 1.17(m) are amended to set forth the fees for filing a petition under § 1.137 for revival of a terminated reexamination proceeding (on the basis of unavoidable and unintentional delay). Section 1.17(l) is amended to reflect that its $110 petition fee ($55 for a small entity) is required for a petition under § 1.137(a) to revive a terminated reexamination proceeding on the basis of an unavoidable failure of the patent owner to timely respond. Section 1.17(m) is amended to reflect that its $1,240 petition fee ($620 for a small entity) is required for a petition under § 1.137(b) to revive a terminated reexamination proceeding on the basis of an unintentional failure to timely respond. Note, however, that the newly enacted unintentional revival provisions of the American Inventors Protection Act of 1999 are not effective in any reexamination until November 29, 2000. Section 1.17(p) is amended to make its fee ($180) applicable to a third-party submission under § 1.99, as well as an information disclosure statement under § 1.97(c) or (d). Section 1.17(t) is added to set forth the surcharge ($1,240) for accepting an unintentionally delayed claim for priority under 35 U.S.C. 119, 120, 121, or 365(a) or 365(c) (§§ 1.55 and 1.78). Section 1.18: Section 1.18(d) is added to specify the publication fee ($300). In view of this addition to § 1.18, the heading of § 1.18 is also amended to refer to ‘‘post-allowance (including issue) fees’’ (instead of only ‘‘issue fees’’). Section 1.19: Section 1.19(a) is amended to provide that its $3 (regular service), $6 (next business day delivery to Office Box), or $25 (expedited delivery by commercial delivery service) fee would also be applicable to a request for a copy of the paper portion of a patent application publication. The $25 fee set forth in § 1.19(a)(4) would apply to a request for a certified copy of a patent application publication. Section 1.24: Section 1.24 is removed and reserved. The practice of using coupons to purchase, e.g., patents, statutory invention registrations, and trademark registrations, is inefficient compared to alternatives such as payment by credit card (especially for orders placed via the Internet). Coupons sold by the Office (before coupon practice is abolished) may still be used but cannot be redeemed. Section 1.52: Section 1.52(d) is amended to provide for nonprovisional applications and provisional applications filed in a language other than English. The provisions concerning the treatment of nonprovisional applications filed in a language other than English are revised for clarity, but otherwise remain unchanged (§ 1.52(d)(1)). Section 1.52(d)(2) provides that if a provisional application is filed in a language other than English, an English translation will not be required in the provisional application. Section 1.52(d)(2) also contains a reference to § 1.78(a) concerning the requirements for claiming the benefit of the filing date of such a provisional application in a later filed nonprovisional application. Section 1.55: Section 1.55 is amended to implement the provisions of 35 U.S.C. 119(b) as amended by section 4503(a) of the American Inventors Protection Act of 1999, by providing: (1) A time period within which a claim for the benefit of a prior foreign application must be stated or waived; and (2) provisions for the acceptance of an unintentionally delayed submission of a claim to the benefit of a prior foreign application. Section 1.55(a) is amended to provide that: (1) In an original application filed under 35 U.S.C. 111(a) (other than a design application), 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; (2) in an application that entered the national stage from an international application after compliance with 35 U.S.C. 371, the claim for priority must be made during the pendency of the application and within the time limit set forth in the PCT and the Regulations under the PCT; and (3) the claim for priority and the certified copy of the foreign application specified in 35 U.S.C. 119(b) or PCT Rule 17 must, in any event, be filed before the patent is granted. Section 1.55(c) provides that any claim for priority under 35 U.S.C. 119(a)–(d) or 365(a) not presented within the time period provided by § 1.55(a) is considered to have been waived. Section 1.55(c) also provides that if a claim to priority under 35 U.S.C. 119(a)–(d) or 365(a) is presented after the time period provided by § 1.55(a), the claim may be accepted if the claim identifying the prior foreign application by specifying its application number, country, and the day, month and year of its filing was unintentionally delayed. Section 1.55(c) also provides that 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 surcharge set forth in § 1.17(t); and (2) a statement that the entire delay between the date the claim was due under § 1.55(a)(1) and the date the claim was filed was unintentional, and that the Commissioner may require additional Federal Register / Vol. 65, No. 183 / Wednesday, September 20, 2000 / Rules and Regulations information where there is a question whether the delay was unintentional. Section 1.72: Section 1.72(a) is amended to provide that the title of the invention may not exceed 500 characters in length. The title character number limitation is necessary to ensure that the title can be captured and recorded in the Office’s Patent Application Locating and Monitoring (PALM) system. Section 1.72(a) is also amended to provide that characters that cannot be captured and recorded in the Office’s automated information systems (e.g., PALM) may not be reflected in the Office’s records in such systems or in documents created by the Office. Thus, if a title includes a character (images) that cannot be captured by PALM, that title will not appear in the Office’s PALM records for that application, and may not be reflected in documents (e.g., a filing receipt, patent application publication, or patent) created by the Office. Section 1.76: Section 1.76 is amended to provide for the inclusion of assignee information in a new § 1.76(b)(7). Section 1.76(b)(7) provides that: (1) assignee information includes the name (either person or juristic entity) and address of the assignee of the entire right, title, and interest in an application; and (3) the inclusion of this information on the application data sheet does not substitute for compliance with any requirement of 37 CFR part 3 to have an assignment recorded by the Office. Providing assignee information on the application data sheet is considered a request to include such information on the patent application publication, since there is no other reason for including such information on the application data sheet. Section 1.78: Section 1.78(a) is amended to implement the provisions of 35 U.S.C. 119(e) and 120 as amended by § 4503(b) of the American Inventors Protection Act of 1999, by providing: (1) A time period within which a claim to the benefit of a prior nonprovisional or provisional application must be stated or waived; and (2) provisions for the acceptance of the unintentionally delayed submission of a claim to the benefit of a prior nonprovisional or provisional application. Section 1.78(a)(2) is amended to provide that (except for a continued prosecution application filed under § 1.53(d)) any claim to the benefit of a nonprovisional application or international application must be made 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 application. Section 1.78(a)(2) also provides that the failure to timely submit the reference required by 35 U.S.C. 120 and § 1.78(a)(2) is considered a waiver of any benefit under 35 U.S.C. 120, 121, or 365(c) to such prior application, but that the time period set forth in § 1.78(a)(2) does not apply to an application for a design patent. Section 1.78(a)(2) also provides 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 (regardless of whether benefit to such application is claimed in the application data sheet). Sections 1.78(a)(3) and 1.78(a)(4) are redesignated as § 1.78(a)(4) and 1.78(a)(5), respectively. Section 1.78(a)(3) provides that if the reference required by 35 U.S.C. 120 and § 1.78(a)(2) is presented in a nonprovisional application after the time period provided by § 1.78(a)(2), the claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior filed copending nonprovisional application or international application designating the United States may be accepted if the reference identifying the prior application by application number or international application number and international filing date was unintentionally delayed. Section 1.78(a)(3) also provides that a petition to accept an unintentionally delayed claim under 35 U.S.C. 120, 121, or 365(c) for the benefit of a prior filed copending application must be accompanied by: (1) The surcharge set forth in § 1.17(t); and (2) a statement that the entire delay between the date the claim was due under § 1.78(a)(2) and the date the claim was filed was unintentional, but the Commissioner may require additional information where there is a question whether the delay was unintentional. Section 1.78(a)(4) is amended to provide that, for a nonprovisional application to claim the benefit of a provisional application, the provisional application must be entitled to a filing date as set forth in § 1.53(c), and the basic filing fee set forth in § 1.16(k) must be paid within the time period set forth in § 1.53(g). Section 1.78(a)(5) provides that any nonprovisional application claiming the benefit of a provisional application filed in a language other than English must (in addition to the reference required by 35 U.S.C. 119(e) and § 1.78(a)(5)) contain an English language translation of the non-English language provisional application and a statement that the translation is accurate. Section 1.78(a)(5) also provides any claim for 57031 the benefit of a provisional application and English language translation of a non-English language provisional application must be submitted during the pendency of the nonprovisional application, and within the later of four months from the actual filing date of the nonprovisional application or sixteen months from the filing date of the prior provisional application. Section 1.78(a)(5) also provides that the failure to timely submit the reference and English language translation of a nonEnglish language provisional application required by 35 U.S.C. 119(e) and § 1.78(a)(5) is considered a waiver of any benefit under 35 U.S.C. 119(e) to such prior provisional application. Section 1.78(a)(6) provides that if the reference or English language translation of a non-English language provisional application required by 35 U.S.C. 119(e) and § 1.78(a)(5) is presented in a nonprovisional application after the time period provided by § 1.78(a)(5), the claim under 35 U.S.C. 119(e) for the benefit of a prior filed provisional application may be accepted during the pendency of the nonprovisional application if the reference identifying the prior application by provisional application number and any English language translation of a non-English language provisional application were unintentionally delayed. Section 1.78(a)(6) also provides that a petition to accept an unintentionally delayed claim under 35 U.S.C. 119(e) for the benefit of a prior filed provisional application must be accompanied by: (1) The surcharge set forth in § 1.17(t); and (2) a statement that the entire delay between the date the claim was due under § 1.78(a)(5) and the date the claim was filed was unintentional, but that the Commissioner may require additional information where there is a question whether the delay was unintentional. Section 1.84: Section 1.84(a)(2) is amended to provide that color drawings are not permitted in an application, or copy thereof, submitted under the Office electronic filing system. Section 1.84(a)(2) is also amended to provide that any petition to accept color drawings must include a black and white photocopy that accurately depicts, to the extent possible, the subject matter shown in the color drawing. Since § 1.84(b) provides that color photographs will be accepted in utility patent applications if the conditions for accepting color drawings have been satisfied, the provisions and restrictions in amended § 1.84(a)(2) would also apply to color photographs. Section 1.84(e) is amended to provide that photographs must be developed on 57032 Federal Register / Vol. 65, No. 183 / Wednesday, September 20, 2000 / Rules and Regulations paper meeting the sheet-size requirements of § 1.84(f) and the margin requirements of § 1.84(g). Section 1.84(j) is amended to refer to the view suitable for the front page of the patent application publication and patent, rather than the view suitable for the Official Gazette, since the front page of the patent (and patent application publication) includes the information that is (or would be) included in the Official Gazette, and the Office does not plan on creating an Official Gazette for patent application publications. Section 1.84(j) is also amended to provide that: (1) One of the views should be suitable for inclusion on the front page of the patent application publication and patent as the illustration of the invention; and (2) applicant may suggest a single view (by figure number) for inclusion on the front page of the patent application publication and patent. Applicants should indicate in the application transmittal letter the figure number of the view suggested for inclusion on the front page of the patent application publication and patent. The Office, however, is not bound by applicant’s suggestion. Section 1.85: Section 1.85(a) is amended to provide that a utility or plant application will not be placed on the files for examination until objections to the drawings have been corrected. As discussed above, these objections will concern deficiencies that must be corrected for the drawings to be of sufficient quality for use in creating a patent application publication. For example, the drawings must be reproducible and any text in the drawings must be in the English language. Since the Office plans to use the copy of the application (including the drawings) from its PACR database to create the patent application publication, the Office must require that new or corrected drawings correcting the objections to the drawings be filed before the application is released from OIPE and placed on the files for examination. Even if an applicant files the application with a request that the application not be published pursuant to 35 U.S.C. 122(b), the applicant may rescind that request at any time. See 35 U.S.C. 122(b)(2)(B)(ii). In addition, at the time the Office is recording a copy of the application in its PACR database, the Office is not in a position to know whether the applicant will file an electronic filing system copy of the application for use in creating the patent application publication. Therefore, the Office must be prepared to create a patent application publication from its PACR database for each application and insist that objections to the drawings be corrected in all utility and plant applications before the application can be released from OIPE. Section 1.85(a) is also amended to provide that (except as provided in § 1.215(c)) any patent application publication will not include drawings filed after the application has been placed on the files for examination. Thus, corrected drawings submitted after the application has been released from OIPE will not be added to the PACR database or used to create the patent application publication. Section 1.85(a) is also amended to provide that, unless applicant is otherwise notified in an Office action, objections to the drawings in a utility or plant application will not be held in abeyance, and a request to hold objections to the drawings in abeyance will not be considered a bona fide attempt to advance the application to final action (§ 1.135(c)). That is, if an Office action or notice contains an objection to the drawings (and does not expressly permit such objection to be held in abeyance) and the applicant’s reply does not correct the objection, the applicant will be advised that the reply is non-responsive and given the remainder of the period set in the original Office action or notice (and no