consolidated_rules.pdf - Appendix R Patent Rules...

This preview shows page 1 out of 336 pages.

Unformatted text preview: Appendix R Patent Rules CONSOLIDATED PATENT RULES Title 37 - Code of Federal Regulations Patents, Trademarks, and Copyrights CHAPTER I — PRACTICE BEFORE THE PATENT AND TRADEMARK OFFICE Editor’s Note (November 9, 2007): All final rules that became effective since the last revision of the Manual of Patent Examining Procedure (MPEP) dated September 2007 are identified below by the Federal Register Notice cites and the Official Gazette Notice cites, where applicable. The Federal Register Notices are the authoritative source in the event that there are discrepancies between the patent rules in this document and the rules as published in the Federal Register. 10 Representation of others before the Patent and Trademark Office 11 Representation of others before the United States Patent and Trademark Office Index II - Rules relating to practice before the United States Patent and Trademark Office TITLE: April 2007 Revision of Patent Cooperation Treaty Procedures ACTION: Final Rule FEDERAL REGISTER: 72 FR 51559 (September 10, 2007) OFFICIAL GAZETTE: 1323 O.G. 26 (October 2, 2007) EFFECTIVE DATE: November 9, 2007 15 [Reserved] 15a [Reserved] 41 Practice before the Board of Patent Appeals and Interferences TITLE: April 2007 Revision of Patent Cooperation Treaty Procedures ACTION: Final Rule; correction FEDERAL REGISTER: 72 FR 57863 (October 11, 2007) OFFICIAL GAZETTE: 1324 O.G. 22 (November 6, 2007) EFFECTIVE DATE: November 9, 2007 SUBCHAPTER B — ADMINISTRATION 100 101 102 104 CHAPTER I — UNITED STATES PATENT AND TRADEMARK OFFICE, DEPARTMENT OF COMMERCE [Reserved] [Reserved] Disclosure of government information Legal processes SUBCHAPTER C—PROTECTION OF FOREIGN MASK WORKS SUBCHAPTER A - GENERAL 150 Requests for Presidential proclamations pursuant to 17 U.S.C. 902(a)(2) _______________________________________________ PATENTS Part 1 Rules of practice in patent cases 3 Assignment, recording and rights of assignee 4 Complaints regarding invention promoters 5 Secrecy of certain inventions and licenses to export and file applications in foreign countries SUBCHAPTER A - GENERAL PART 1 - RULES OF PRACTICE IN PATENT CASES Subpart A - General Provisions Index I - Rules pertaining to patents R-1 November 2007 CONSOLIDATED PATENT RULES GENERAL INFORMATION AND CORRESPONDENCE Sec. 1.1 1.2 1.3 1.4 1.5 1.6 1.7 1.8 1.9 1.10 Addresses for non-trademark correspondence with the United States Patent and Trademark Office. Business to be transacted in writing. Business to be conducted with decorum and courtesy. Nature of correspondence and signature requirements. Identification of patent, patent application, or patentrelated proceeding. Receipt of correspondence. Times for taking action; Expiration on Saturday, Sunday, or Federal holiday. Certificate of mailing or transmission. Definitions. Filing of papers and fees by “Express Mail.” 1.17 1.18 1.19 1.20 1.21 1.22 1.23 1.24 1.25 1.26 Refunds when small entity status is later established; how errors in small entity status are excused. 1.31 Applicant may be represented by one or more patent practitioners or joint inventors. 1.32 Power of attorney. 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings. 1.34 Acting in a representative capacity. 1.36 Revocation of power of attorney; withdrawal of patent attorney or agent. WHO MAY APPLY FOR A PATENT Files open to the public. Assignment records open to public inspection. Copies and certified copies. Patent applications preserved in confidence. [Reserved] National application filing, search, and examination fees. Patent application and reexamination processing fees. Patent post allowance (including issue) fees. Document supply fees. Post issuance fees. Miscellaneous fees and charges. Fees payable in advance. Method of payment. [Reserved] Deposit accounts. Refunds. November 2007 1.28 PROSECUTION OF APPLICATION AND APPOINTMENT OF ATTORNEY OR AGENT FEES AND PAYMENT OF MONEY 1.16 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when a determination of entitlement to small entity status and notification of loss of entitlement to small entity status are required; fraud on the Office. Subpart B - National Processing Provision RECORDS AND FILES OF THE PATENT AND TRADEMARK OFFICE 1.11 1.12 1.13 1.14 1.15 1.27 1.41 Applicant for patent. 1.42 When the inventor is dead. 1.43 When the inventor is insane or legally incapacitated. 1.44 [Reserved] 1.45 Joint inventors. 1.46 Assigned inventions and patents. 1.47 Filing when an inventor refuses to sign or cannot be reached. 1.48 Correction of inventorship in a patent application, other than a reissue application, pursuant to 35 U.S.C. 116. THE APPLICATION R-2 1.51 General requisites of an application. 1.52 Language, paper, writing, margins, compact disc specifications. 1.53 Application number, filing date, and completion of application. CONSOLIDATED PATENT RULES 1.54 1.55 1.56 1.57 1.58 1.59 1.60 1.61 1.62 MODELS, EXHIBITS, SPECIMENS Parts of application to be filed together; filing receipt. Claim for foreign priority. Duty to disclose information material to patentability. Incorporation by reference. Chemical and mathematical formulae and tables. Expungement of information or copy of papers in application file. [Reserved] [Reserved] [Reserved] 1.91 1.92 1.93 1.94 1.95 1.96 Models or exhibits not generally admitted as part of application or patent. [Reserved] Specimens. Return of models, exhibits or specimens. Copies of exhibits. Submission of computer program listings. INFORMATION DISCLOSURE STATEMENT OATH OR DECLARATION 1.63 1.64 1.66 1.67 1.68 1.69 1.70 1.97 1.98 1.99 Oath or declaration. Person making oath or declaration. Officers authorized to administer oaths. Supplemental oath or declaration. Declaration in lieu of oath. Foreign language oaths and declarations. [Reserved] EXAMINATION OF APPLICATIONS 1.101 1.102 1.103 1.104 1.105 1.106 1.107 1.108 1.109 1.110 SPECIFICATION 1.71 1.72 1.73 1.74 1.75 1.76 1.77 1.78 1.79 Detailed description and specification of the invention. Title and abstract. Summary of the invention. Reference to drawings. Claim(s). Application data sheet. Arrangement of application elements. Claiming benefit of earlier filing date and cross-references to other applications. Reservation clauses not permitted. [Reserved] Advancement of examination. Suspension of action by the Office. Nature of examination. Requirements for information. [Reserved] [Reserved] [Reserved] Double Patenting Inventorship and date of invention of the subject matter of individual claims. ACTION BY APPLICANT AND FURTHER CONSIDERATION 1.111 Reply by applicant or patent owner to a non-final Office action. 1.112 Reconsideration before final action. 1.113 Final rejection or action. 1.114 Request for continued examination. THE DRAWINGS 1.81 1.83 1.84 1.85 1.88 Filing of information disclosure statement. Content of information disclosure statement. Third-party submission in published application. Drawings required in patent application. Content of drawing. Standards for drawings. Corrections to drawings. [Reserved] AMENDMENTS 1.115 Preliminary amendments. R-3 November 2007 CONSOLIDATED PATENT RULES JOINDER OF INVENTIONS IN ONE APPLICATION; RESTRICTION 1.116 Amendments and affidavits or other evidence after final action and prior to appeal. 1.117 [Reserved] 1.118 [Reserved] 1.141 1.142 1.143 1.144 1.145 Different inventions in one national application. Requirement for restriction. Reconsideration of requirement. Petition from requirement for restriction. Subsequent presentation of claims for different invention. 1.146 Election of species. 1.119 [Reserved] 1.121 Manner of making amendments in applications. 1.122 [Reserved] 1.123 [Reserved] 1.124 [Reserved] 1.125 Substitute specification. 1.126 Numbering of claims. 1.127 Petition from refusal to admit amendment. DESIGN PATENTS TRANSITIONAL PROVISIONS 1.151 1.152 1.153 1.154 Rules applicable. Design drawings. Title, description and claim, oath or declaration. Arrangement of application elements in a design application. 1.155 Expedited examination of design applications. 1.129 Transitional procedures for limited examination after final rejection and restriction practice. AFFIDAVITS OVERCOMING REJECTIONS PLANT PATENTS 1.130 Affidavit or declaration to disqualify commonly owned patent or published application as prior art. 1.161 Rules applicable. 1.162 Applicant, oath or declaration. 1.163 Specification and arrangement of application elements in a plant application. 1.164 Claim. 1.165 Plant Drawings. 1.166 Specimens. 1.167 Examination. 1.131 Affidavit or declaration of prior invention. 1.132 Affidavits or declarations traversing rejections or objections. INTERVIEWS 1.133 Interviews. REISSUES TIME FOR REPLY BY APPLICANT; ABANDONMENT OF APPLICATION 1.171 1.172 1.173 1.174 1.175 1.176 1.177 1.178 1.179 1.134 Time period for reply to an Office action. 1.135 Abandonment for failure to reply within time period. 1.136 Extensions of time. 1.137 Revival of abandoned application, terminated reexamination proceeding, or lapsed patent. 1.138 Express abandonment. 1.139 [Reserved] November 2007 R-4 Application for reissue. Applicants, assignees. Reissue specification, drawings, and amendments. [Reserved] Reissue oath or declaration. Examination of reissue. Issuance of multiple reissue patents. Original patent; continuing duty of applicant. [Reserved] CONSOLIDATED PATENT RULES PETITIONS AND ACTION BY THE DIRECTOR 1.181 1.182 1.183 1.184 1.292 Public use proceedings. 1.293 Statutory invention registration. 1.294 Examination of request for publication of a statutory invention registration and patent application to which the request is directed. 1.295 Review of decision finally refusing to publish a statutory invention registration. 1.296 Withdrawal of request for publication of statutory invention registration. 1.297 Publication of statutory invention registration. Petition to the Director. Questions not specifically provided for. Suspension of rules. [Reserved] APPEAL TO THE BOARD OF PATENT APPEALS AND INTERFERENCES REVIEW OF PATENT AND TRADEMARK OFFICE DECISIONS BY COURT 1.191 Appeal to Board of Patent Appeals and Interferences. 1.192 [Reserved] 1.193 [Reserved] 1.194 [Reserved] 1.195 [Reserved] 1.196 [Reserved] 1.197 Return of jurisdiction from the Board of Patent Appeals and Interferences; termination of proceedings. 1.198 Reopening after a final decision of the Board of Patent Appeals and Interferences. 1.301 Appeal to U.S. Court of Appeals for the Federal Circuit. 1.302 Notice of appeal. 1.303 Civil action under 35 U.S.C. 145, 146, 306. 1.304 Time for appeal or civil action. ALLOWANCE AND ISSUE OF PATENT 1.311 1.312 1.313 1.314 1.315 1.316 1.317 Notice of Allowance. Amendments after allowance. Withdrawal from issue. Issuance of patent. Delivery of patent. Application abandoned for failure to pay issue fee. Lapsed patents; delayed payment of balance of issue fee. 1.318 [Reserved] PUBLICATION OF APPLICATIONS 1.211 1.213 1.215 1.217 1.219 1.221 Publication of applications. Nonpublication request. Patent application publication. Publication of a redacted copy of an application. Early publication. Voluntary publication or republication of patent application publication. DISCLAIMER MISCELLANEOUS PROVISIONS 1.321 Statutory disclaimers, including terminal disclaimers. 1.248 Service of papers; manner of service; proof of service in cases other than interferences. 1.251 Unlocatable file. CORRECTION OF ERRORS IN PATENT PROTESTS AND PUBLIC USE PROCEEDINGS 1.322 Certificate of correction of Office mistake. 1.323 Certificate of correction of applicant’s mistake. 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256. 1.291 Protests by the public against pending applications. R-5 November 2007 CONSOLIDATED PATENT RULES WHO MAY FILE AN INTERNATIONAL APPLICATION 1.325 Other mistakes not corrected. ARBITRATION AWARDS 1.331 1.332 1.333 1.334 1.335 1.421 1.422 1.423 1.424 1.425 [Reserved] [Reserved] [Reserved] [Reserved] Filing of notice of arbitration awards Applicant for international application. When the inventor is dead. When the inventor is insane or legally incapacitated. [Reserved] [Reserved] THE INTERNATIONAL APPLICATION AMENDMENT OF RULES 1.431 International application requirements. 1.432 Designation of States by filing an international application. 1.433 Physical requirements of international application. 1.434 The request. 1.435 The description. 1.436 The claims. 1.437 The drawings. 1.438 The abstract. 1.351 Amendments to rules will be published. 1.352 [Reserved] MAINTENANCE FEES 1.362 1.363 1.366 1.377 Time for payment of maintenance fees. Fee address for maintenance fee purposes. Submission of maintenance fees. Review of decision refusing to accept and record payment of a maintenance fee filed prior to expiration of patent. 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate patent. FEES 1.445 International application filing, processing and search fees. 1.446 Refund of international application filing and processing fees. Subpart C - International Processing Provisions PRIORITY GENERAL INFORMATION 1.451 The priority claim and priority document in an international application. 1.452 Restoration of right of priority. 1.401 Definitions of terms under the Patent Cooperation Treaty. 1.412 The United States Receiving Office. 1.413 The United States International Searching Authority. 1.414 The United States Patent and Trademark Office as a Designated Office or Elected Office. 1.415 The International Bureau. 1.416 The United States International Preliminary Examining Authority. 1.417 Submission of translation of international publication. 1.419 Display of currently valid control number under the Paperwork Reduction Act. November 2007 REPRESENTATION 1.455 Representation in international applications. TRANSMITTAL OF RECORD COPY 1.461 Procedures for transmittal of record copy to the International Bureau. R-6 CONSOLIDATED PATENT RULES TIMING 1.492 National stage fees. 1.494 [Reserved] 1.495 Entering the national stage in the United States of America. 1.465 Timing of application processing based on the priority date. 1.496 Examination of international applications in the national stage. 1.468 Delays in meeting time limits. 1.497 Oath or declaration under 35 U.S.C. 371(c)(4). AMENDMENTS 1.499 Unity of invention during the national stage. 1.471 Corrections and amendments during international processing. Subpart D - Ex Parte Reexamination of Patents 1.472 Changes in person, name, or address of applicants and inventors. CITATION OF PRIOR ART 1.501 Citation of prior art in patent files. UNITY OF INVENTION 1.502 Processing of prior art citations during an ex parte reexamination proceeding. 1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority and during the national stage. REQUEST FOR REEXAMINATION 1.476 Determination of unity of invention before the International Searching Authority. 1.510 Request for ex parte reexamination. 1.515 Determination of the request for ex parte reexamination. 1.477 Protest to lack of unity of invention before the International Searching Authority. 1.520 Ex parte reexamination at the initiative of the Director. INTERNATIONAL PRELIMINARY EXAMINATION 1.525 Order for ex parte reexamination. 1.480 Demand for international preliminary examination. 1.530 Statement by patent owner in ex parte reexamination; amendment by patent owner in ex parte or inter partes reexamination; inventorship change in ex parte or inter partes reexamination. 1.481 Payment of international preliminary examination fees. 1.535 Reply by third party requester in ex parte reexamination. 1.482 International preliminary examination fees. 1.540 Consideration of responses in ex parte reexamination. 1.484 Conduct of international preliminary examination. 1.550 Conduct of ex parte reexamination proceedings. 1.485 Amendments by applicant during international preliminary examination. 1.552 Scope of reexamination in ex parte reexamination proceedings. 1.488 Determination of unity of invention before the International Preliminary Examining Authority. 1.555 Information material to patentability in ex parte reexamination and inter partes reexamination proceedings. 1.489 Protest to lack of unity of invention before the International Preliminary Examining Authority. 1.560 Interviews in ex parte reexamination proceedings. 1.565 Concurrent office proceedings which include an ex parte reexamination proceeding. NATIONAL STAGE 1.570 Issuance of ex parte reexamination certificate after ex parte reexamination proceedings. 1.491 National stage commencement and entry. R-7 November 2007 CONSOLIDATED PATENT RULES Subpart E - [Reserved] 1.777 Calculation of patent term extension for a medical device. 1.778 Calculation of patent term extension for an animal drug product. 1.779 Calculation of patent term extension for a veterinary biological product. 1.780 Certificate or order of extension of patent term. 1.785 Multiple applications for extension of term of the same patent or of different patents for the same regulatory review period for a product. 1.790 Interim extension of patent term under 35 U.S.C. 156(d)(5) 1.791 Termination of interim extension granted prior to regulatory approval of a product for commercial marketing or use. Subpart F - Adjustment and Extension of Patent Term ADJUSTMENT OF PATENT TERM DUE TO EXAMINATION DELAY 1.701 Extension of patent term due to examination delay under the Uruguay Round Agreements Act (original applications, other than designs, filed on or after June 8, 1995, and before May 29, 2000). 1.702 Grounds for adjustment of patent term due to examination delay under the Patent Term Guarantee Act of 1999 (original applications, other than designs, filed on or after May 29, 2000). Subpart G - Biotechnology Invention Disclosures 1.703 Period of adjustment of patent term due to examination delay. DEPOSIT OF BIOLOGICAL MATERIAL 1.704 Reduction of period of adjustment of patent term. 1.705 Patent term adjustment determination. 1.801 1.802 1.803 1.804 1.805 1.806 1.807 1.808 1.809 EXTENSION OF PATENT TERM DUE TO REGULATORY REVIEW 1.710 Patents subject to extension of the patent term. 1.720 Conditions for extension of patent term. 1.730 Applicant for extension of patent term; signature requirements. Biological material. Need or opportunity to make a deposit. Acceptable depository. Time of making an original deposit. Replacement or supplement of deposit. Term of deposit. Viability of deposit. Furnishing of samples. Examination procedures. APPLICATION DISCLOSURES CONTAINING NUCLEOTIDE AND/OR AMINO ACID SEQUENCES 1.740 Formal requirements for application for extension of patent term; correction of informalities. 1.741 Complete application given a filing date; petition procedure. 1.750 Determination of eligibility for extension of patent term. 1.775 Calculation of patent term extension for a human drug, antibiotic drug, or human biological product. 1.821 Nucleotide and/or amino acid sequence disclosures in patent applications. 1.822 Symbols and format to be used for nucleotide and/or amino acid sequence data. 1.823 Requirements for nucleotide and/or amino acid sequences as part of the application. 1.824 Form and format for nucleotide and/or amino acid sequence submissions in computer readable form. 1.825 Amendments to or replacement of sequence listing and computer readable copy thereof. 1.776 Calculation of patent term extension for a food additive or color additive. Appendix A - Sample Sequence Listing 1.760 Interim extension of patent term under 35 U.S.C. 156(e)(2). 1.765 Duty of disclosure in patent term extension proceedings. 1.770 Express withdrawal of application for extension of patent term. November 2007 R-8 CONSOLIDATED PATENT RULES Subpart H - Inter Partes Reexamination of Patents that Issued From an Ori...
View Full Document

  • Left Quote Icon

    Student Picture

  • Left Quote Icon

    Student Picture

  • Left Quote Icon

    Student Picture