Editing 37 C.F.R.

Appendix R PATENT RULES


Title 37 - Code of Federal Regulations 
Patents, Trademarks, and Copyrights


CHAPTER I — UNITED STATES PATENT 
AND TRADEMARK OFFICE, 
DEPARTMENT OF COMMERCE


SUBCHAPTER A - GENERAL


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 

Index I - Rules pertaining to patents 

PRACTICE BEFORE THE 
PATENT AND TRADEMARK OFFICE


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 

15 [Reserved] 
15a [Reserved] 

41 Practice before the Board of Patent Appeals and 
Interferences 

SUBCHAPTER B — ADMINISTRATION 

100 [Reserved]
101 [Reserved]
102 Disclosure of government information
104 Legal processes 


SUBCHAPTER C—PROTECTION OF 
FOREIGN MASK WORKS


150 Requests for Presidential proclamations pursuant 
to 17 U.S.C. 902(a)(2) 

SUBCHAPTER A - GENERAL 

PART 1 - RULES OF PRACTICE IN 
PATENT CASES 


Subpart A - General Provisions 


GENERAL INFORMATION AND
CORRESPONDENCE 


Sec. 

1.1 Addresses for non-trademark correspondence with 
the United States Patent and Trademark Office. 

1.2 Business to be transacted in writing. 

1.3 Business to be conducted with decorum and 
courtesy. 

1.4 Nature of correspondence and signature 
requirements. 

1.5 Identification of patent, patent application, or patent-
related proceeding. 

1.6 Receipt of correspondence. 

1.7 Times for taking action; Expiration on Saturday, 
Sunday, or Federal holiday. 

1.8 Certificate of mailing or transmission. 

1.9 Definitions. 

1.10 Filing of papers and fees by “Express Mail.” 

RECORDS AND FILES OF THE 
PATENT AND TRADEMARK OFFICE


1.11 Files open to the public. 

1.12 Assignment records open to public inspection. 

1.13 Copies and certified copies. 

1.14 Patent applications preserved in confidence. 

1.15 [Reserved] 

 

FEES AND PAYMENT OF MONEY 

1.16 National application filing, search, and examination 
fees. 

1.17 Patent application and reexamination processing 
fees. 

1.18 Patent post allowance (including issue) fees. 

1.19 Document supply fees. 

1.20 Post issuance fees. 

1.21 Miscellaneous fees and charges. 

1.22 Fees payable in advance. 

1.23 Method of payment. 

1.24 [Reserved] 

1.25 Deposit accounts. 

1.26 Refunds. 

1.27 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. 

1.28 Refunds when small entity status is later established; 
how errors in small entity status are excused. 

Subpart B - National Processing Provision 

PROSECUTION OF APPLICATION 
AND APPOINTMENT OF ATTORNEY 
OR AGENT


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 

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 
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. 
1.54 Parts of application to be filed together; filing 
receipt. 
1.55 Claim for foreign priority. 
1.56 Duty to disclose information material to 
patentability. 
1.57 Incorporation by reference. 
1.58 Chemical and mathematical formulae and tables. 
1.59 Expungement of information or copy of papers in 
application file. 
1.60 [Reserved] 
1.61 [Reserved] 
1.62 [Reserved] 
OATH OR DECLARATION 
1.63 Oath or declaration. 
1.64 Person making oath or declaration. 
1.66 Officers authorized to administer oaths. 
1.67 Supplemental oath or declaration. 
1.68 Declaration in lieu of oath. 
1.69 Foreign language oaths and declarations. 
1.70 [Reserved] 
SPECIFICATION 
1.71 Detailed description and specification of the 
invention. 
1.72 Title and abstract. 
1.73 Summary of the invention. 
1.74 Reference to drawings. 
1.75 Claim(s). 
1.76 Application data sheet. 
1.77 Arrangement of application elements. 

 

1.78 Claiming benefit of earlier filing date and
cross-references to other applications. 


1.79 Reservation clauses not permitted. 


THE DRAWINGS 

1.81 Drawings required in patent application. 


1.83 Content of drawing. 


1.84 Standards for drawings. 


1.85 Corrections to drawings. 


1.88 [Reserved] 


MODELS, EXHIBITS, SPECIMENS 

1.91 Models or exhibits not generally admitted as part of 
application or patent. 


1.92 [Reserved] 


1.93 Specimens. 


1.94 Return of models, exhibits or specimens. 


1.95 Copies of exhibits. 


1.96 Submission of computer program listings. 


INFORMATION DISCLOSURE 
STATEMENT 


1.97 Filing of information disclosure statement. 


1.98 Content of information disclosure statement. 


1.99 Third-party submission in published application. 


EXAMINATION OF APPLICATIONS 

1.101 [Reserved] 


1.102 Advancement of examination. 


1.103 Suspension of action by the Office. 


1.104 Nature of examination.


1.105 Requirements for information. 


1.106 [Reserved] 


1.107 [Reserved] 


1.108 [Reserved] 


1.109 Double Patenting 


1.110 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.


 AMENDMENTS 

1.115 Preliminary amendments. 


1.116 Amendments and affidavits or other evidence after 
final action and prior to appeal. 


1.117 [Reserved] 


1.118 [Reserved] 


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. 


TRANSITIONAL PROVISIONS 

1.129 Transitional procedures for limited examination 
after final rejection and restriction practice. 


AFFIDAVITS OVERCOMING 
REJECTIONS 


1.130 Affidavit or declaration to disqualify commonly 
owned patent or published application as prior art. 


1.131 Affidavit or declaration of prior invention.


1.132 Affidavits or declarations traversing rejections or 
objections.


 INTERVIEWS 

1.133 Interviews. 


 

TIME FOR REPLY BY APPLICANT; 
ABANDONMENT OF APPLICATION


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] 


JOINDER OF INVENTIONS IN ONE 
APPLICATION; RESTRICTION


1.141 Different inventions in one national application. 


1.142 Requirement for restriction. 


1.143 Reconsideration of requirement. 


1.144 Petition from requirement for restriction. 


1.145 Subsequent presentation of claims for different 
invention. 


1.146 Election of species.


 DESIGN PATENTS 

1.151 Rules applicable. 


1.152 Design drawings. 


1.153 Title, description and claim, oath or declaration. 


1.154 Arrangement of application elements in a design 
application. 


1.155 Expedited examination of design applications. 


PLANT PATENTS 

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. 


 REISSUES 

1.171 Application for reissue. 


1.172 Applicants, assignees. 


1.173 Reissue specification, drawings, and amendments. 


1.174 [Reserved] 


1.175 Reissue oath or declaration. 


1.176 Examination of reissue. 


1.177 Issuance of multiple reissue patents. 


1.178 Original patent; continuing duty of applicant. 


1.179 [Reserved]


 PETITIONS AND ACTION BY 
THE DIRECTOR 


1.181 Petition to the Director. 


1.182 Questions not specifically provided for. 


1.183 Suspension of rules. 


1.184 [Reserved] 


 APPEAL TO THE BOARD OF PATENT 
APPEALS AND INTERFERENCES 


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. 


PUBLICATION OF APPLICATIONS 

1.211 Publication of applications. 


1.213 Nonpublication request.


1.215 Patent application publication.


1.217 Publication of a redacted copy of an application.


1.219 Early publication.


1.221 Voluntary publication or republication of patent
application publication. 


 

MISCELLANEOUS PROVISIONS 

1.248 Service of papers; manner of service; proof of 
service in cases other than interferences. 


1.251 Unlocatable file.


PROTESTS AND PUBLIC USE 
PROCEEDINGS


1.291 Protests by the public against pending applications. 


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.


 REVIEW OF PATENT AND 
TRADEMARK OFFICE DECISIONS 
BY COURT 


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 Notice of Allowance. 


1.312 Amendments after allowance. 


1.313 Withdrawal from issue. 


1.314 Issuance of patent. 


1.315 Delivery of patent. 


1.316 Application abandoned for failure to pay issue fee. 


1.317 Lapsed patents; delayed payment of balance of issue 
fee. 


1.318 [Reserved] 


DISCLAIMER 

1.321 Statutory disclaimers, including terminal
disclaimers.


 CORRECTION OF ERRORS IN PATENT 

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. 


1.325 Other mistakes not corrected. 


ARBITRATION AWARDS 

1.331 [Reserved] 


1.332 [Reserved] 


1.333 [Reserved] 


1.334 [Reserved] 


1.335 Filing of notice of arbitration awards


AMENDMENT OF RULES 

1.351 Amendments to rules will be published. 


1.352 [Reserved] 


MAINTENANCE FEES 

1.362 Time for payment of maintenance fees. 


1.363 Fee address for maintenance fee purposes. 


1.366 Submission of maintenance fees. 


1.377 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. 


Subpart C - International Processing Provisions 

GENERAL INFORMATION 

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.


 WHO MAY FILE AN INTERNATIONAL 
APPLICATION 

1.421 Applicant for international application. 


1.422 When the inventor is dead. 


1.423 When the inventor is insane or legally incapacitated. 


1.424 [Reserved]


1.425 [Reserved]


 THE INTERNATIONAL APPLICATION 

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. 


FEES 

1.445 International application filing, processing and
search fees. 


1.446 Refund of international application filing and 
processing fees. 


PRIORITY 

1.451 The priority claim and priority document in an 
international application.


 REPRESENTATION 

1.455 Representation in international applications. 


TRANSMITTAL OF RECORD COPY 

1.461 Procedures for transmittal of record copy to the 
International Bureau. 


TIMING 

1.465 Timing of application processing based on the 
priority date. 


1.468 Delays in meeting time limits.


 AMENDMENTS 

1.471 Corrections and amendments during international 
processing. 


1.472 Changes in person, name, or address of applicants 
and inventors.


 UNITY OF INVENTION 

1.475 Unity of invention before the International 
Searching Authority, the International Preliminary 
Examining Authority and during the national stage. 


1.476 Determination of unity of invention before the 
International Searching Authority. 


1.477 Protest to lack of unity of invention before the 
International Searching Authority. 


INTERNATIONAL PRELIMINARY 
EXAMINATION 


1.480 Demand for international preliminary examination. 


1.481 Payment of international preliminary examination 
fees. 


1.482 International preliminary examination fees. 


1.484 Conduct of international preliminary examination. 


1.485 Amendments by applicant during international 
preliminary examination. 


1.488 Determination of unity of invention before the 
International Preliminary Examining Authority. 


 

1.489 Protest to lack of unity of invention before the 
International Preliminary Examining Authority. 

NATIONAL STAGE 

1.491 National stage commencement and entry. 

1.492 National stage fees. 

1.494 [Reserved] 

1.495 Entering the national stage in the United States of 
America. 

1.496 Examination of international applications in the 
national stage. 

1.497 Oath or declaration under 35 U.S.C. 371(c)(4). 

1.499 Unity of invention during the national stage. 

 Subpart D - Ex Parte Reexamination of Patents 

CITATION OF PRIOR ART 

1.501 Citation of prior art in patent files. 

1.502 Processing of prior art citations during an ex parte 
reexamination proceeding. 

REQUEST FOR REEXAMINATION 

1.510 Request for ex parte reexamination. 

1.515 Determination of the request for ex parte 
reexamination. 

1.520 Ex parte reexamination at the initiative of 
the Director. 

1.525 Order for ex parte reexamination. 

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. 

1.535 Reply by third party requester in ex parte 
reexamination. 

1.540 Consideration of responses in ex parte 
reexamination. 

1.550 Conduct of ex parte reexamination proceedings. 

1.552 Scope of reexamination in ex parte reexamination 
proceedings. 

1.555 Information material to patentability in ex parte 
reexamination and inter partes reexamination 
proceedings. 

1.560 Interviews in ex parte reexamination proceedings. 

1.565 Concurrent office proceedings which include an 
ex parte reexamination proceeding. 

1.570 Issuance of ex parte reexamination certificate 
after ex parte reexamination proceedings.

 Subpart E - [Reserved] 


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). 

1.703 Period of adjustment of patent term due to 
examination delay. 

1.704 Reduction of period of adjustment of patent term. 

1.705 Patent term adjustment determination. 

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. 

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. 

1.760 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. 

1.775 Calculation of patent term extension for a human 
drug, antibiotic drug, or human biological product. 

 

1.776 Calculation of patent term extension for a food 
additive or color additive. 

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 G - Biotechnology Invention Disclosures 

DEPOSIT OF BIOLOGICAL MATERIAL 

1.801 Biological material. 

1.802 Need or opportunity to make a deposit. 

1.803 Acceptable depository. 

1.804 Time of making an original deposit. 

1.805 Replacement or supplement of deposit. 

1.806 Term of deposit. 

1.807 Viability of deposit. 

1.808 Furnishing of samples. 

1.809 Examination procedures. 

APPLICATION DISCLOSURES 
CONTAINING NUCLEOTIDE AND/OR 
AMINO ACID SEQUENCES


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. 

Appendix A - Sample Sequence Listing 

Subpart H - Inter Partes Reexamination 
of Patents that Issued From an Original 
Application Filed in the United States on 
or After November 29, 1999 

PRIOR ART CITATIONS 

1.902 Processing of prior art citations during an 
inter partes reexamination proceeding. 

REQUIREMENTS FOR INTER PARTES
REEXAMINATION PROCEEDINGS


1.903 Service of papers on parties in inter partes 
reexamination. 

1.904 Notice of inter partes reexamination in 
Official Gazette. 

1.905 Submission of papers by the public in inter 
partes reexamination. 

1.906 Scope of reexamination in inter partes 
reexamination proceeding. 

1.907 Inter partes reexamination prohibited. 

1.913 Persons eligible to file request for inter partes 
reexamination. 

1.915 Content of request for inter partes reexamination. 

1.919 Filing date of request for inter partes reexamination. 

1.923 Examiner’s determination on the request for inter 
partes reexamination. 

1.925 Partial refund if request for inter partes 
reexamination is not ordered. 

1.927 Petition to review refusal to order inter 
partes reexamination. 

INTER PARTES REEXAMINATION 
OF PATENTS


1.931 Order for inter partes reexamination. 

INFORMATION DISCLOSURE IN 

INTER PARTES REEXAMINATION 

1.933 Patent owner duty of disclosure in inter partes 
reexamination proceedings. 

 

OFFICE ACTIONS AND RESPONSES 
(BEFORE THE EXAMINER) IN INTER 
PARTES REEXAMINATION 

1.935 Initial Office action usually accompanies order for 
inter partes reexamination. 

1.937 Conduct of inter partes reexamination. 

1.939 Unauthorized papers in inter partes reexamination. 

1.941 Amendments by patent owner in inter partes 
reexamination. 

1.943 Requirements of responses, written comments, and 
briefs in inter partes reexamination. 

1.945 Response to Office action by patent owner in 
inter partes reexamination. 

1.947 Comments by third party requester to patent 
owner’s response in inter partes reexamination. 

1.948 Limitations on submission of prior art by third 
party requester following the order for inter 
partes reexamination. 

1.949 Examiner’s Office action closing prosecution in 
inter partes reexamination. 

1.951 Options after Office action closing prosecution 
in inter partes reexamination. 

1.953 Examiner’s Right of Appeal Notice in inter 
partes reexamination. 

INTERVIEWS PROHIBITED IN INTER 
PARTES REEXAMINATION


1.955 Interviews prohibited in inter partes reexamination 
proceedings. 

EXTENSIONS OF TIME, TERMINATION 
OF PROCEEDINGS, AND PETITIONS 
TO REVIVE IN INTER PARTES
REEXAMINATION


1.956 Patent owner extensions of time in inter partes 
reexamination. 

1.957 Failure to file a timely, appropriate or complete 
response or comment in inter partes reexamination. 

1.958 Petition to revive terminated inter partes 
reexamination or claims terminated for lack of 
patent owner response. 

APPEAL TO THE BOARD OF PATENT 
APPEALS AND INTERFERENCES IN
INTER PARTES REEXAMINATION


1.959 Appeal in inter partes reexamination. 

1.961 [Reserved] 

1.962 [Reserved] 

1.963 [Reserved] 

1.965 [Reserved] 

1.967 [Reserved] 

1.969 [Reserved] 

1.971 [Reserved] 

1.973 [Reserved] 

1.975 [Reserved] 

1.977 [Reserved] 

1.979 Return of Jurisdiction from the Board of Patent 
Appeals and Interferences; termination of 
proceedings. 

1.981 Reopening after a final decision of the Board of 
Patent Appeals and Interferences. 

APPEAL TO THE
UNITED STATES COURT OF APPEALS 
FOR THE FEDERAL CIRCUIT IN
INTER PARTES REEXAMINATION


1.983 Appeal to the United States Court of Appeals for the 
Federal Circuit in inter partes reexamination. 

CONCURRENT PROCEEDINGS 
INVOLVING SAME PATENT IN 
INTER PARTES REEXAMINATION


1.985 Notification of prior or concurrent proceedings 
in inter partes reexamination. 

1.987 Suspension of inter partes reexamination proceeding 
due to litigation. 

1.989 Merger of concurrent reexamination proceedings. 

1.991 Merger of concurrent reissue application and inter 
partes reexamination proceeding. 

1.993 Suspension of concurrent interference and inter 
partes reexamination proceeding. 

1.995 Third party requester’s participation rights preserved 
in merged proceeding. 

 

REEXAMINATION CERTIFICATE IN
INTER PARTES REEXAMINATION


1.997 Issuance of inter partes reexamination certificate. 

SUBCHAPTER A – GENERAL 

PART 1 — RULES OF PRACTICE IN 
PATENT CASES


Subpart A — General Provisions


GENERAL INFORMATION AND 
CORRESPONDENCE


§ 1.1 Addresses for non-trademark correspondence with the United States Patent and 
Trademark Office. 

(a) In general. Except as provided in paragraphs 
(a)(3)(i), (a)(3)(ii) and (d)(1) of this section, 
all correspondence intended for the United States 
Patent and Trademark Office must be addressed to 
either “Director of the United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 
22313-1450” or to specific areas within the Office as 
set out in paragraphs (a)(1), and (a)(3)(iii) of this section. 
When appropriate, correspondence should also 
be marked for the attention of a particular office or 
individual. 
(1) Patent correspondence. 


(i) In general. All correspondence concerning 
patent matters processed by organizations 
reporting to the Commissioner for Patents should be 
addressed to: Commissioner for Patents, PO Box 
1450, Alexandria, Virginia 22313-1450. 
(ii) Board of Patent Appeals and Interferences. See § 41.10 of this title. Notices of appeal, 
appeal briefs, reply briefs, requests for oral hearing, as 
well as all other correspondence in an application or a 
patent involved in an appeal to the Board for which an 
address is not otherwise specified, should be 
addressed as set out in paragraph (a)(1)(i) of this section. 
(2) [Reserved] 


(3) Office of General Counsel correspondence.— 


(i) Litigation and service. Correspondence 
relating to pending litigation or otherwise within the 
scope of part 104 of this title shall be addressed as 
provided in § 104.2. 
(ii) Disciplinary proceedings. Correspondence 
to counsel for the Director of the Office of 
Enrollment and Discipline relating to disciplinary proceedings 
pending before an Administrative Law 
Judge or the Director shall be mailed to: Office of the 
Solicitor, PO Box 16116, Arlington, Virginia 22215. 


(iii) Solicitor, in general. Correspondence 
to the Office of the Solicitor not otherwise provided 
for shall be addressed to: Mail Stop 8, Director 
of the United States Patent and Trademark Office, PO 
Box 1450, Alexandria, Virginia 22313-1450. 

(iv) General Counsel. Correspondence 
to the Office of the General Counsel not otherwise 
provided for, including correspondence to the General 
Counsel relating to disciplinary proceedings, shall be 
addressed to: General Counsel, United States Patent 
and Trademark Office, PO Box 1450, Alexandria, 
Virginia 22313-1450. 
(v) Improper correspondence. Correspondence 
improperly addressed to a Post Office Box 
specified in paragraphs (a)(3)(i) and (a)(3)(ii) of this 
section will not be filed elsewhere in the United States 
Patent and Trademark Office, and may be returned. 
(4) Office of Public Records correspondence. 


(i) Assignments. All patent-related documents 
submitted by mail to be recorded by Assignment 
Services Division, except for documents filed 
together with a new application, should be addressed 
to: Mail Stop Assignment Recordation Services, 
Director of the United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 223131450. 
See § 3.27. 
(ii) Documents. All requests for certified 
or uncertified copies of patent documents should be 
addressed to: Mail Stop Document Services, Director 
of the United States Patent and Trademark Office, 


P.O. Box 1450, Alexandria, Virginia 22313-1450. 

(5) Office of Enrollment and Discipline correspondence. All correspondence directed to the 
Office of Enrollment and Discipline concerning 
enrollment, registration, and investigation matters 
should be addressed to Mail Stop OED, Director of 
the United States Patent and Trademark Office, P.O. 
Box 1450, Alexandria, Virginia 22313-1450. 

 

(b) Patent Cooperation Treaty. Letters and 
other communications relating to international applications 
during the international stage and prior to the 
assignment of a national serial number should be 
additionally marked “Mail Stop PCT.” 
(c) For reexamination proceedings. 


(1) Requests for ex parte reexamination 
(original request papers only) should be additionally 
marked “Mail Stop Ex parte Reexam.” 
(2) Requests for inter partes reexamination 
(original request papers) and all subsequent inter 
partes reexamination correspondence filed in the 
Office, other than correspondence to the Office of the 
General Counsel pursuant to § 1.1(a)(3) and § 
1.302(c), should be additionally marked “Mail Stop 
Inter partes Reexam.” 
(d) Maintenance fee correspondence.— 


(1) Payments. Payments of maintenance fees 
in patents not submitted electronically should be 
mailed to: United States Patent and Trademark Office, 


P.O. Box 371611, Pittsburgh, Pennsylvania 152501611. 


(2) Other correspondence. Correspondence 
related to maintenance fees other than payments of 
maintenance fees in patents is not to be mailed to P.O. 
Box 371611, Pittsburgh, Pennsylvania 15250-1611, 
but must be mailed to: Mail Stop M Correspondence, 
Director of the United States Patent and Trademark 
Office, P.O. Box 1450, Alexandria, Virginia 223131450. 
(e) Patent term extension. All applications for 
extension of patent term under 35 U.S.C. 156 and any 
communications relating thereto intended for the 
United States Patent and Trademark Office should be 
additionally marked “Mail Stop Patent Ext.” When 
appropriate, the communication should also be 
marked to the attention of a particular individual, as 
where a decision has been rendered. 


(f) [Reserved] 

[46 FR 29181, May 29, 1981; para. (d) added, 49 FR 
34724, Aug. 31, 1984, effective Nov. 1, 1984; para. (e), 
49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. 

(f) added, 52 FR 9394, Mar. 24, 1987; para. (g) added, 
53 FR 16413, May 9,1988; para. (h) added, 54 FR 37588, 
Sept. 11, 1989, effective Nov. 16, 1989; para. (i) added, 
60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. 
(a) revised and para. (g) removed and reserved, 61 FR 
56439, Nov. 1, 1996, effective Dec. 2, 1996; para. (b) 
revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 


1999; paras. (a) and (d) revised, 66 FR 39447, July 31, 
2001, effective Oct. 1, 2001; revised, 68 FR 14332, Mar. 
25, 2003, effective May 1, 2003; para (a)(2) corrected, 
68 FR 19371, Apr. 21, 2003, effective May 1, 2003; section 
heading, para. (a) introductory text and para. (a)(4) revised, 
para. (a)(2) removed and reserved, and note following para. 

(f) removed, 68 FR 48286, Aug. 13, 2003, effective Sept. 
12, 2003; para. (c) revised, 68 FR 70996, Dec. 22, 2003, 
effective Jan. 21, 2004; para. (a)(4)(i) revised and para. (f) 
removed and reserved, 69 FR 29865, May 26, 2004, effective 
June 25, 2004; para. (a) introductory text revised and 
para. (a)(5) added, 69 FR 35427, June 24, 2004, effective 
July 26, 2004; para. (a)(1)(ii) revised and para. (a)(1)(iii) 
removed, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 
2004] 

§ 1.2 Business to be transacted in writing. 

All business with the Patent and Trademark Office 
should be transacted in writing. The personal attendance 
of applicants or their attorneys or agents at the 
Patent and Trademark Office is unnecessary. The 
action of the Patent and Trademark Office will be 
based exclusively on the written record in the Office. 
No attention will be paid to any alleged oral promise, 
stipulation, or understanding in relation to which there 
is disagreement or doubt. 

§ 1.3 Business to be conducted with decorum 
and courtesy. 

Applicants and their attorneys or agents are 
required to conduct their business with the United 
States Patent and Trademark Office with decorum and 
courtesy. Papers presented in violation of this requirement 
will be submitted to the Director and will not be 
entered. A notice of the non-entry of the paper will be 
provided. Complaints against examiners and other 
employees must be made in correspondence separate 
from other papers. 

[Amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 
2, 1996; revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; revised, 68 FR 38611, June 30, 2003, effective 
July 30, 2003] 

§ 1.4 Nature of correspondence and signature 
requirements. 

(a) Correspondence with the Patent and Trademark 
Office comprises: 

 

(1) Correspondence relating to services and 
facilities of the Office, such as general inquiries, 
requests for publications supplied by the Office, 
orders for printed copies of patents, orders for copies 
of records, transmission of assignments for recording, 
and the like, and 
(2) Correspondence in and relating to a particular 
application or other proceeding in the Office. 
See particularly the rules relating to the filing, processing, 
or other proceedings of national applications 
in subpart B, §§ 1.31 to 1.378; of international applications 
in subpart C, §§ 1.401 to 1.499; of ex parte 
reexaminations of patents in subpart D, §§ 1.501 to 
1.570; of extension of patent term in subpart F, §§ 


1.710 to 1.785; of inter partes reexaminations of patents 
in subpart H, §§ 1.902 to 1.997; and of the Board 
of Patent Appeals and Interferences in part 41 of this 
title. 

(b) Since each file must be complete in itself, a 
separate copy of every paper to be filed in a patent, 
patent file, or other proceeding must be furnished for 
each file to which the paper pertains, even though the 
contents of the papers filed in two or more files may 
be identical. The filing of duplicate copies of correspondence 
in the file of an application, patent, or 
other proceeding should be avoided, except in situations 
in which the Office requires the filing of duplicate 
copies. The Office may dispose of duplicate 
copies of correspondence in the file of an application, 
patent, or other proceeding. 
(c) Since different matters may be considered 
by different branches or sections of the United States 
Patent and Trademark Office, each distinct subject, 
inquiry or order must be contained in a separate paper 
to avoid confusion and delay in answering papers 
dealing with different subjects. 
(d)(1) Handwritten signature. Each piece of 
correspondence, except as provided in paragraphs 
(d)(2), (d)(3), (e) and (f) of this section, filed in an 
application, patent file, or other proceeding in the 
Office which requires a person’s signature, must: 


(i) Be an original, that is, have an original 
handwritten signature personally signed, in permanent 
dark ink or its equivalent, by that person; or 
(ii) Be a direct or indirect copy, such as a 
photocopy or facsimile transmission (§ 1.6(d)), of an 
original. In the event that a copy of the original is 
filed, the original should be retained as evidence of 


authenticity. If a question of authenticity arises, the 
Office may require submission of the original. 

(2) S-signature. An S-signature is a signature 
inserted between forward slash marks, but not a 
handwritten signature as defined by § 1.4(d)(1). An S-
signature includes any signature made by electronic or 
mechanical means, and any other mode of making or 
applying a signature not covered by either a handwritten 
signature of § 1.4(d)(1) or an Office Electronic 
Filing System (EFS) character coded signature of 
§ 1.4(d)(3). Correspondence being filed in the Office 
in paper, by facsimile transmission as provided in 
§ 1.6(d), or via the Office Electronic Filing System as 
an EFS Tag(ged) Image File Format (TIFF) attachment, 
for a patent application, patent, or a reexamination 
proceeding may be S-signature signed instead of 
being personally signed (i.e., with a handwritten signature) 
as provided for in paragraph (d)(1) of this section. 
The requirements for an S-signature under this 
paragraph (d)(2) are as follows. 
(i) The S-signature must consist only of 
letters, or Arabic numerals, or both, with appropriate 
spaces and commas, periods, apostrophes, or 
hyphens for punctuation, and the person signing the 
correspondence must insert his or her own S-signature 
with a first single forward slash mark before, 
and a second single forward slash mark after, the S-
signature (e.g., /Dr. James T. Jones, Jr./); and 
(ii) A patent practitioner (§ 1.32(a)(1)), 
signing pursuant to §§ 1.33(b)(1) or 1.33(b)(2), must 
supply his/her registration number either as part of the 
S-signature, or immediately below or adjacent to the 
S-signature. The number (#) character may be used 
only as part of the S-signature when appearing before 
a practitioner’s registration number; otherwise the 
number character may not be used in an S-signature. 
(iii) The signer’s name must be: 


(A) Presented in printed or typed form 
preferably immediately below or adjacent the S-signature, 
and 
(B) Reasonably specific enough so that 
the identity of the signer can be readily recognized. 
(3) EFS character coded signature. Correspondence 
in character coded form being filed via 
the Office Electronic Filing System for a patent 
application or patent may be signed electronically. 
The electronic signature must consist only of letters 
of the English alphabet, or Arabic numerals, or both, 


 

with appropriate spaces and commas, periods, apostrophes, 
or hyphens for punctuation. The person 
signing the correspondence must personally insert 
the electronic signature with a first single forward 
slash mark before, and a second single forward slash 
mark after, the electronic signature (e.g., /Dr. James 

T. Jones, Jr./). 

(4) Certifications. (i) Section 10.18 certifications: The presentation to the Office (whether by signing, 
filing, submitting, or later advocating) of any 
paper by a party, whether a practitioner or non-practitioner, 
constitutes a certification under § 10.18(b) of 
this chapter. Violations of § 10.18(b)(2) of this chapter 
by a party, whether a practitioner or non-practitioner, 
may result in the imposition of sanctions under § 
10.18(c) of this chapter. Any practitioner violating § 
10.18(b) of this chapter may also be subject to disciplinary 
action. See §§ 10.18(d) and 10.23(c)(15) of 
this chapter. 
(ii) Certifications as to the signature: (A) 
Of another: A person submitting a document signed 
by another under paragraphs (d)(2) or (d)(3) of this 
section is obligated to have a reasonable basis to 
believe that the person whose signature is present on 
the document was actually inserted by that person, 
and should retain evidence of authenticity of the signature. 
(B) Self certification: The person inserting 
a signature under paragraphs (d)(2) or (d)(3) of 
this section in a document submitted to the Office certifies 
that the inserted signature appearing in the document 
is his or her own signature. 
(C) Sanctions: Violations of the certifications 
as to the signature of another or a person’s 
own signature, set forth in paragraphs (d)(4)(ii)(A) 
and (B) of this section, may result in the imposition of 
sanctions under § 10.18(c) and (d) of this chapter. 
(e) Correspondence requiring a person’s signature 
and relating to registration practice before the 
Patent and Trademark Office in patent cases, enrollment 
and disciplinary investigations, or disciplinary 
proceedings must be submitted with an original hand 
written signature personally signed in permanent dark 
ink or its equivalent by that person. 
(f) When a document that is required by statute 
to be certified must be filed, a copy, including a pho


tocopy or facsimile transmission, of the certification 
is not acceptable. 

(g) An applicant who has not made of record a 
registered attorney or agent may be required to state 
whether assistance was received in the preparation or 
prosecution of the patent application, for which any 
compensation or consideration was given or charged, 
and if so, to disclose the name or names of the person 
or persons providing such assistance. Assistance 
includes the preparation for the applicant of the specification 
and amendments or other papers to be filed in 
the Patent and Trademark Office, as well as other 
assistance in such matters, but does not include 
merely making drawings by draftsmen or stenographic 
services in typing papers. 
(h) Ratification/confirmation/evidence of authenticity: The Office may require ratification, confirmation 
(which includes submission of a duplicate 
document but with a proper signature), or evidence of 
authenticity of a signature, such as when the Office 
has reasonable doubt as to the authenticity (veracity) 
of the signature, e.g., where there are variations of a 
signature, or where the signature and the typed or 
printed name, do not clearly identify the person signing. 


[24 FR 10332, Dec. 22, 1959; 43 FR 20461, May 11, 
1978; para. (a), 48 FR 2707, Jan. 20, 1983, effective Feb. 
27, 1983; para. (a), 49 FR 48416, Dec. 12, 1984, effective 
Feb. 11, 1985; para. (a)(2), 53 FR 47807, Nov. 28, 1988, 
effective Jan. 1, 1989; paras. (d)-(f) added, 58 FR 54494, 
Oct. 22, 1993, effective Nov. 22, 1993; para. (d) revised 
& para. (g) added, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; paras. (a)(2) and (d)(1) revised, 64 FR 48900, 
Sept. 8, 1999, effective Oct. 30, 1999; paras. (b) and (c) 
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; para. (a)(2) revised, 65 FR 76756, Dec. 7, 2000, 
effective Feb. 5, 2001; para. (d)(1)(iii)(A) amended, 67 FR 
79520, Dec. 30, 2002, effective Dec. 30, 2002; para. 
(d)(1)(iii)(B) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; para. (d)(1)(iii) removed and reserved, 
paras. (a)(1), (a)(2), (b), (d)(1), introductory text, and 
(d)(1)(ii) revised, 68 FR 48286, Aug. 13, 2003, effective 
Sept. 12, 2003; para. (a)(2) revised, 69 FR 49959, Aug. 12, 
2004, effective Sept. 13, 2004; paras. (d) and (e) revised 
and para. (h) added, 69 FR 56481, Sept. 21, 2004, effective 
Sept. 21, 2004; para. (d)(2) introductory text and paragraph 
(d)(2)(ii) revised, 70 FR 56119, Sept. 26, 2005, effective 
Nov. 25, 2005] 

 

§ 1.5 Identification of patent, patent application, or patent-related proceeding. 

(a) No correspondence relating to an application 
should be filed prior to receipt of the application 
number from the Patent and Trademark Office. When 
a letter directed to the Patent and Trademark Office 
concerns a previously filed application for a patent, it 
must identify on the top page in a conspicuous location, 
the application number (consisting of the series 
code and the serial number; e.g., 07/123,456), or the 
serial number and filing date assigned to that application 
by the Patent and Trademark Office, or the international 
application number of the international 
application. Any correspondence not containing such 
identification will be returned to the sender where a 
return address is available. The returned correspondence 
will be accompanied with a cover letter which 
will indicate to the sender that if the returned correspondence 
is resubmitted to the Patent and Trademark 
Office within two weeks of the mail date on the cover 
letter, the original date of receipt of the correspondence 
will be considered by the Patent and Trademark 
Office as the date of receipt of the correspondence. 
Applicants may use either the Certificate of Mailing 
or Transmission procedure under § 1.8 or the Express 
Mail procedure under § 1.10 for resubmissions of 
returned correspondence if they desire to have the 
benefit of the date of deposit in the United States 
Postal Service. If the returned correspondence is not 
resubmitted within the two-week period, the date of 
receipt of the resubmission will be considered to be 
the date of receipt of the correspondence. The two-
week period to resubmit the returned correspondence 
will not be extended. In addition to the application 
number, all letters directed to the Patent and Trademark 
Office concerning applications for patent should 
also state the name of the applicant, the title of the 
invention, the date of filing the same, and, if known, 
the group art unit or other unit within the Patent and 
Trademark Office responsible for considering the letter 
and the name of the examiner or other person to 
which it has been assigned. 
(b) When the letter concerns a patent other than 
for purposes of paying a maintenance fee, it should 
state the number and date of issue of the patent, the 
name of the patentee, and the title of the invention. 
For letters concerning payment of a maintenance fee 
in a patent, see the provisions of § 1.366(c). 


(c) [Reserved] 

(d) A letter relating to a reexamination proceeding 
should identify it as such by the number of the 
patent undergoing reexamination, the reexamination 
request control number assigned to such proceeding, 
and, if known, the group art unit and name of the 
examiner to which it been assigned. 
(e) [Reserved] 


(f) When a paper concerns a provisional application, 
it should identify the application as such and 
include the application number. 


[24 FR 10332, Dec. 22, 1959; 46 FR 29181, May 29, 
1981; para. (a), 49 FR 552, Jan. 4, 1984, effective Apr. 1, 
1984; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 
11, 1985; paras. (a) & (b), 53 FR 47807, Nov. 28, 1988, 
effective Jan. 1, 1989; para. (a) revised, 58 FR 54494, Oct. 
22, 1993, effective Nov. 22, 1993; para. (f) added, 61 FR 
42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (a) 
amended, 61 FR 56439, Nov. 1, 1996, effective Dec. 2, 
1996; para. (c) revised, 64 FR 48900, Sept. 8, 1999, effective 
Oct. 30, 1999; section heading revised, para. (c) 
removed and reserved, 68 FR 48286, Aug. 13, 2003, effective 
Sept. 12, 2003; para. (e) removed and reserved, 69 FR 
49959, Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.6 Receipt of correspondence. 

(a) Date of receipt and Express Mail date of 
deposit. Correspondence received in the Patent and 
Trademark Office is stamped with the date of receipt 
except as follows: 
(1) The Patent and Trademark Office is not 
open for the filing of correspondence on any day that 
is a Saturday, Sunday, or Federal holiday within the 
District of Columbia. Except for correspondence 
transmitted by facsimile under paragraph (a)(3) of this 
section, or filed electronically under paragraph (a)(4) 
of this section, no correspondence is received in the 
Office on Saturdays, Sundays, or Federal holidays 
within the District of Columbia. 
(2) Correspondence filed in accordance with 
§ 1.10 will be stamped with the date of deposit as 
“Express Mail” with the United States Postal Service. 
(3) Correspondence transmitted by facsimile 
to the Patent and Trademark Office will be stamped 
with the date on which the complete transmission is 
received in the Patent and Trademark Office unless 
that date is a Saturday, Sunday, or Federal holiday 
within the District of Columbia, in which case the 


 

date stamped will be the next succeeding day which is 
not a Saturday, Sunday, or Federal holiday within the 
District of Columbia. 

(4) [Reserved] 

(b) [Reserved] 

(c) Correspondence delivered by hand. In addition 
to being mailed, correspondence may be delivered 
by hand during hours the Office is open to 
receive correspondence. 
(d) Facsimile transmission. Except in the cases 
enumerated below, correspondence, including authorizations 
to charge a deposit account, may be transmitted 
by facsimile. The receipt date accorded to the 
correspondence will be the date on which the complete 
transmission is received in the United States 
Patent and Trademark Office, unless that date is a Saturday, 
Sunday, or Federal holiday within the District 
of Columbia. See § 1.6(a)(3). To facilitate proper processing, 
each transmission session should be limited 
to correspondence to be filed in a single application or 
other proceeding before the United States Patent and 
Trademark Office. The application number of a patent 
application, the control number of a reexamination 
proceeding, the interference number of an interference 
proceeding, or the patent number of a patent 
should be entered as a part of the sender’s identification 
on a facsimile cover sheet. Facsimile transmissions 
are not permitted and, if submitted, will not be 
accorded a date of receipt in the following situations: 
(1) Correspondence as specified in § 1.4(e), 
requiring an original signature; 
(2) Certified documents as specified in 
§ 1.4(f); 
(3) Correspondence which cannot receive the 
benefit of the certificate of mailing or transmission as 
specified in § 1.8(a)(2)(i)(A) through (D) and (F), and 
§ 1.8(a)(2)(iii)(A), except that a continued prosecution 
application under § 1.53(d) may be transmitted to 
the Office by facsimile; 


(4) Color drawings submitted under §§ 1.81, 

1.83 through 1.85, 1.152, 1.165, 1.173, or 1.437; 

(5) A request for reexamination under 
§ 1.510 or § 1.913; 
(6) Correspondence to be filed in a patent 
application subject to a secrecy order under §§ 5.1 
through 5.5 of this chapter and directly related to the 
secrecy order content of the application; 


(7) [Reserved] 

(8) [Reserved] 

(9) In contested cases before the Board of 
Patent Appeals and Interferences except as the Board 
may expressly authorize. 
(e) [Reserved] 


(f) Facsimile transmission of a patent application under § 1.53(d). In the event that the Office has 
no evidence of receipt of an application under 
§ 1.53(d) (a continued prosecution application) transmitted 
to the Office by facsimile transmission, the 
party who transmitted the application under § 1.53(d) 
may petition the Director to accord the application 
under § 1.53(d) a filing date as of the date the application 
under § 1.53(d) is shown to have been transmitted 
to and received in the Office, 
(1) Provided that the party who transmitted 
such application under § 1.53(d): 
(i) Informs the Office of the previous 
transmission of the application under § 1.53(d) 
promptly after becoming aware that the Office has no 
evidence of receipt of the application under § 1.53(d); 
(ii) Supplies an additional copy of the previously 
transmitted application under § 1.53(d); and 


(iii) Includes a statement which attests on a 
personal knowledge basis or to the satisfaction of the 
Director to the previous transmission of the application 
under § 1.53(d) and is accompanied by a copy of 
the sending unit’s report confirming transmission of 
the application under § 1.53(d) or evidence that came 
into being after the complete transmission and within 
one business day of the complete transmission of the 
application under § 1.53(d). 

(2) The Office may require additional evidence 
to determine if the application under § 1.53(d) 
was transmitted to and received in the Office on the 
date in question. 

[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; 
48 FR 4285, Jan. 31, 1983; para. (a), 49 FR 552, Jan. 4, 
1984, effective Apr. 1, 1984; revised, 58 FR 54494, Oct. 
22, 1993, effective Nov. 22, 1993; para. (a) amended, 61 
FR 56439, Nov. 1, 1996, effective Dec. 2, 1996; paras. 
(d)(3), (d)(6) & (e) amended, para. (f) added, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997; para (a)(1) revised 
and para. (a)(4) added, 64 FR 48900, Sept. 8, 1999, effective 
Oct. 30, 1999; para.(d)(9) revised, 65 FR 54604, Sept. 
8, 2000, effective Nov. 7, 2000; para. (d)(5) revised, 65 FR 
76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (b) 
removed and reserved and paras. (e), (f) & (f)(1)(iii) 
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 

 

2003; paras. (a)(4), (d)(7) and (d)(8) removed and reserved, 
and paras. (d), introductory text, (d)(3), and (d)(4) revised, 
68 FR 48286, Aug. 13, 2003, effective Sept. 12, 2003; para. 
(d)(9) revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004; para. (d)(4) revised and para. (e) removed and 
reserved, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 
2004] 

§ 1.7 Times for taking action; Expiration on 
Saturday, Sunday or Federal holiday. 

(a) Whenever periods of time are specified in 
this part in days, calendar days are intended. When 
the day, or the last day fixed by statute or by or under 
this part for taking any action or paying any fee in the 
United States Patent and Trademark Office falls on 
Saturday, Sunday, or on a Federal holiday within the 
District of Columbia, the action may be taken, or the 
fee paid, on the next succeeding business day which 
is not a Saturday, Sunday, or a Federal holiday. See 
§ 1.304 for time for appeal or for commencing civil 
action. 
(b) If the day that is twelve months after the filing 
date of a provisional application under 35 U.S.C. 
111(b) and § 1.53(c) falls on Saturday, Sunday, or on a 
Federal holiday within the District of Columbia, the 
period of pendency shall be extended to the next succeeding 
secular or business day which is not a Saturday, 
Sunday, or a Federal holiday. 


[48 FR 2707, Jan. 20, 1983, effective Feb. 27, 1983; 
corrected 48 FR 4285, Jan. 31, 1983; revised, 65 FR 14865, 
Mar. 20, 2000, effective May 29, 2000 (adopted as final, 
65 FR 50092, Aug. 16, 2000)] 

§ 1.8 Certificate of mailing or transmission. 

(a) Except in the situations enumerated in paragraph 
(a)(2) of this section or as otherwise expressly 
excluded in this chapter, correspondence required to 
be filed in the U.S. Patent and Trademark Office 
within a set period of time will be considered as being 
timely filed if the procedure described in this section 
is followed. The actual date of receipt will be used for 
all other purposes. 
(1) Correspondence will be considered as 
being timely filed if: 
(i) The correspondence is mailed or transmitted 
prior to expiration of the set period of time by 
being: 


(A) Addressed as set out in § 1.1(a) and 
deposited with the U.S. Postal Service with sufficient 
postage as first class mail; or 
(B) Transmitted by facsimile to the 
Patent and Trademark Office in accordance with 
§ 1.6(d); and 
(ii) The correspondence includes a certificate 
for each piece of correspondence stating the date 
of deposit or transmission. The person signing the certificate 
should have reasonable basis to expect that the 
correspondence would be mailed or transmitted on or 
before the date indicated. 
(2) The procedure described in paragraph 
(a)(1) of this section does not apply to, and no benefit 
will be given to a Certificate of Mailing or Transmission 
on, the following: 
(i) Relative to Patents and Patent Applications— 
(A) The filing of a national patent application 
specification and drawing or other correspondence 
for the purpose of obtaining an application 
filing date, including a request for a continued prosecution 
application under § 1.53(d); 
(B) [Reserved] 


(C) Papers filed in contested cases 
before the Board of Patent Appeals and Interferences, 
which are governed by § 41.106 (f) of this title; 
(D) The filing of an international application 
for patent; 
(E) The filing of correspondence in an 
international application before the U.S. Receiving 
Office, the U.S. International Searching Authority, or 
the U.S. International Preliminary Examining Authority; 
(F) The filing of a copy of the international 
application and the basic national fee necessary 
to enter the national stage, as specified in § 1.495(b). 
(ii) [Reserved] 
(iii) Relative to Disciplinary Proceedings— 


(A) Correspondence filed in connection 
with a disciplinary proceeding under part 10 of this 
chapter. 
(B) [Reserved] 


(b) In the event that correspondence is considered 
timely filed by being mailed or transmitted in 
accordance with paragraph (a) of this section, but not 
received in the U.S. Patent and Trademark Office 
after a reasonable amount of time has elapsed from 


 

the time of mailing or transmitting of the correspondence, 
or after the application is held to be abandoned, 
or after the proceeding is dismissed, 
terminated, or decided with prejudice, the correspondence 
will be considered timely if the party who forwarded 
such correspondence: 

(1) Informs the Office of the previous mailing 
or transmission of the correspondence promptly 
after becoming aware that the Office has no evidence 
of receipt of the correspondence; 
(2) Supplies an additional copy of the previously 
mailed or transmitted correspondence and certificate; 
and 
(3) Includes a statement which attests on a 
personal knowledge basis or to the satisfaction of the 
Director to the previous timely mailing or transmission. 
If the correspondence was sent by facsimile 
transmission, a copy of the sending unit’s report confirming 
transmission may be used to support this 
statement. 
(c) The Office may require additional evidence 
to determine if the correspondence was timely filed. 


[41 FR 43721, Oct. 4, 1976; 43 FR 20461, May 11, 
1978; para. (a). 47 FR 47381, Oct. 26, 1982, effective Oct. 
26, 1982; para. (a),48 FR 2708, Jan. 20, 1983; para. (a) 
49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. 
(a), 49 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; 
52 FR 20046, May 28, 1987; subparas. (a)(2)(xiv)-(xvi), 
54 FR 37588, Sept. 11, 1989, effective Nov. 16, 1989; 
revised, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 
1993; para. (a) revised, 61 FR 56439, Nov. 1, 1996, effective 
Dec. 2, 1996; paras. (a)(2)(i)(A) & (b) revised; 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. 
(a)(2)(i)(F) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 
1, 2002; para. (b)(3) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; para. (a)(2)(ii) removed and 
reserved, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 
2003; para. (a)(2)(i)(B) removed and reserved and para. 
(a)(2)(i)(C) revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004; paras. (a) and (b) revised, 69 FR 56481, 
Sept. 21, 2004, effective Oct. 21, 2004] 

§ 1.9 Definitions. 

(a)(1) A national application as used in this 
chapter means a U.S. application for patent which was 
either filed in the Office under 35 U.S.C. 111, or 
which entered the national stage from an international 
application after compliance with 35 U.S.C. 371. 

(2) A provisional application as used in this 
chapter means a U.S. national application for patent 
filed in the Office under 35 U.S.C. 111(b). 
(3) A nonprovisional application as used in 
this chapter means a U.S. national application for 
patent which was either filed in the Office under 
35 U.S.C. 111(a), or which entered the national stage 
from an international application after compliance 
with 35 U.S.C. 371. 
(b) An international application as used in this 
chapter means an international application for patent 
filed under the Patent Cooperation Treaty prior to 
entering national processing at the Designated Office 
stage. 
(c) A published application as used in this 
chapter means an application for patent which has 
been published under 35 U.S.C. 122(b). 
and Interferences proceedings, see part 41 of this title. 


(h) A Federal holiday within the District of 
Columbia as used in this chapter means any day, 
except Saturdays and Sundays, when the Patent and 
Trademark Office is officially closed for business for 
the entire day. 
(i) National security classified as used in this 
chapter means specifically authorized under criteria 
established by an Act of Congress or Executive Order 
to be kept secret in the interest of national defense or 
foreign policy and, in fact, properly classified pursuant 
to such Act of Congress or Executive Order. 
(j) Director as used in this chapter, except for 
part 10 of this section, means the Under Secretary of 
Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office. 
(k) Paper as used in this chapter means a document 
that may exist in electronic form, or in physical 
form, and therefore does not necessarily imply physical 
sheets of paper. 


(d) [Reserved] 
(e) [Reserved] 
(f) [Reserved] 
(g) For definitions in Board of Patent Appeals 

[43 FR 20461, May 11, 1978; 47 FR 40139, Sept. 10, 
1982, effective Oct. 1, 1982; 47 FR 43275, Sept. 30, 1982, 
effective Oct. 1, 1982; para. (d), 49 FR 34724, Aug. 31, 
1984, effective Nov. 1, 1984; para. (g), 49 FR 48416, Dec. 
12, 1984, effective Feb. 11, 1985; para. (d) revised, 58 FR 
54504, Oct. 22, 1993, effective Jan. 3, 1994; para. (a) 
amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 

 

1995; para. (h) added, 61 FR 56439, Nov. 1, 1996, effective 
Dec. 2, 1996; paras. (d) & (f) revised, 62 FR 53131, Oct. 
10, 1997, effective Dec. 1, 1997; paras. (c)-(f) removed and 
reserved and para. (i) added, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000; para. (c) revised, 65 FR 57024, 
Sept. 20, 2000, effective Nov. 29, 2000; para. (j) added, 
68 FR 14332, Mar. 25, 2003, effective May 1, 2003; para. 

(k) added, 68 FR 38611, June 30, 2003, effective July 30, 
2003; para. (g) revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004] 

§ 1.10 Filing of correspondence by “Express 
Mail.” 

(a)(1)Any correspondence received by the U.S. 
Patent and Trademark Office (USPTO) that was delivered 
by the “Express Mail Post Office to Addressee” 
service of the United States Postal Service (USPS) 
will be considered filed with the USPTO on the date 
of deposit with the USPS. 

(2) The date of deposit with USPS is shown 
by the “date in” on the “Express Mail” label or other 
official USPS notation. If the USPS deposit date cannot 
be determined, the correspondence will be 
accorded the USPTO receipt date as the filing date. 
See § 1.6(a). 
(b) Correspondence should be deposited 
directly with an employee of the USPS to ensure that 
the person depositing the correspondence receives a 
legible copy of the “Express Mail” mailing label with 
the “date-in” clearly marked. Persons dealing indirectly 
with the employees of the USPS (such as by 
deposit in an “Express Mail” drop box) do so at the 
risk of not receiving a copy of the “Express Mail” 
mailing label with the desired “date-in” clearly 
marked. The paper(s) or fee(s) that constitute the correspondence 
should also include the “Express Mail” 
mailing label number thereon. See paragraphs (c), (d) 
and (e) of this section. 
(c) Any person filing correspondence under this 
section that was received by the Office and delivered 
by the “Express Mail Post Office to Addressee” service 
of the USPS, who can show that there is a discrepancy 
between the filing date accorded by the 
Office to the correspondence and the date of deposit 
as shown by the “date-in” on the “Express Mail” 
mailing label or other official USPS notation, may 
petition the Director to accord the correspondence a 
filing date as of the “date-in” on the “Express Mail” 


mailing label or other official USPS notation, provided 
that: 

(1) The petition is filed promptly after the 
person becomes aware that the Office has accorded, 
or will accord, a filing date other than the USPS 
deposit date; 
(2) The number of the “Express Mail” mailing 
label was placed on the paper(s) or fee(s) that constitute 
the correspondence prior to the original 
mailing by “Express Mail;” and 
(3) The petition includes a true copy of the 
“Express Mail” mailing label showing the “date-in,” 
and of any other official notation by the USPS relied 
upon to show the date of deposit. 
(d) Any person filing correspondence under this 
section that was received by the Office and delivered 
by the “Express Mail Post Office to Addressee” service 
of the USPS, who can show that the “date-in” on 
the “Express Mail” mailing label or other official 
notation entered by the USPS was incorrectly entered 
or omitted by the USPS, may petition the Director to 
accord the correspondence a filing date as of the date 
the correspondence is shown to have been deposited 
with the USPS, provided that: 
(1) The petition is filed promptly after the 
person becomes aware that the Office has accorded, 
or will accord, a filing date based upon an incorrect 
entry by the USPS; 
(2) The number of the “Express Mail” mailing 
label was placed on the paper(s) or fee(s) that constitute 
the correspondence prior to the original 
mailing by “Express Mail”; and 
(3) The petition includes a showing which 
establishes, to the satisfaction of the Director, that the 
requested filing date was the date the correspondence 
was deposited in the “Express Mail Post Office to 
Addressee” service prior to the last scheduled pickup 
for that day. Any showing pursuant to this paragraph 
must be corroborated by evidence from the USPS or 
that came into being after deposit and within one business 
day of the deposit of the correspondence in the 
“Express Mail Post Office to Addressee” service of 
the USPS. 
(e) Any person mailing correspondence 
addressed as set out in § 1.1(a) to the Office with sufficient 
postage utilizing the “Express Mail Post Office 
to Addressee” service of the USPS but not received 
by the Office, may petition the Director to consider 


 

such correspondence filed in the Office on the USPS 
deposit date, provided that: 

(1) The petition is filed promptly after the 
person becomes aware that the Office has no evidence 
of receipt of the correspondence; 
(2) The number of the “Express Mail” mailing 
label was placed on the paper(s) or fee(s) that constitute 
the correspondence prior to the original 
mailing by “Express Mail”; 
(3) The petition includes a copy of the originally 
deposited paper(s) or fee(s) that constitute the 
correspondence showing the number of the “Express 
Mail” mailing label thereon, a copy of any returned 
postcard receipt, a copy of the “Express Mail” mailing 
label showing the “date-in,” a copy of any other official 
notation by the USPS relied upon to show the 
date of deposit, and, if the requested filing date is a 
date other than the “date-in” on the “Express Mail” 
mailing label or other official notation entered by the 
USPS, a showing pursuant to paragraph (d)(3) of this 
section that the requested filing date was the date the 
correspondence was deposited in the “Express Mail 
Post Office to Addressee” service prior to the last 
scheduled pickup for that day; and 
(4) The petition includes a statement which 
establishes, to the satisfaction of the Director, the 
original deposit of the correspondence and that the 
copies of the correspondence, the copy of the 
“Express Mail” mailing label, the copy of any 
returned postcard receipt, and any official notation 
entered by the USPS are true copies of the originally 
mailed correspondence, original “Express Mail” mailing 
label, returned postcard receipt, and official notation 
entered by the USPS. 
(f) The Office may require additional evidence 
to determine if the correspondence was deposited as 
“Express Mail” with the USPS on the date in question. 
(g) Any person who mails correspondence 
addressed as set out in § 1.1 (a) to the Office with sufficient 
postage utilizing the “Express Mail Post Office 
to Addressee” service of the USPS, but has the correspondence 
returned by the USPS due to an interruption 
or emergency in “Express Mail” service, may 
petition the Director to consider such correspondence 
as filed on a particular date in the Office, provided 
that: 


(1) The petition is filed promptly after the 
person becomes aware of the return of the correspondence; 
(2) The number of the “Express Mail” mailing 
label was placed on the paper(s) or fee(s) that constitute 
the correspondence prior to the original 
mailing by “Express Mail”; 
(3) The petition includes the original correspondence 
or a copy of the original correspondence 
showing the number of the “Express Mail” mailing 
label thereon and a copy of the “Express Mail” mailing 
label showing the “date-in”; and 
(4) The petition includes a statement which 
establishes, to the satisfaction of the Director, the 
original deposit of the correspondence and that the 
correspondence or copy of the correspondence is the 
original correspondence or a true copy of the correspondence 
originally deposited with the USPS on the 
requested filing date. The Office may require additional 
evidence to determine if the correspondence 
was returned by the USPS due to an interruption or 
emergency in “Express Mail” service. 
(h) Any person who attempts to mail correspondence 
addressed as set out in § 1.1 (a) to the Office 
with sufficient postage utilizing the “Express Mail 
Post Office to Addressee” service of the USPS, but 
has the correspondence refused by an employee of the 
USPS due to an interruption or emergency in 
“Express Mail” service, may petition the Director to 
consider such correspondence as filed on a particular 
date in the Office, provided that: 
(1) The petition is filed promptly after the 
person becomes aware of the refusal of the correspondence; 
(2) The number of the “Express Mail” mailing 
label was placed on the paper(s) or fee(s) that constitute 
the correspondence prior to the attempted 
mailing by “Express Mail”; 
(3) The petition includes the original correspondence 
or a copy of the original correspondence 
showing the number of the “Express Mail” mailing 
label thereon; and 
(4) The petition includes a statement by the 
person who originally attempted to deposit the correspondence 
with the USPS which establishes, to the 
satisfaction of the Director, the original attempt to 
deposit the correspondence and that the correspondence 
or copy of the correspondence is the original 


 

correspondence or a true copy of the correspondence 
originally attempted to be deposited with the USPS on 
the requested filing date. The Office may require 
additional evidence to determine if the correspondence 
was refused by an employee of the USPS due to 
an interruption or emergency in “Express Mail” service. 


(i) Any person attempting to file correspondence 
under this section that was unable to be 
deposited with the USPS due to an interruption or 
emergency in “Express Mail” service which has been 
so designated by the Director, may petition the Director 
to consider such correspondence as filed on a particular 
date in the Office, provided that: 
(1) The petition is filed in a manner designated 
by the Director promptly after the person 
becomes aware of the designated interruption or 
emergency in “Express Mail” service; 
(2) The petition includes the original correspondence 
or a copy of the original correspondence; 
and 
(3) The petition includes a statement which 
establishes, to the satisfaction of the Director, that the 
correspondence would have been deposited with the 
USPS but for the designated interruption or emergency 
in “Express Mail” service, and that the correspondence 
or copy of the correspondence is the 
original correspondence or a true copy of the correspondence 
originally attempted to be deposited with 
the USPS on the requested filing date. 


[48 FR 2708, Jan. 20, 1983, added effective Feb. 27, 
1983; 48 FR 4285, Jan. 31, 1983, paras. (a) & (c), 49 FR 
552, Jan. 4, 1984, effective Apr. 1, 1984; paras. (a)-(c) 
revised and paras. (d) - (f) added, 61 FR 56439, Nov. 1, 
1996, effective Dec. 2, 1996; paras. (d) & (e) revised, 
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. 

(a) revised, 67 FR 36099, May 23, 2002, effective June 24, 
2002; paras. (c), (d), (d)(3), (e) & (e)(4) revised, 68 FR 
14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(1) 
revised, 68 FR 48286, Aug. 13, 2003, effective Sept. 12, 
2003; paras. (g) through (i) added, 69 FR 56481, Sept. 21, 
2004, effective Sept. 21, 2004] 

RECORDS AND FILES OF THE PATENT 
AND TRADEMARK OFFICE


§ 1.11 Files open to the public. 

(a) The specification, drawings, and all papers 
relating to the file of: A published application; a 
patent; or a statutory invention registration are open to 
inspection by the public, and copies may be obtained 
upon the payment of the fee set forth in § 1.19(b)(2). 
If an application was published in redacted form pursuant 
to § 1.217, the complete file wrapper and contents 
of the patent application will not be available if: 
The requirements of paragraphs (d)(1), (d)(2), and 
(d)(3) of § 1.217 have been met in the application; and 
the application is still pending. See § 2.27 of this title 
for trademark files. 
(b) All reissue applications, all applications in 
which the Office has accepted a request to open the 
complete application to inspection by the public, and 
related papers in the application file, are open to 
inspection by the public, and copies may be furnished 
upon paying the fee therefor. The filing of reissue 
applications, other than continued prosecution applications 
under § 1.53(d) of reissue applications, will be 
announced in the Official Gazette. The announcement 
shall include at least the filing date, reissue application 
and original patent numbers, title, class and subclass, 
name of the inventor, name of the owner of 
record, name of the attorney or agent of record, and 
examining group to which the reissue application is 
assigned. 
(c) All requests for reexamination for which all 
the requirements of § 1.510 or § 1.915 have been satisfied 
will be announced in the Official Gazette. Any 
reexaminations at the initiative of the Director pursuant 
to § 1.520 will also be announced in the Official 
Gazette. The announcement shall include at least the 
date of the request, if any, the reexamination request 
control number or the Director initiated order control 
number, patent number, title, class and subclass, name 
of the inventor, name of the patent owner of record, 
and the examining group to which the reexamination 
is assigned. 
(d) All papers or copies thereof relating to a 
reexamination proceeding which have been entered of 
record in the patent or reexamination file are open to 
inspection by the general public, and copies may be 
furnished upon paying the fee therefor. 


 

(e) Except as prohibited in § 41.6 (b), the file of 
any interference is open to public inspection and copies 
of the file may be obtained upon payment of the 
fee therefor. 

[42 FR 5593, Jan. 28, 1977; 43 FR 28477, June 30, 
1978; 46 FR 29181, May 29, 1981, para. (c), 47 FR 41272, 
Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 
48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (a), 

(b) and (e), 50 FR 9278, Mar. 7, 1985, effective May 8, 
1985; para. (e) revised, 60 FR 14488, Mar. 17, 1995, effective 
Mar. 17, 1995; para. (b) revised, 62 FR 53131, Oct. 10, 
1997, effective Dec. 1, 1997; para. (a) revised, 65 FR 
57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (c) 
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 
2003; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 
26, 2005, effective Nov. 25, 2005; para. (c) revised, 71 FR 
44219, Aug. 4, 2006, effective Aug. 4, 2006] 

§ 1.12 Assignment records open to public 
inspection. 

(a)(1) Separate assignment records are maintained 
in the United States Patent and Trademark Office for 
patents and trademarks. The assignment records, 
relating to original or reissue patents, including 
digests and indexes (for assignments recorded on or 
after May 1, 1957), and published patent applications 
are open to public inspection at the United States 
Patent and Trademark Office, and copies of patent 
assignment records may be obtained upon request and 
payment of the fee set forth in § 1.19 of this chapter. 
See § 2.200 of this chapter regarding trademark 
assignment records. 

(2) All records of assignments of patents 
recorded before May 1, 1957, are maintained by the 
National Archives and Records Administration 
(NARA). The records are open to public inspection. 
Certified and uncertified copies of those assignment 
records are provided by NARA upon request and payment 
of the fees required by NARA. 
(b) Assignment records, digests, and indexes 
relating to any pending or abandoned patent application, 
which is open to the public pursuant to § 1.11 or 
for which copies or access may be supplied pursuant 
to § 1.14, are available to the public. Copies of any 
assignment records, digests, and indexes that are not 
available to the public shall be obtainable only upon 
written authority of the applicant or applicant’s 
assignee or patent attorney or patent agent or upon a 


showing that the person seeking such information is a 
bona fide prospective or actual purchaser, mortgagee, 
or licensee of such application, unless it shall be necessary 
to the proper conduct of business before the 
Office or as provided in this part. 

(c) Any request by a member of the public 
seeking copies of any assignment records of any 
pending or abandoned patent application preserved in 
confidence under § 1.14, or any information with 
respect thereto, must: 
(1) Be in the form of a petition including the 
fee set forth in § 1.17(g); or 
(2) Include written authority granting access 
to the member of the public to the particular assignment 
records from the applicant or applicant’s 
assignee or attorney or agent of record. 
(d) An order for a copy of an assignment or 
other document should identify the reel and frame 
number where the assignment or document is 
recorded. If a document is identified without specifying 
its correct reel and frame, an extra charge as set 
forth in § 1.21(j) will be made for the time consumed 
in making a search for such assignment. 


[47 FR 41272, Sept. 17, 1982, effective Oct. 1, 1982; 
paras. (a) and (c), 54 FR 6893, Feb. 15, 1989, effective 
April 17, 1989; paras. (a) and (d), 56 FR 65142, Dec. 13, 
1991, effective Dec. 16, 1991; paras. (a)(1) and (d), 57 FR 
29641, July 6, 1992, effective Sept. 4, 1992; para. (a)(2) 
added, 57 FR 29641, July 6, 1992, effective Sept. 4, 1992; 
para. (c) amended, 60 FR 20195, Apr. 25, 1995, effective 
June 8, 1995; para. (c) amended, 61 FR 42790, Aug. 19, 
1996, effective Sept. 23, 1996; para. (c)(1) amended, 65 FR 
54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(1) 
and (b) revised, 65 FR 57024, Sept. 20, 2000, effective 
Nov. 29, 2000; paras. (a)(1) and (a)(2) revised, 68 FR 
48286, Aug. 13, 2003, effective Sept. 12, 2003; para. (b) 
revised, 69 FR 29865, May 26, 2004, effective June 25, 
2004; para. (c)(1) revised, 69 FR 56481, Sept. 21, 2004, 
effective Nov. 22, 2004] 

§ 1.13 Copies and certified copies. 

(a) Non-certified copies of patents, patent 
application publications, and of any records, books, 
papers, or drawings within the jurisdiction of the 
United States Patent and Trademark Office and open 
to the public, will be furnished by the United States 
Patent and Trademark Office to any person, and copies 
of other records or papers will be furnished to persons 
entitled thereto, upon payment of the appropriate 

 

fee. See § 2.201 of this chapter regarding copies of 
trademark records. 

(b) Certified copies of patents, patent application 
publications, and trademark registrations and of 
any records, books, papers, or drawings within the 
jurisdiction of the United States Patent and Trademark 
Office and open to the public or persons entitled 
thereto will be authenticated by the seal of the United 
States Patent and Trademark Office and certified by 
the Director, or in his or her name, upon payment of 
the fee for the certified copy. 

[Revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 
1994; revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; revised, 68 FR 48286, Aug. 13, 
2003, effective Sept. 12, 2003; para. (b) revised, 68 FR 
70996, Dec. 22, 2003, effective Jan. 21, 2004] 

§ 1.14 Patent applications preserved in confidence. 

(a) Confidentiality of patent application information. Patent applications that have not been published 
under 35 U.S.C. 122(b) are generally preserved 
in confidence pursuant to 35 U.S.C. 122(a). Information 
concerning the filing, pendency, or subject matter 
of an application for patent, including status information, 
and access to the application, will only be given 
to the public as set forth in § 1.11 or in this section. 
(1) Records associated with patent applications 
(see paragraph (g) for international applications) 
may be available in the following situations: 
(i) Patented applications and statutory 
invention registrations. The file of an application that 
has issued as a patent or published as a statutory 
invention registration is available to the public as set 
forth in §1.11(a). A copy of the patent application-asfiled, 
the file contents of the application, or a specific 
document in the file of such an application may be 
provided upon request and payment of the appropriate 
fee set forth in § 1.19(b). 
(ii) Published abandoned applications. 
The file of an abandoned application that has been 
published as a patent application publication is available 
to the public as set forth in § 1.11(a). A copy of 
the application-as-filed, the file contents of the published 
application, or a specific document in the file of 
the published application may be provided to any per


son upon request, and payment of the appropriate fee 
set forth in § 1.19(b). 

(iii) Published pending applications. A 
copy of the application-as-filed, the file contents of 
the application, or a specific document in the file of a 
pending application that has been published as a 
patent application publication may be provided to any 
person upon request, and payment of the appropriate 
fee set forth in § 1.19(b). If a redacted copy of the 
application was used for the patent application publication, 
the copy of the specification, drawings, and 
papers may be limited to a redacted copy. The Office 
will not provide access to the paper file of a pending 
application that has been published, except as provided 
in paragraph (c) or (h) of this section. 

(iv) Unpublished abandoned applications 
(including provisional applications) that are identified or relied upon. The file contents of an unpublished, 
abandoned application may be made available 
to the public if the application is identified in a U.S. 
patent, a statutory invention registration, a U.S. patent 
application publication, or an international patent 
application publication of an international application 
that was published in accordance with PCT Article 
21(2). An application is considered to have been identified 
in a document, such as a patent, when the application 
number or serial number and filing date, first 
named inventor, title and filing date or other application 
specific information are provided in the text of 
the patent, but not when the same identification is 
made in a paper in the file contents of the patent and is 
not included in the printed patent. Also, the file contents 
may be made available to the public, upon a 
written request, if benefit of the abandoned application 
is claimed under 35 U.S.C. 119(e), 120, 121, or 
365 in an application that has issued as a U.S. 
patent, or has published as a statutory invention registration, 
a U.S. patent application publication, or an 
international patent application that was published in 
accordance with PCT Article 21(2). A copy of the 
application-as-filed, the file contents of the application, 
or a specific document in the file of the application 
may be provided to any person upon written 
request, and payment of the appropriate fee (§ 
1.19(b)). 
(v) Unpublished pending applications 
(including provisional applications) whose benefit is 
claimed. A copy of the file contents of an unpublished 


 

pending application may be provided to any person, 
upon written request and payment of the appropriate 
fee (§ 1.19(b)), if the benefit of the application is 
claimed under 35 U.S.C. 119(e), 120, 121, or 365 in 
an application that has issued as a U.S. patent, an 
application that has published as a statutory invention 
registration, a U.S. patent application publication, or 
an international patent application publication that 
was published in accordance with PCT Article 21(2). 
A copy of the application-as-filed, or a specific document 
in the file of the pending application may also be 
provided to any person upon written request, and payment 
of the appropriate fee (§ 1.19(b)). The Office 
will not provide access to the paper file of a pending 
application, except as provided in paragraph (c) or (h) 
of this section. 

(vi) Unpublished pending applications 
(including provisional applications) that are incorporated by reference or otherwise identified. A copy of 
the application as originally filed of an unpublished 
pending application may be provided to any person, 
upon written request and payment of the appropriate 
fee (§ 1.19(b)), if the application is incorporated by 
reference or otherwise identified in a U.S. patent, a 
statutory invention registration, a U.S. patent application 
publication, or an international patent application 
publication that was published in accordance with 
PCT Article 21(2). The Office will not provide access 
to the paper file of a pending application, except as 
provided in paragraph (c) or (h) of this section. 

(vii) When a petition for access or a power 
to inspect is required. Applications that were not published 
or patented, that are not the subject of a benefit 
claim under 35 U.S.C. 119(e), 120, 121, or 365 in an 
application that has issued as a U.S. patent, an application 
that has published as a statutory invention registration, 
a U.S. patent application publication, or an 
international patent application publication that was 
published in accordance with PCT Article 21(2), or 
are not identified in a U.S. patent, a statutory invention 
registration, a U.S. patent application publication, 
or an international patent application that was published 
in accordance with PCT Article 21(2), are not 
available to the public. If an application is identified 
in the file contents of another application, but not the 
published patent application or patent itself, a granted 
petition for access (see paragraph (h)) or a power to 
inspect (see paragraph (c)) is necessary to obtain the 
application, or a copy of the application. 

(2) Information concerning a patent application 
may be communicated to the public if the patent 
application is identified in paragraphs (a)(1)(i) 
through (a)(1)(vi) of this section. The information that 
may be communicated to the public (i.e., status information) 
includes: 
(i) Whether the application is pending, 
abandoned, or patented; 
(ii) Whether the application has been published 
under 35 U.S.C. 122(b); 


(iii) The application “numerical identifier” 
which may be: 

(A) The eight-digit application number 
(the two-digit series code plus the six-digit serial 
number); or 
(B) The six-digit serial number plus any 
one of the filing date of the national application, the 
international filing date, or date of entry into the 
national stage; and 
(iv) Whether another application claims the 
benefit of the application (i.e., whether there are any 
applications that claim the benefit of the filing date 
under 35 U.S.C. 119(e), 120, 121 or 365 of the application), 
and if there are any such applications, the 
numerical identifier of the application, the specified 
relationship between the applications (e.g., continuation), 
whether the application is pending, abandoned 
or patented, and whether the application has been 
published under 35 U.S.C. 122(b). 
(b) Electronic access to an application. Where 
a copy of the application papers or access to the application 
may be made available pursuant to paragraphs 
(a)(1)(i) through (a)(1)(vi) of this section, the Office 
may at its discretion provide access to only an electronic 
copy of the specification, drawings, and file 
contents of the application. 
(c) Power to inspect a pending or abandoned 
application. Access to an application may be provided 
to any person if the application file is available, and 
the application contains written authority (e.g., a 
power to inspect) granting access to such person. The 
written authority must be signed by: 
(1) An applicant; 
(2) An attorney or agent of record; 






 

(3) An authorized official of an assignee of 
record (made of record pursuant to § 3.71 of this 
chapter); or 
(4) A registered attorney or agent named in 
the papers accompanying the application papers filed 
under § 1.53 or the national stage documents filed 
under § 1.495, if an executed oath or declaration pursuant 
to § 1.63 or § 1.497 has not been filed. 
(d) Applications reported to Department of 
Energy. Applications for patents which appear to disclose, 
purport to disclose or do disclose inventions or 
discoveries relating to atomic energy are reported to 
the Department of Energy, which Department will be 
given access to the applications. Such reporting does 
not constitute a determination that the subject matter 
of each application so reported is in fact useful or is 
an invention or discovery, or that such application in 
fact discloses subject matter in categories specified by 
42 U.S.C. 2181(c) and (d). 
(e) Decisions by the Director. Any decision by 
the Director that would not otherwise be open to public 
inspection may be published or made available for 
public inspection if: 
(1) The Director believes the decision 
involves an interpretation of patent laws or regulations 
that would be of precedential value; and 
(2) The applicant is given notice and an 
opportunity to object in writing within two months on 
the ground that the decision discloses a trade secret or 
other confidential information. Any objection must 
identify the deletions in the text of the decision considered 
necessary to protect the information, or 
explain why the entire decision must be withheld 
from the public to protect such information. An applicant 
or party will be given time, not less than twenty 
days, to request reconsideration and seek court review 
before any portions of a decision are made public 
under this paragraph over his or her objection. 
(f) Publication pursuant to § 1.47. Information 
as to the filing of an application will be published in 
the Official Gazette in accordance with § 1.47(c). 
(g) International applications. (1) Copies of 
international application files for international applications 
which designate the U.S. and which have been 
published in accordance with PCT Article 21(2), or 
copies of a document in such application files, will be 
furnished in accordance with PCT Articles 30 and 38 
and PCT Rules 94.2 and 94.3, upon written request 


including a showing that the publication of the application 
has occurred and that the U.S. was designated, 
and upon payment of the appropriate fee (see § 
1.19(b)), if: 

(i) With respect to the Home Copy (the copy 
of the international application kept by the Office in 
its capacity as the Receiving Office, see PCT Article 
12(1)), the international application was filed with the 

U.S. Receiving Office; 

(ii) With respect to the Search Copy (the 
copy of an international application kept by the Office 
in its capacity as the International Searching Authority, 
see PCT Article 12(1)), the U.S. acted as the International 
Searching Authority, except for the written 
opinion of the International Searching Authority 
which shall not be available until the expiration of 
thirty months from the priority date; or 

(iii) With respect to the Examination Copy 
(the copy of an international application kept by the 
Office in its capacity as the International Preliminary 
Examining Authority), the United States acted as the 
International Preliminary Examining Authority, an 
International Preliminary Examination Report has 
issued, and the United States was elected. 

(2) A copy of an English language translation 
of a publication 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 (§ 1.19(b)(4)). 
(3) Access to international application files 
for international applications which designate the U.S. 
and which have been published in accordance with 
PCT Article 21(2), or copies of a document in such 
application files, will be permitted in accordance with 
PCT Articles 30 and 38 and PCT Rules 44ter.1, 94.2 
and 94.3, upon written request including a showing 
that the publication of the application has occurred 
and that the U.S. was designated. 
(4) In accordance with PCT Article 30, copies 
of an international application-as-filed under paragraph 
(a) of this section will not be provided prior to 
the international publication of the application pursuant 
to PCT Article 21(2). 


 

(5) Access to international application files 
under paragraphs (a)(1)(i) through (a)(1)(vi) and 
(g)(3) of this section will not be permitted with 
respect to the Examination Copy in accordance with 
PCT Article 38. 
(h) Access or copies in other circumstances. 
The Office, either sua sponte or on petition, may also 
provide access or copies of all or part of an application 
if necessary to carry out an Act of Congress or if 
warranted by other special circumstances. Any petition 
by a member of the public seeking access to, or 
copies of, all or part of any pending or abandoned 
application preserved in confidence pursuant to paragraph 
(a) of this section, or any related papers, must 
include: 
(1) The fee set forth in § 1.17(g); and 


(2) A showing that access to the application 
is necessary to carry out an Act of Congress or that 
special circumstances exist which warrant petitioner 
being granted access to all or part of the application. 


[42 FR 5593, Jan. 28, 1977; 43 FR 20462, May 11, 
1978; para. (e) added, 47 FR 41273, Sept. 17, 1982, effective 
Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective 
Apr. 1, 1984; para. (d), 49 FR 48416, Dec. 12, 1984, 
effective Feb. 11, 1985; para. (b), 50 FR 9378, Mar. 7, 
1985, effective May 8, 1985; 53 FR 23733, June 23, 1988; 
para. (e), 54 FR 6893, Feb. 15, 1989, effective April 17, 
1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective 
Jan. 3, 1994; para. (e) amended, 60 FR 20195, Apr. 25, 
1995, effective June 8, 1995; paras. (a), (b) and (e) 
amended, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 
1996; para. (a) revised & para. (f) added, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997; para. (g) added, 
63 FR 29614, June 1, 1998, effective July 1, 1998, (adopted 
as final, 63 FR 66040, Dec. 1, 1998); revised, 65 FR 54604, 
Sept. 8, 2000, effective Nov. 7, 2000; paras. (a), (b), (c), 
(e), (i) and (j) revised, 65 FR 57024, Sept. 20, 2000, effective 
Nov. 29, 2000; para (h) corrected, 65 FR 78958, Dec. 
18, 2000; para.(i)(2) revised, 66 FR 67087, Dec. 28, 2001, 
effective Dec. 28, 2001; para. (d)(4) revised, 67 FR 520, 
Jan. 4, 2002, effective Apr. 1, 2002; paras. (g) & (g)(1) 
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 
2003; revised, 68 FR 38611, June 30, 2003, effective July 
30, 2003; paras. (g)(1)(ii) & (g)(3) revised, 68 FR 58991, 
Oct. 20, 2003, effective Jan. 1, 2004; para. (g)(1)(ii) corrected, 
68 FR 67805, Dec., 4, 2003; para. (g)(5) revised, 68 
FR 67805, Dec. 4, 2003, effective Jan. 1, 2004; para. (g)(2) 
revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 21, 
2004; para. (e) revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004; para. (h)(1) revised, 69 FR 56481, 
Sept. 21, 2004, effective Nov. 22, 2004] 

§ 1.15 [Reserved] 

(Editor’s note: substance supplanted by Part 102) 

[32 FR 13812, Oct. 4, 1967; 34 FR 18857, Nov. 26, 
1969; amended 53 FR 47685, Nov. 25, 1988, effective Dec. 
30, 1988; removed and reserved, 68 FR 14332, Mar. 25, 
2003, effective May 1, 2003] 

FEES AND PAYMENT OF MONEY 

§ 1.16 National application filing, search, and 
examination fees. 

(a) Basic fee for filing each application under 
35 U.S.C. 111 for an original patent, except design, 
plant, or provisional applications: 
(1) For an application filed on or after 
December 8, 2004: 


By a small entity (§ 1.27(a)) if the application 
is submitted in compliance with the Office 
electronic filing system (§ 1.27(b)(2)). . . . . . . $75.00 

By a small entity (§ 1.27(a)) . . . $150.00 
By other than a small entity . . . . $300.00 

(2) For an application filed before December 

8, 2004: 
By a small entity (§ 1.27(a)) . . . $395.00 
By other than a small entity . . . . $790.00 

(b) Basic fee for filing each application for an 
original design patent: 

(1) For an application filed on or after 

December 8, 2004: 
By a small entity (§ 1.27(a)) . . . $100.00 
By other than a small entity . . . . $200.00 

(2) For an application filed before December 

8, 2004: 
By a small entity (§ 1.27(a)) . . . $175.00 
By other than a small entity . . . . $350.00 

(c) Basic fee for filing each application for an 
original plant patent: 

(1) For an application filed on or after 

December 8, 2004: 
By a small entity (§ 1.27(a)) . . . $100.00 
By other than a small entity . . . . $200.00 

(2) For an application filed before December 

8, 2004: 
By a small entity (§ 1.27(a)) . . . $275.00 
By other than a small entity . . . . $550.00 

 

(d) Basic fee for filing each provisional applica


tion: 
By a small entity (§ 1.27(a)) . . . $100.00 
By other than a small entity . . . . $200.00 

(e) Basic fee for filing each application for the 
reissue of a patent: 

(1) For an application filed on or after 

December 8, 2004: 
By a small entity (§ 1.27(a)) . . . $150.00 
By other than a small entity . . . . $300.00 

(2) For an application filed before December 

8, 2004: 
By a small entity (§ 1.27(a)) . . . $395.00 
By other than a small entity . . . . $790.00 

(f) Surcharge for filing any of the basic filing 
fee, the search fee, the examination fee, or the oath or 
declaration on a date later than the filing date of the 
application, except provisional applications: 
By a small entity (§ 1.27(a)) . . . . $65.00 
By other than a small entity . . . . $130.00 


(g) Surcharge for filing the basic filing fee or 
cover sheet (§ 1.51(c)(1)) on a date later than the filing 
date of the provisional application:: 
By a small entity (§ 1.27(a)) . . . . $25.00 
By other than a small entity . . . . . $50.00 


(h) In addition to the basic filing fee in an application, 
other than a provisional application, for filing 
or later presentation at any other time of each claim in 
independent form in excess of 3: 
By a small entity (§ 1.27(a)) . . . $100.00 
By other than a small entity . . . . $200.00 


(i) In addition to the basic filing fee in an application, 
other than a provisional application, for filing 
or later presentation at any other time of each claim 
(whether dependent or independent) in excess of 20 
(note that § 1.75(c) indicates how multiple dependent 
claims are considered for fee calculation purposes): 
By a small entity (§ 1.27(a)) . . . . $25.00 
By other than a small entity . . . . . $50.00 


(j) In addition to the basic filing fee in an application, 
other than a provisional application, that contains, 
or is amended to contain, a multiple dependent 
claim, per application: 


By a small entity (§ 1.27(a)) . . . $180.00 
By other than a small entity . . . . $360.00 

(k) Search fee for each application under 35 

U.S.C. 111 on or after December 8, 2004, for an original 
patent, except design, plant, or provisional appli


cations: 
By a small entity (§ 1.27(a)). . . . $250.00 

By other than a small entity . . . . $500.00 

(l) Search fee for each application filed on or 

after December 8, 2004, for an original design patent: 
By a small entity (§ 1.27(a)). . . . . $50.00 
By other than a small entity . . . . $100.00 

(m) Search fee for each application filed on or 

after December 8, 2004, for an original plant patent: 
By a small entity (§ 1.27(a)). . . . $150.00 
By other than a small entity . . . . $300.00 

(n) Search fee for each application filed on or 

after December 8, 2004, for the reissue of a patent: 
By a small entity (§ 1.27(a)). . . . $250.00 
By other than a small entity . . . . $500.00 

(o) Examination fee for each application filed 
under 35 U.S.C. 111 on or after December 8, 2004, for 
an original patent, except design, plant, or provisional 
applications: 
By a small entity (§ 1.27(a)). . . . $100.00 
By other than a small entity . . . . $200.00 


(p) Examination fee for each application filed 
on or after December 8, 2004, for an original design 
patent: 
By a small entity (§ 1.27(a)). . . . . $65.00 
By other than a small entity . . . . $130.00 


(q) Examination fee for each application filed 
on or after December 8, 2004, for an original plant 
patent: 
By a small entity (§ 1.27(a)). . . . . $80.00 
By other than a small entity . . . . $160.00 


(r) Examination fee for each application filed 
on or after December 8, 2004, for the reissue of a 
patent: 
By a small entity (§ 1.27(a)). . . . $300.00 
By other than a small entity . . . . $600.00 


(s) Application size fee for any application 
under 35 U.S.C. 111 filed on or after December 8, 
2004, the specification and drawings of which exceed 
100 sheets of paper, for each additional 50 sheets or 
fraction thereof (see § 1.52(f) for applications submitted 
in whole or in part on an electronic medium): 


By a small entity (§ 1.27(a)) . . . $125.00 
By other than a small entity . . . . $250.00 

[Added, 47 FR 41273, Sept. 17, 1982, effective date 
Oct. 1, 1982; 50 FR 31824, Aug. 6, 1985, effective date 
Oct. 5, 1985; paras. (a), (b), (d) - (i), 54 FR 6893, Feb. 15, 

 

1989, effective Apr. 17, 1989; paras. (a)-(j), 56 FR 65142, 
Dec. 13, 1991, effective Dec. 16, 1991; paras. (a)-(d) and 
(f)-(j), 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; 
paras. (a), (b), (d) and (f)-(i), 59 FR 43736, Aug. 25, 1994, 
effective Oct. 1, 1994; paras. (a)-(g) amended and paras. 

(k) and (l) added, 60 FR 20195, Apr. 25, 1995, effective 
June 8, 1995; paras. (a), (b), (d), & (f)-(i) amended, 60 FR 
41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a), (b), 
(d), and (f)-(i) amended and para. (m) added, 61 FR 39585, 
July 30, 1996, effective Oct. 1, 1996; paras. (a), (b), (d), 
and (f) - (i) amended, 62 FR 40450, July 29, 1997, effective 
Oct. 1, 1997; paras. (d) & (l) amended, 62 FR 53131, Oct. 
10, 1997, effective Dec. 1, 1997; paras. (a)-(d) and (f)-(j) 
revised, 63 FR 6758, Dec. 8, 1998, effective Nov. 10, 1998; 
paras. (a) and (b) revised, 64 FR 67774, Dec. 3, 1999, 
effective Dec. 29, 1999; paras. (a), (b), (d), and (f)-(i) 
revised, 65 FR 49193, Aug. 11, 2000, effective Oct. 1, 
2000; paras. (a)-(l) revised, 65 FR 78958, Dec. 18, 2000; 
paras. (a), (b), (d), (f)-(i) and (k) revised, 66 FR 39447, July 
31, 2001, effective Oct. 1, 2001; paras. (a), (g), and (h) 
revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 1, 
2003; paras. (a), (b), (d), and (f) through (i) revised, 68 FR 
41532, July 14, 2003, effective Oct. 1, 2003; paras. (a), (b), 
(d), and (f) through (i) revised, 69 FR 52604, Aug. 27, 
2004, effective Oct. 1, 2004; revised, 70 FR 3880, Jan. 27, 
2005, effective Dec. 8, 2004; paras. (f) and (s) revised, 70 
FR 30360, May 26, 2005, effective July 1, 2005] 

§ 1.17 Patent application and reexamination 
processing fees. 

(a) Extension fees pursuant to § 1.136(a): 

(1) For reply within first month: 
By a small entity (§ 1.27(a)) . . . . $60.00 
By other than a small entity . . . . $120.00 
(2) For reply within second month: 
By a small entity (§ 1.27(a)) . . . $225.00 
By other than a small entity . . . . $450.00 
(3) For reply within third month: 
By a small entity (§ 1.27(a)) . . . $510.00 
By other than a small entity . . . $1,020.00 
(4) For reply within fourth month: 
By a small entity (§ 1.27(a)) . . . $795.00 
By other than a small entity . . . $1,590.00 
(5) For reply within fifth month: 
By a small entity (§ 1.27(a)) . . $1,080.00 
By other than a small entity . . . $2,160.00 


(b) For fees in proceedings before the Board of 
Patent Appeals and Interferences, see § 41.20 of this 
title. 

(c) [Reserved] 

(d) [Reserved] 
(e) To request continued examination pursuant 


to § 1.114: 
By a small entity (§1.27(a)) . . . . $395.00 
By other than a small entity . . . . $790.00 

(f) For filing a petition under one of the 
following sections which refers to this paragraph: 
. . . . . . . . . . . . . . . . . . . . . . . . . . . $400.00 

§ 1.36(a)— for revocation of a power of attorney 
by fewer than all of the applicants. 

§ 1.53(e)—to accord a filing date. 

§ 1.57(a)—to accord a filing date. 

§ 1.182—for decision on a question not specifically 
provided for. 

§ 1.183—to suspend the rules. 

§ 1.378(e)—for reconsideration of decision on 

petition refusing to accept delayed payment of maintenance 
fee in an expired patent. 
§ 1.741(b)—to accord a filing date to an application 
under § 1.740 for extension of a patent term. 

(g) For filing a petition under one of the 
following sections which refers to this paragraph: 
. . . . . . . . . . . . . . . . . . . . . . . . . . . $200.00 

§ 1.12—for access to an assignment record. 

§ 1.14—for access to an application. 

§ 1.47—for filing by other than all the inventors 
or a person not the inventor. 

§ 1.59—for expungement of information. 

§ 1.103(a)—to suspend action in an application. 

§ 1.136(b)—for review of a request for exten


sion for extension of time when the provisions of § 

1.136 (a) are not available. 
§ 1.295—for review of refusal to publish a statutory 
invention registration. 

§ 1.296—to withdraw a request for publication 
of a statutory invention registration filed on or after 
the date the notice of intent to publish issued. 

§ 1.377—for review of decision refusing to 
accept and record payment of a maintenance fee filed 
prior to expiration of a patent. 

§ 1.550(c)—for patent owner requests for 
extension of time in ex parte reexamination proceedings. 


§ 1.956—for patent owner requests for extension 
of time in inter partes reexamination proceedings. 


§ 5.12—for expedited handling of a foreign filing 
license. 

 

§ 5.15—for changing the scope of a license. 

§ 5.25—for retroactive license. 

(h) For filing a petition under one of the following 
sections which refers to this paragraph . . $130.00 
§ 1.19(g)—to request documents in a form 
other than provided in this part. 
§ 1.84—for accepting color drawings or photo


graphs. 

§ 1.91—for entry of a model or exhibit. 

§ 1.102(d)—to make an application special. 

§ 1.138(c)—to expressly abandon an applica


tion to avoid publication. 
§ 1.313—to withdraw an application from 
issue. 
§ 1.314—to defer issuance of a patent. 

(i) Processing fee for taking action under one 
of the following sections which refers to this paragraph: 
. . . . . . . . . . . . . . . . . . . . . . . . . . $130.00 

§ 1.28(c)(3)—for processing a non-itemized fee 
deficiency based on an error in small entity status. 

§ 1.41—for supplying the name or names of the 
inventor or inventors after the filing date without an 
oath or declaration as prescribed by § 1.63, except in 
provisional applications. 

§ 1.48—for correcting inventorship, except in 
provisional applications. 

§ 1.52(d)—for processing a nonprovisional 
application filed with a specification in a language 
other than English. 

§ 1.53(b)(3)—to convert a provisional application 
filed under § 1.53(c) into a nonprovisional application 
under § 1.53(b). 

§ 1.55—for entry of late priority papers. 

§1.71(g)(2)—for processing a belated amendment 
under § 1.71(g). 

§ 1.99(e)—for processing a belated submission 
under § 1.99. 

§ 1.103(b)—for requesting limited suspension 
of action, continued prosecution application for a 
design patent (§ 1.53(d)). 

§ 1.103(c)—for requesting limited suspension 
of action, request for continued examination (§ 
1.114). 

§ 1.103(d)—for requesting deferred examination 
of an application. 
§ 1.217—for 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. 

§ 1.221—for requesting voluntary publication 
or republication of an application. 

§ 1.291(c)(5)—for processing a second or subsequent 
protest by the same real party in interest. 

§ 1.497(d)—for filing an oath or declaration 
pursuant to 35 U.S.C. 371(c)(4) naming an inventive 
entity different from the inventive entity set forth in 
the international stage. 

§ 3.81—for a patent to issue to assignee, assignment 
submitted after payment of the issue fee. 

(j) For filing a petition to institute a public use 
proceeding under § 1.292. . . . . . . . . . . . . . .$1,510.00 
(k) For filing a request for expedited examination 
under § 1.155(a) . . . . . . . . . . . . . . . . . . . $900.00 
(l) For filing a petition for the revival of an 
unavoidably abandoned application under 35 U.S.C. 
111, 133, 364, or 371, for the unavoidably delayed 
payment of the issue fee under 35 U.S.C. 151, or for 
the revival of an unavoidably terminated reexamination 
proceeding under 35 U.S.C. 133 (§ 1.137(a)): 
By a small entity (§ 1.27(a)). . . . $250.00 
By other than a small entity . . . . $500.00 


(m) For filing a petition for the revival of an 
unintentionally abandoned application, for the unintentionally 
delayed payment of the fee for issuing a 
patent, or for the revival of an unintentionally terminated 
reexamination proceeding under 35 U.S.C. 
41(a)(7) (§ 1.137(b)): 
By a small entity (§ 1.27(a)). . . . $750.00 
By other than a small entity . . .$1,500.00 


(n) For requesting publication of a statutory 
invention registration prior to the mailing of the first 
examiner’s action pursuant to § 1.104 . . . . . . $920.00 
reduced by the amount of the application basic filing 
fee paid. 
(o) For requesting publication of a statutory 
invention registration after the mailing of the first 
examiner’s action pursuant to § 1.104. . . . .$1,840.00 
reduced by the amount of the application basic filing 
fee paid. 
(p) For an information disclosure statement 
under § 1.97(c) or (d) or a submission under § 


1.99 . . . . . . . . . . . . . . . . . . . . . . . . . .$180.00 

(q) Processing fee for taking action under one 
of the following sections which refers to this paragraph 
. . . . . . . . . . . . . . . . . . . . . . . . . . . $50.00 

 

§ 1.41—to supply the name or names of the 
inventor or inventors after the filing date without a 
cover sheet as prescribed by § 1.51(c)(1) in a provisional 
application 

§ 1.48—for correction of inventorship in a provisional 
application. 

§ 1.53(c)(2) —to convert a nonprovisional 
application filed under § 1.53(b) to a provisional 
application under § 1.53(c). 

(r) For entry of a submission after final rejec


tion under § 1.129(a): 
By a small entity (§ 1.27(a)) . . . $395.00 
By other than a small entity . . . . $790.00 

(s) For each additional invention requested to 

be examined under § 1.129(b): 
By a small entity (§ 1.27(a)) . . . $395.00 
By other than a small entity . . . . $790.00 

(t) For the acceptance of an unintentionally 
delayed claim for priority under 35 U.S.C. 119, 120, 
121, or 365(a) or (c) (§§ 1.55 and 1.78) . . . $1,370.00 

[Added 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 
1982; para. (h), 48 FR 2708, Jan. 20, 1983, effective Feb. 
27, 1983; para. (h), 49 FR 13461, Apr. 4, 1984, effective 
June 4, 1984; para. (h), 49 FR 34724, Aug. 31, 1984, effective 
Nov. 1, 1984; paras. (e), (g), (h) and (i), 49 FR 48416, 
Dec. 12, 1984, effective Feb. 11, 1985; paras. (h), (n) and 
(c), 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; 50 
FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; paras. (a)(
m), 54 FR 6893, Feb. 15, 1989, 54 FR 9431, March 7, 
1989, effective Apr. 17, 1989; para. (i)(1), 54 FR 47518, 
Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(o), 56 FR 
65142, Dec. 13, 1991, effective Dec. 16, 1991; para. (i)(1), 
57 FR 2021, Jan. 17, 1992, effective March 16, 1992; para. 

(p) added, 57 FR 2021, Jan. 17, 1992, effective March 16, 
1992; para. (i)(1), 57 FR 29642, July 6, 1992, effective 
Sept. 4, 1992; corrected 57 FR 32439, July 22, 1992; paras. 
(b)-(g), (j), and (m)-(o), 57 FR 38190, Aug. 21, 1992, effective 
Oct. 1, 1992; para. (h), 58 FR 38719, July 20, 1993, 
effective Oct. 1, 1993; paras. (b)-(g), (j) and (m)-(p), 59 FR 
43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. (h) 
& (i) amended and paras. (q)-(s) added, 67 FR 20195, Apr. 
25, 1995, effective June 8, 1995; paras. (b)-(g), (j), (m)-(p), 
(r) & (s) amended, 60 FR 41018, Aug. 11, 1995, effective 
Oct. 1, 1995; paras. (b)-(g), (j), (m)-(p), (r) and (s) 
amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 
1996; paras. (b)-(g), (j), (m)-(p), (r) & (s) amended, 62 FR 
40450, July 29, 1997, effective Oct. 1, 1997; paras. (a) (
d), (h), (i) & (q) revised, paras. (e)-(g) reserved, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (q) corrected, 
62 FR 61235, Nov. 17, 1997, effective Dec. 1, 1997; 


paras. (a)-(d), (l) and (m) revised, 63 FR 67578, Dec. 8, 
1998, effective Nov. 10, 1998; paras. (r) and (s) revised, 63 
FR 67578, Dec. 8, 1998, effective Dec. 8, 1998; paras. (r) 
and (s) revised, 64 FR 67774, Dec. 3, 1999, effective Jan. 
10, 2000; para. (e) added and para. (i) revised, 65 FR 
14865, Mar. 20, 2000, effective May 29, 2000 (adopted as 
final, 65 FR 50092, Aug. 16, 2000); paras. (a)-(e), (m), (r) 
and (s) revised, 65 FR 49193, August 11, 2000, effective 
October 1, 2000; paras. (h), (i), (k), (l), (m), (p), and (q) 
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; heading and paras. (h), (i), (l), (m) and (p) revised, 65 
FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (t) 
added, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 
2000; paras. (a)-(e), (r) and (s) revised, 65 FR 78958, Dec. 
18, 2000; heading and para. (h) revised, 66 FR 47387, Sept. 
12, 2001, effective Sept. 12, 2001; paras. (a)(2)-(a)(5), (b)(
e), (m) and (r)-(t) revised, 66 FR 39447, July 31, 2001, 
effective Oct. 1, 2001; paras. (a)(2) through (a)(5), (e), (m), 
and (r) through (t) revised, 67 FR 70847, Nov. 27, 2002, 
effective Jan. 1, 2003; para. (h) revised, 68 FR 38611, June 
30, 2003, effective July 30, 2003; paras. (a)(2) through 
(a)(5), (b) through (e), (m), and (r) through (t) revised, 68 
FR 41532, July 14, 2003, effective Oct. 1, 2003; paras. (c) 
and (d) removed and reserved and paras. (b) and (h) 
revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 
2004; paras. (a)(2) through (a)(5), (e), (m), and (r) through 

(t) revised, 69 FR 52604, Aug. 27, 2004, effective Oct. 1, 
2004; paras. (f) and (g) added and paras. (h) and (i) revised, 
69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004; 
paras. (a), (l) and (m) revised, 70 FR 3880, Jan. 27, 2005, 
effective Dec. 8, 2004; para. (i) revised, 70 FR 54259, Sept. 
14, 2005, effective Sept. 14, 2005; para. (f) revised, 70 FR 
56119, Sept. 26, 2005, effective Nov. 25, 2005] 

§ 1.18 Patent post allowance (including issue) 
fees. 

(a) Issue fee for issuing each original patent, 
except a design or plant patent, or for issuing each 
reissue patent: 

By a small entity (§ 1.27(a)) . . . $700.00 
By other than a small entity . . . $1,400.00 

(b) Issue fee for issuing an original design 

patent: 
By a small entity (§ 1.27(a)) . . . $400.00 
By other than a small entity . . . . $800.00 

(c) Issue fee for issuing an original plant patent: 
By a small entity (§ 1.27(a)) . . . $550.00 
By other than a small entity . . . $1,100.00 
(d) Publication fee . . . . . . . . . . . . . . . . $300.00 


(e) For filing an application for patent term 
adjustment under § 1.705. . . . . . . . . . . . . . . . $200.00 

 

(f) For filing a request for reinstatement of all 
or part of the term reduced pursuant to § 1.704(b) 
in an application for patent term adjustment under § 

1.705 . . . . . . . . . . . . . . . . . . . . . . . . . . $400.00 

[Added, 47 FR 41273, Sept. 17, 1982, effective Oct. 1, 
1982; 50 FR 31824, Aug. 6, 1985, effective Oct. 5, 1985; 
revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 
1989; revised, 56 FR 65142, Dec. 13. 1991, effective Dec. 
16, 1991; paras. (a)-(c), 57 FR 38190, Aug. 21, 1992, effective 
Oct. 1, 1992; revised, 59 FR 43736, Aug. 25, 1994, 
effective Oct. 1, 1994; amended, 60 FR 41018, Aug. 11, 
1995, effective Oct. 1, 1995; amended, 61 FR 39585, July 
30, 1996, effective Oct. 1, 1996; amended, 62 FR 40450, 
July 29, 1997, effective Oct. 1, 1997; amended, 63 FR 
67578, Dec. 8, 1998, effective Nov. 10, 1998; revised, 
65 FR 49193, Aug. 11, 2000, effective Oct. 1, 2000; heading 
revised and paras. (d)-(f) added, 65 FR 56366, Sept. 18, 
2000, effective Nov. 17, 2000; para. (d) revised, 65 FR 
57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. (a)


(c) revised, 65 FR 78958, Dec. 18, 2000; paras. (a)-(c) 
revised, 66 FR 39447, July 31, 2001, effective Oct. 1, 2001; 
paras. (a) through (c) revised, 67 FR 70847, Nov. 27, 2002, 
effective Jan. 1, 2003; paras. (a) through (c) revised, 68 FR 
41532, July 14, 2003, effective Oct. 1, 2003; paras. (a) 
through (c) revised, 69 FR 52604, Aug. 27, 2004, effective 
Oct. 1, 2004; paras. (a)-(c) revised, 70 FR 3880, Jan. 27, 
2005, effective Dec. 8, 2004] 

§ 1.19 Document supply fees.

 The United States Patent and Trademark Office 
will supply copies of the following patent-related documents 
upon payment of the fees indicated. Paper 
copies will be in black and white unless the original 
document is in color, a color copy is requested and the 
fee for a color copy is paid. 

(a) Uncertified copies of patent application 
publications and patents: 
(1) Printed copy of the paper portion of a 
patent application publication or patent, including a 
design patent, statutory invention registration, or 
defensive publication document. Service includes 
preparation of copies by the Office within two to three 
business days and delivery by United States Postal 
Service; and preparation of copies by the Office 
within one business day of receipt and delivery to an 
Office Box or by electronic means (e.g., facsimile, 
electronic mail) . . . . . . . . . . . . . . . . . . . . . . . . . $3.00 
(2) Printed copy of a plant patent in 
color . . . . . . . . . . . . . . . . . . . . . . . . . $15.00 


(3) Color copy of a patent (other than a plant 
patent) or statutory invention registration containing a 
color drawing . . . . . . . . . . . . . . . . . . . . . . . . . $25.00 
(b) Copies of Office documents to be provided 
in paper, or in electronic form, as determined by the 
Director (for other patent-related materials see § 
1.21(k)): 
(1) Copy of a patent application as filed, or a 
patent-related file wrapper and contents, stored in 
paper in a paper file wrapper, in an image format in an 
image file wrapper, or if color documents, stored in 
paper in an Artifact Folder: 
(i) If provided on paper: 
(A) Application as filed . . . . . . .$20.00. 


(B) File wrapper and contents of 400 or 
fewer pages . . . . . . . . . . . . . . . . . . . .$200.00. 
(C) Additional fee for each additional 
100 pages or portion thereof of file wrapper and contents 
. . . . . . . . . . . . . . . . . . . . .$40.00. 
(D) Individual application documents, 
other than application as filed, per document .$25.00. 
(ii) If provided on compact disc or other 
physical electronic medium in single order: 
(A) Application as filed . . . . . . .$20.00. 


(B) File wrapper and contents, first 
physical electronic medium: . . . . . . . . . . . . . .$55.00. 
(C) Additional fee for each continuing 
physical electronic medium in the single order of 
paragraph (b)(1)(ii)(B) of this section: . . . . . .$15.00. 


(iii) If provided electronically (e.g., by 
electronic transmission) other than on a physical electronic 
medium as specified in paragraph (b)(1)(ii) of 
this section: 

(A) Application as filed: . . . . . . .$20.00. 
(B) File wrapper and contents: . .$55.00. 


(2) Copy of patent-related file wrapper contents 
that were submitted and are stored on compact 
disc or other electronic form (e.g., compact discs 
stored in an Artifact Folder), other than as available in 
paragraph (b)(1) of this section: 
(i) If provided on compact disc or other 
physical electronic medium in a single order: 
(A) First physical electronic medium in a 
single order: . . . . . . . . . . . . . . . . . . . . .$55.00. 
(B) Additional fee for each continuing 
physical electronic medium in the single order of 
paragraph (b)(2)(i) of this section:. . . . . . . . . .$15.00. 


 

(ii) If provided electronically other than on 
a physical electronic medium per order: . . . . . $55.00. 
(3) Copy of Office records, except copies 
available under paragraph (b)(1) or (2) of this 
section: . . . . . . . . . . . . . . . . . . . . . . . . .$25.00. 
(4) For assignment records, abstract of title 
and certification, per patent: . . . . . . . . . . . . . . $25.00. 
(c) Library service (35 U.S.C. 13): For providing 
to libraries copies of all patents issued annually, 
per annum . . . . . . . . . . . . . . . . . . . . . . . . . . . $50.00 
(d) For list of all United States patents and statutory 
invention registrations in a subclass. . . . . $3.00 
(e) Uncertified statement as to status of the payment 
of maintenance fees due on a patent or expiration 
of a patent. . . . . . . . . . . . . . . . . . . . . . . . . $10.00 
(f) Uncertified copy of a non-United States 
patent document, per document. . . . . . . . . . . . $25.00 
(g) Petitions for documents in a form other than 
that provided by this part, or in a form other than that 
generally provided by the Director, will be decided in 
accordance with the merits of each situation. Any 
petition seeking a decision under this section must be 
accompanied by the petition fee set forth in § 1.17 (h) 
and, if the petition is granted, the documents will be 
provided at cost. 


(h) [Reserved] 

[Added 47 FR 41273, Sept. 17, 1982, effective date 
Oct. 1, 1982; para. (b), 49 FR 552, Jan. 4, 1984, effective 
date Apr. 1, 1984; paras. (f) and (g) added, 49 FR 34724, 
Aug. 31, 1984, effective date Nov. 1, 1984; paras. (a) and 
(c), 50 FR 9379, Mar. 7, 1985, effective date May 8,1985; 
50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; 
revised, 54 FR 6893, Feb. 15, 1989; 54 FR 9432, March 7, 
1989, effective Apr. 17, 1989, revised 56 FR 65142, Dec. 
13, 1991, effective Dec. 16, 1991; paras. (b)(4), (f) and 
(h),57 FR 38190, Aug. 21, 1992, effective Oct.1, 1992; 
para. (a)(3), 58 FR 38719, July 20, 1993, effective Oct. 1, 
1993; paras. (a)(1)(ii), (a)(1)(iii), (b)(1)(i), & (b)(1)(ii) 
amended, 60 FR 41018, Aug. 11, 1995, effective Oct. 1, 
1995; paras. (a)(2) and (a)(3) amended, 62 FR 40450, July 
29, 1997, effective Oct. 1, 1997; paras. (a)(1)(i) through 
(a)(1)(iii) revised, 64 FR 67486, Dec. 2, 1999, effective 
Dec. 2, 1999; introductory text and paras. (a) and (b) 
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; paras. (g) and (h) removed and reserved, 65 FR 
54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) 
revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 
2000; paras. (a)(1) and (b)(1) revised, 67 FR 70847, Nov. 
27, 2002, effective Jan. 1, 2003; introductory text and para. 

(b) revised and para. (g) added, 69 FR 56481, Sept. 21, 
2004, effective Nov. 22, 2004] 

§ 1.20 Post issuance fees. 

(a) For providing a certificate of correction for 
applicant’s mistake (§ 1.323). . . . . . . . . . . . . $100.00 
(b) Processing fee for correcting inventorship in 
a patent (§ 1.324). . . . . . . . . . . . . . . . . . . . . . $130.00 
(c) In reexamination proceedings 


(1) For filing a request for ex parte reexamination 
(§ 1.510(a)). . . . . . . . . . . . . . . . . . . .$2,520.00 
(2) For filing a request for inter partes reexamination 
(§ 1.915(a)). . . . . . . . . . . . . . . . .$8,800.00 
(3) For filing with a request for reexamination 
or later presentation at any other time of each 
claim in independent form in excess of 3 and also in 
excess of the number of claims in independent form in 
the patent under reexamination: 
By a small entity (§ 1.27(a)) . $100.00 
By other than a small entity . $200.00 


(4) For filing with a request for reexamination 
or later presentation at any other time of each 
claim (whether dependent or independent) in excess 
of 20 and also in excess of the number of claims in the 
patent under reexamination (note that § 1.75(c) indicates 
how multiple dependent claims are considered 
for fee calculation purposes): 
By a small entity (§ 1.27 (a)) . . $25.00 
By other than a small entity . . . $50.00 


(5) If the excess claims fees required by paragraphs 
(c)(3) and (c)(4) are not paid with the request 
for reexamination or on later presentation of the 
claims for which the excess claims fees are due, the 
fees required by paragraphs (c)(3) and (c)(4) must be 
paid or the claims canceled by amendment prior to the 
expiration of the time period set for reply by the 
Office in any notice of fee deficiency in order to avoid 
abandonment. 


(d) For filing each statutory disclaimer 

(§ 1.321): 
By a small entity (§ 1.27(a)) . . . . $65.00 
By other than a small entity . . . . $130.00 

(e) For maintaining an original or reissue 
patent, except a design or plant patent, based on an 
application filed on or after December 12, 1980, in 
force beyond four years, the fee being due by three 
years and six months after the original grant: 

By small entity (§ 1.27(a)) . . . . . $450.00 

 

By other than a small entity . . . . $900.00 tive Sept. 20, 1993; paras. (c), (e)-(g), (i)(1) and (j), 59 FR 

(f) For maintaining an original or reissue 
patent, except a design or plant patent, based on an 
application filed on or after December 12, 1980, in 
force beyond eight years, the fee being due by seven 
years and six months after the original grant: 
By a small entity (§ 1.27(a)) . . $1,150.00 
By other than a small entity . . . $2,300.00 


(g) For maintaining an original or reissue 
patent, except a design or plant patent, based on an 
application filed on or after December 12, 1980, in 
force beyond twelve years, the fee being due by 
eleven years and six months after the original grant: 
By a small entity (§ 1.27(a)) . . $1,900.00 
By other than a small entity . . . $3,800.00 


(h) Surcharge for paying a maintenance fee during 
the six-month grace period following the expiration 
of three years and six months, seven years and six 
months, and eleven years and six months after the 
date of the original grant of a patent based on an 
application filed on or after December 12, 1980: 
By a small entity (§ 1.27(a)) . . . . $65.00 
By other than a small entity . . . . $130.00 


(i) Surcharge for accepting a maintenance fee 
after expiration of a patent for non-timely payment of 
a maintenance fee where the delay in payment is 
shown to the satisfaction of the Director to have been 
— 
(1) Unavoidable. . . . . . . . . . . . . . . . $700.00 
(2) Unintentional . . . . . . . . . . . . . .$1,640.00 




(j) For filing an application for extension of the 
term of a patent 
(1) Application for extension under 
§1.740 . . . . . . . . . . . . . . . . . . . . . . .$1,120.00 
(2) Initial application for interim extension 
under § 1.790 . . . . . . . . . . . . . . . . . . . . . . . . $420.00 
(3) Subsequent application for interim extension 
under § 1.790. . . . . . . . . . . . . . . . . . . . . $220.00 


[Added 47 FR 41273, Sept. 17, 1982, effective date 
Oct. 1, 1982; paras. (k), (l) and (m) added, 49 FR 34724, 
Aug. 31, 1984, effective date Nov. 1, 1984; paras. (c), (f), 

(g) and (m), 50 FR 9379, Mar. 7, 1985, effective date May 
8, 1985; 50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 
1985; 51 FR 28057, Aug. 4, 1986; 52 FR 9394, Mar. 24, 
1987; paras. (a)-(n), 54 FR 6893, Feb. 15, 1989, 54 FR 
8053, Feb. 24, 1989, effective Apr. 17, 1989; revised 56 FR 
65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. (a), 
(c), (e)-(g) and (i), 57 FR 38190, Aug. 21, 1992, effective 
Oct. 1, 1992; para. (i), 58 FR 44277, Aug. 20, 1993, effec43736, 
Aug. 25, 1994, effective Oct. 1, 1994; para. 

(j) revised, 60 FR 25615, May 12, 1995, effective July 11, 
1995; paras. (c), (e)-(g), (i)(2), & (j)(1) amended, 60 FR 
41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a), (e) 

-(g), (i)(1), (i)(2), and (j)(1) -(j)(3) amended, 61 FR 39585, 
July 30, 1996, effective Oct. 1, 1996; paras. (c), (e) - (g), 
(i)(1), (i)(2), and (j)(1) - (j)(3) amended, 62 FR 40450, July 
29, 1997, effective Oct. 1, 1997; paras. (d)-(g) revised, 
63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; para. 

(e) revised, 64 FR 67774, Dec. 3, 1999, effective Dec. 29, 
1999; paras. (e)-(g) revised, 65 FR 49193, Aug. 11, 2000, 
effective Oct. 1, 2000; paras. (b) and (d)-(h) revised, 65 FR 
78958, Dec. 18, 2000; para. (b) corrected, 65 FR 80755, 
Dec. 22, 2000; para. (c) revised, 65 FR 76756, Dec. 7, 
2000, effective Feb. 5, 2001; paras. (e)-(g) revised, 66 FR 
39447, July 31, 2001, effective Oct. 1, 2001; paras. (e) 
through (g) revised, 67 FR 70847, Nov. 27, 2002, effective 
Jan. 1, 2003; para. (i) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; paras. (e) through (g) revised, 68 FR 
41532, July 14, 2003, effective Oct. 1, 2003; paras. (e) 
through (g) revised, 69 FR 52604, Aug. 27, 2004, effective 
Oct. 1, 2004; paras. (c)-(g) revised, 70 FR 3880, Jan. 27, 
2005, effective Dec. 8, 2004] 

§ 1.21 Miscellaneous fees and charges. 

The Patent and Trademark Office has established 
the following fees for the services indicated: 

(a) Registration of attorneys and agents: 

(l) For admission to examination for registration 
to practice: 
(i) Application Fee (non-refundable) 
. . . . . . . . . . . . . . . . . . . . . . . $40.00 
(ii) Registration examination fee 


(A) For test administration by commercial 
entity . . . . . . . . . . . . . . . . . . . . . ..$200.00 
(B) For test administration by the 
USPTO . . . . . . . . . . . . . . . . . . . . . ..$450.00 
(2) On registration to practice or grant of limited 
recognition under § 11.9(b) or (c). . . . . . $100.00 
(3) For reinstatement to practice . . . . $40.00 


(4) For certificate of good standing as an 
attorney or agent . . . . . . . . . . . . . . . . . . . . . . . $10.00 
(i) Suitable for framing . . . . . . . . . $20.00 
(ii) [Reserved] 
(5) For review of decision: 




(i) By the Director of Enrollment and 
Discipline under § 11.2(c) . . . . . . . . . . . . . . . $130.00 
(ii) Of the Director of Enrollment and Discipline 
under § 11.2(d). . . . . . . . . . . . . . . . . . $130.00 


 

(6)-(9)[Reserved] 

(10) On application by a person for recognition 
or registration after disbarment or suspension on 
ethical grounds, or resignation pending disciplinary 
proceedings in any other jurisdiction; on application 
by a person for recognition or registration who is 
asserting rehabilitation from prior conduct that 
resulted in an adverse decision in the Office regarding 
the person’s moral character; and on application by a 
person for recognition or registration after being convicted 
of a felony or crime involving moral turpitude 
or breach of fiduciary duty; on petition for reinstatement 
by a person excluded or suspended on ethical 
grounds, or excluded on consent from practice before 
the Office . . . . . . . . . . . . . . . . . . . . . . .$1,600.00 

(b) Deposit accounts: 

(1) For establishing a deposit account 
. . . . . . . . . . . . . . . . . . . . . . . . . $10.00 
(2) Service charge for each month when 

the balance at the end of the month is below 
$1,000 . . . . . . . . . . . . . . . . . . . . . . . . . $25.00 

(3) Service charge for each month when 
the balance at the end of the month is below 
$300 for restricted subscription deposit accounts 
used exclusively for subscription order of patent 
copies as issued . . . . . . . . . . . . . . . . . . . . . . . $25.00 
(c) Disclosure document: For filing a disclosure 
document . . . . . . . . . . . . . . . . . . . . . . . . . . . $10.00 
(d) Delivery box: Local delivery box rental, per 
annum . . . . . . . . . . . . . . . . . . . . . . . . . . . $50.00 
(e) International type search reports: For preparing 
an international type search report of an 
international type search made at the time of the 
first action on the merits in a national patent 
application . . . . . . . . . . . . . . . . . . . . . . . . . . . $40.00 
(f) [Reserved] 
(g) Self-service copy charge, per page . . $0.25 




(h) For recording each assignment, agreement, 
or other paper relating to the property in a patent or 
application, per property . . . . . . . . . . . . . . . . . $40.00 
(i) Publication in Official Gazette: For publication 
in the Official Gazette of a notice of the availability 
of an application or a patent for licensing or sale: 
Each application or patent . . . . . . $25.00 


(j) Labor charges for services, per hour or fraction 
thereof . . . . . . . . . . . . . . . . . . . . . . . . . . . $40.00 
(k) For items and services that the Director 
finds may be supplied, for which fees are not speci


fied by statute or by this part, such charges as may be 
determined by the Director with respect to each such 
item or service . . . . . . . . . . . . . . . . . . . . . .Actual cost 

(l) [Reserved] 

(m) For processing each payment refused 
(including a check returned “unpaid”) or charged back 
by a financial institution . . . . . . . . . . . . . . . . . $50.00 
(n) For handling an application in which 
proceedings are terminated pursuant to § 
1.53(e) . . . . . . . . . . . . . . . . . . . . . . . . . . $130.00 


(o) [Reserved] 

[Added 47 FR 41274, Sept. 17, 1982, effective date 
Oct. 1, 1982; paras. (b) and (l), 49 FR 553, Jan. 4, 1984, 
effective date Apr. 1, 1984; paras. (a)(5) and (6) added, 
50 FR 5171, Feb. 6, 1985, effective date Apr. 8, 1985; 
50 FR 31825, Aug. 6, 1985, effective date Oct. 5, 1985; 
paras. (a), (b)(1), (d)-(j), (l)-(m), 54 FR 6893, Feb. 15, 
1989; 54 FR 8053, Feb. 24, 1989; 54 FR 9432, March 7, 
1989, effective Apr. 17, 1989; para. (n) added 54 FR 47518, 
Nov. 15, 1989, effective Jan. 16, 1990; paras. (o)-(q) added 
54 FR 50942, Dec.11, 1989, effective Feb. 12, 1990; paras. 
(a)-(c), (e)-(h), (j)-(l) & (n) amended, 56 FR 65142, Dec. 
13, 1991, effective Dec. 16, 1991; paras. (p) and (q) 
deleted, 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 
1991; paras. (a)(1), (a)(5), (a)(6), (b)(2), (b)(3), (e) and (i), 
57 FR 38190, Aug. 21, 1992, effective Oct. 1, 1992; para. 

(p) added, 57 FR 38190, Aug. 21, 1992, effective Oct. 1, 
1992; para. (p) deleted, 59 FR 43736, Aug.25, 1994, effective 
Oct. 1, 1994; para. (l) amended, 60 FR 20195, Apr. 25, 
1995, effective June 8, 1995; para. (a)(1) amended, 60 FR 
41018, Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(1), 
(a)(3) and (a)(6) revised, 61 FR 39585, July 30, 1996, 
effective Oct. 1, 1996; paras. (a)(1)(ii), (a)(6), and (j) 
amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 
1997; paras. (l) & (n) revised, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997; para. (a)(6)(ii) revised, 63 FR 
67578, Dec. 8, 1998, effective Dec. 8, 1998; para (m) 
revised, 65 FR 33452, May 24, 2000, effective July 24, 
2000; para. (a)(6) revised, 65 FR 49193, Aug. 11, 2000, 
effective Oct. 1, 2000; para. (o) removed and reserved, 
66 FR 39447, July 31, 2001, effective Oct. 1, 2001; para. 
(k) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 
2003; para. (a) revised, 69 FR 35427, June 24, 2004, effective 
July 26, 2004; para. (l) removed and reserved, 70 FR 
30360, May 26, 2005, effective July 1, 2005] 


§ 1.22 Fees payable in advance. 

(a) Patent fees and charges payable to the 
United States Patent and Trademark Office are 
required to be paid in advance; that is, at the time of 

 

requesting any action by the Office for which a fee or 
charge is payable with the exception that under § 1.53 
applications for patent may be assigned a filing date 
without payment of the basic filing fee. 

(b) All fees paid to the United States Patent and 
Trademark Office must be itemized in each individual 
application, patent, or other proceeding in such a 
manner that it is clear for which purpose the fees are 
paid. The Office may return fees that are not itemized 
as required by this paragraph. The provisions of § 
1.5(a) do not apply to the resubmission of fees 
returned pursuant to this paragraph. 

[48 FR 2708, Jan. 20, 1983, effective Feb. 27, 1983; 
para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; revised, 68 FR 48286, Aug. 13, 2003, effective 
Sept. 12, 2003] 

§ 1.23 Methods of payment. 

(a) All payments of money required for United 
States Patent and Trademark Office fees, including 
fees for the processing of international applications 
(§ 1.445), shall be made in U.S. dollars and in the 
form of a cashier’s or certified check, Treasury note, 
national bank notes, or United States Postal Service 
money order. If sent in any other form, the Office may 
delay or cancel the credit until collection is made. 
Checks and money orders must be made payable to 
the Director of the United States Patent and Trademark 
Office. (Checks made payable to the Commissioner 
of Patents and Trademarks will continue to be 
accepted.) Payments from foreign countries must be 
payable and immediately negotiable in the United 
States for the full amount of the fee required. Money 
sent to the Office by mail will be at the risk of the 
sender, and letters containing money should be registered 
with the United States Postal Service. 
(b) Payments of money required for United 
States Patent and Trademark Office fees may also be 
made by credit card, except for replenishing a deposit 
account. Payment of a fee by credit card must specify 
the amount to be charged to the credit card and such 
other information as is necessary to process the 
charge, and is subject to collection of the fee. The 
Office will not accept a general authorization to 
charge fees to a credit card. If credit card information 
is provided on a form or document other than a form 
provided by the Office for the payment of fees by 


credit card, the Office will not be liable if the credit 
card number becomes public knowledge. 

[43 FR 20462, May 11, 1978; revised, 64 FR 48900, 
Sept. 8, 1999, effective Oct. 30, 1999; revised, 65 FR 
33452, May 24, 2000, effective June 5, 2000; para. (b) 
revised, 69 FR 43751, July 22, 2004, effective Aug. 23, 
2004] 

§ 1.24 [Reserved] 

[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 
48 FR 2708, Jan. 20, 1983, effective date Feb. 27, 1983; 
50 FR 31825, Aug. 6, 1985, effective Oct. 5, 1985; 51 FR 
28057, Aug. 4, 1986; 56 FR 65142, Dec. 13, 1991, effective 
Dec. 16, 1991; para. (b) revised, 65 FR 54604, Sept. 8, 
2000, effective Nov. 7, 2000; removed and reserved, 65 FR 
57024, Sept. 20, 2000, effective Nov. 29, 2000] 

§ 1.25 Deposit accounts. 

(a) For the convenience of attorneys, and the 
general public in paying any fees due, in ordering services 
offered by the Office, copies of records, etc., 
deposit accounts may be established in the Patent and 
Trademark Office upon payment of the fee for establishing 
a deposit account § 1.21(b)(1)). A minimum 
deposit of $1,000 is required for paying any fee due or 
in ordering any services offered by the Office. However, 
a minimum deposit of $300 may be paid to 
establish a restricted subscription deposit account 
used exclusively for subscription order of patent copies 
as issued. At the end of each month, a deposit 
account statement will be rendered. A remittance 
must be made promptly upon receipt of the statement 
to cover the value of items or services charged to the 
account and thus restore the account to its established 
normal deposit value. An amount sufficient to cover 
all fees, services, copies, etc., requested must always 
be on deposit. Charges to accounts with insufficient 
funds will not be accepted. A service charge 
(§ 1.21(b)(2)) will be assessed for each month that the 
balance at the end of the month is below $1,000. For 
restricted subscription deposit accounts, a service 
charge (§ 1.21(b)(3)) will be assessed for each month 
that the balance at the end of the month is below $300. 
(b) Filing, issue, appeal, international-type 
search report, international application processing, 
petition, and post-issuance fees may be charged 
against these accounts if sufficient funds are on 


 

deposit to cover such fees. A general authorization to 
charge all fees, or only certain fees, set forth in §§ 

1.16 to 1.18 to a deposit account containing sufficient 
funds may be filed in an individual application, either 
for the entire pendency of the application or with a 
particular paper filed. An authorization to charge fees 
under § 1.16 in an international application entering 
the national stage under 35 U.S.C. 371 will be treated 
as an authorization to charge fees under § 1.492. An 
authorization to charge fees set forth in § 1.18 to a 
deposit account is subject to the provisions of § 
1.311(b). An authorization to charge to a deposit 
account the fee for a request for reexamination pursuant 
to § 1.510 or § 1.913 and any other fees required 
in a reexamination proceeding in a patent may also be 
filed with the request for reexamination. An authorization 
to charge a fee to a deposit account will not be 
considered payment of the fee on the date the authorization 
to charge the fee is effective as to the particular 
fee to be charged unless sufficient funds are present in 
the account to cover the fee. 

(c) A deposit account holder may replenish the 
deposit account by submitting a payment to the 
United States Patent and Trademark Office. A payment 
to replenish a deposit account must be submitted 
by one of the methods set forth in paragraphs (c)(1), 
(c)(2), (c)(3), or (c)(4) of this section. 
(1) A payment to replenish a deposit account 
may be submitted by electronic funds transfer through 
the Federal Reserve Fedwire System, which requires 
that the following information be provided to the 
deposit account holder’s bank or financial institution: 
(i) Name of the Bank, which is Treas 
NYC (Treasury New York City); 
(ii) Bank Routing Code, which is 
021030004; 


(iii) United States Patent and Trademark 
Office account number with the Department of the 
Treasury, which is 13100001; and 

(iv) The deposit account holder’s company 
name and deposit account number. 
(2) A payment to replenish a deposit account 
may be submitted by electronic funds transfer over 
the Office’s Internet Web site (www.uspto.gov). 
(3) A payment to replenish a deposit account 
may be submitted by mail with the USPS to: Director 
of the United States Patent and Trademark Office, 


P.O. Box 70541, Chicago, Illinois 60673. 

(4) A payment to replenish a deposit account 
may be submitted by mail with a private delivery service 
or by hand-carrying the payment to: Director of 
the U.S. Patent and Trademark Office, Attn: Deposit 
Accounts, 2051 Jamieson Avenue, Suite 300, Alexandria, 
Virginia 22314. 

[49 FR 553, Jan. 4, 1984, effective Apr. 1, 1984; 47 FR 
41274, Sept. 17, 1982, effective Oct. 1,1982; 50 FR 31826, 
Aug. 6, 1985, effective Oct. 5, 1985; para. (b) revised, 65 
FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para (b) 
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; 
para. (b) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 
2002; para. (c) added, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; para. (c)(2) revised, 69 FR 43751, July 
22, 2004, effective Aug. 23, 2004; para. (c)(4) revised, 70 
FR 56119, Sept. 26, 2005, effective Nov. 25, 2005] 

§ 1.26 Refunds. 

(a) The Director may refund any fee paid by 
mistake or in excess of that required. A change of purpose 
after the payment of a fee, such as when a party 
desires to withdraw a patent filing for which the fee 
was paid, including an application, an appeal, or a 
request for an oral hearing, will not entitle a party to a 
refund of such fee. The Office will not refund 
amounts of twenty-five dollars or less unless a refund 
is specifically requested, and will not notify the payor 
of such amounts. If a party paying a fee or requesting 
a refund does not provide the banking information 
necessary for making refunds by electronic funds 
transfer (31 U.S.C. 3332 and 31 CFR part 208), or 
instruct the Office that refunds are to be credited to a 
deposit account, the Director may require such information, 
or use the banking information on the payment 
instrument to make a refund. Any refund of a fee 
paid by credit card will be by a credit to the credit 
card account to which the fee was charged. 
(b) Any request for refund must be filed within 
two years from the date the fee was paid, except as 
otherwise provided in this paragraph or in § 1.28(a). If 
the Office charges a deposit account by an amount 
other than an amount specifically indicated in an 
authorization (§ 1.25(b)), any request for refund based 
upon such charge must be filed within two years from 
the date of the deposit account statement indicating 
such charge, and include a copy of that deposit 
account statement. The time periods set forth in this 
paragraph are not extendable. 


 

(c) If the Director decides not to institute 
reexamination proceeding, for ex parte reexaminations 
filed under § 1.510, a refund of $1,690 will be 
made to the reexamination requester. For inter partes 
reexaminations filed under § 1.913, a refund of 
$7,970 will be made to the reexamination requester. 
The reexamination requester should indicate the form 
in which any refund should be made (e.g., by check, 
electronic funds transfer, credit to a deposit account, 
etc.). Generally, reexamination refunds will be issued 
in the form that the original payment was provided. 

[47 FR 41274, Sept. 17, 1982, effective Oct. 1, 1982; 
50 FR 31826 Aug. 6, 1985, effective Oct. 5, 1985; para. (c), 
54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; para. 
(c), 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; 
paras. (a) and (c), 57 FR 38190, Aug. 21, 1992, effective 
Oct. 1,1992; para. (a) revised, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997; para. (a) revised and para. (b) 
added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; 
para. (c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 
5, 2001; paras. (a) & (c) revised, 68 FR 14332, Mar. 25, 
2003, effective May 1, 2003; para. (a) revised, 68 FR 
48286, Aug. 13, 2003, effective Sept. 12, 2003] 

§ 1.27 Definition of small entities and establishing status as a small entity to permit payment of small entity fees; when 
determination of entitlement to small 
entity status and notification of loss of 
entitlement to small entity status are 
required; fraud on the Office. 

(a) Definition of small entities. A small entity 
as used in this chapter means any party (person, small 
business concern, or nonprofit organization) under 
paragraphs (a)(1) through (a)(3) of this section. 
(1) Person. A person, as used in paragraph 


(c) of this section, means any inventor or other individual 
(e.g., an individual to whom an inventor has 
transferred some rights in the invention) who has not 
assigned, granted, conveyed, or licensed, and is under 
no obligation under contract or law to assign, grant, 
convey, or license, any rights in the invention. An 
inventor or other individual who has transferred some 
rights in the invention to one or more parties, or is 
under an obligation to transfer some rights in the 
invention to one or more parties, can also qualify for 
small entity status if all the parties who have had 
rights in the invention transferred to them also qualify 


a for small entity status either as a person, small business 
concern, or nonprofit organization under this section. 


(2) Small business concern. A small business 
concern, as used in paragraph (c) of this section, 
means any business concern that: 
(i) Has not assigned, granted, conveyed, 
or licensed, and is under no obligation under contract 
or law to assign, grant, convey, or license, any rights 
in the invention to any person, concern, or organization 
which would not qualify for small entity status as 
a person, small business concern, or nonprofit organization; 
and 
(ii) Meets the size standards set forth in 13 
CFR 121.801 through 121.805 to be eligible for 
reduced patent fees. Questions related to standards for 
a small business concern may be directed to: Small 
Business Administration, Size Standards Staff, 409 
Third Street, SW., Washington, DC 20416. 
(3) Nonprofit Organization. A nonprofit 
organization, as used in paragraph (c) of this section, 
means any nonprofit organization that: 
(i) Has not assigned, granted, conveyed, 
or licensed, and is under no obligation under contract 
or law to assign, grant, convey, or license, any rights 
in the invention to any person, concern, or organiza


a tion which would not qualify as a person, small business 
concern, or a nonprofit organization; and 

(ii) Is either: 

(A) A university or other institution of 
higher education located in any country; 
(B) An organization of the type 
described in section 501(c)(3) of the Internal Revenue 
Code of 19 86 (26 U.S.C. 501(c)(3)) and exempt from 
taxation under section 501(a) of the Internal Revenue 
Code (26 U.S.C. 501(a)); 
(C) Any nonprofit scientific or educational 
organization qualified under a nonprofit organization 
statute of a state of this country (35 U.S.C. 201 
(i)); or 
(D) Any nonprofit organization located 
in a foreign country which would qualify as a nonprofit 
organization under paragraphs (a)(3)(ii)(B) of 
this section or (a)(3)(ii)(C) of this section if it were 
located in this country. 
(4) License to a Federal agency. (i) For persons 
under paragraph (a)(1) of this section, a license 
to the Government resulting from a rights determina-


 

tion under Executive Order 10096 does not constitute 
a license so as to prohibit claiming small entity status. 

(ii) For small business concerns and nonprofit 
organizations under paragraphs (a)(2) and (a)(3) 
of this section, a license to a Federal agency resulting 
from a funding agreement with that agency pursuant 
to 35 U.S.C. 202 (c)(4) does not constitute a license 
for the purposes of paragraphs (a)(2)(i) and (a)(3)(i) 
of this section. 
(5) Security Interest. A security interest does 
not involve an obligation to transfer rights in the 
invention for the purposes of paragraphs (a)(1) 
through (a)(3) of this section unless the security interest 
is defaulted upon. 
(b) Establishment of small entity status permits 
payment of reduced fees. 
(1) A small entity, as defined in paragraph (a) 
of this section, who has properly asserted entitlement 
to small entity status pursuant to paragraph (c) of this 
section will be accorded small entity status by the 
Office in the particular application or patent in which 
entitlement to small entity status was asserted. Establishment 
of small entity status allows the payment of 
certain reduced patent fees pursuant to 35 U.S.C. 
41(h)(1). 
(2) Submission of an original utility application 
in compliance with the Office electronic filing 
system by an applicant who has properly asserted 
entitlement to small entity status pursuant to paragraph 
(c) of this section in that application allows the 
payment of a reduced filing fee pursuant to 35 U.S.C. 
41(h)(3). 
(c) Assertion of small entity status. Any party 
(person, small business concern or nonprofit organization) 
should make a determination, pursuant to 
paragraph (f) of this section, of entitlement to be 
accorded small entity status based on the definitions 
set forth in paragraph (a) of this section, and must, in 
order to establish small entity status for the purpose of 
paying small entity fees, actually make an assertion of 
entitlement to small entity status, in the manner set 
forth in paragraphs (c)(1) or (c)(3) of this section, in 
the application or patent in which such small entity 
fees are to be paid. 
(1) Assertion by writing. Small entity status 
may be established by a written assertion of entitlement 
to small entity status. A written assertion must: 


(i) Be clearly identifiable; 

(ii) Be signed (see paragraph (c)(2) of this 
section); and 

(iii) Convey the concept of entitlement to 
small entity status, such as by stating that applicant is 
a small entity, or that small entity status is entitled to 
be asserted for the application or patent. While no 
specific words or wording are required to assert small 
entity status, the intent to assert small entity status 
must be clearly indicated in order to comply with the 
assertion requirement. 

(2) Parties who can sign and file the written 
assertion. The written assertion can be signed by: 
(i) One of the parties identified in § 
1.33(b) (e.g., an attorney or agent registered with the 
Office), § 3.73(b) of this chapter notwithstanding, 
who can also file the written assertion; 
(ii) At least one of the individuals identified 
as an inventor (even though a § 1.63 executed 
oath or declaration has not been submitted), notwithstanding 
§ 1.33(b)(4), who can also file the written 
assertion pursuant to the exception under § 1.33(b) of 
this part; or 


(iii) An assignee of an undivided part interest, 
notwithstanding §§ 1.33(b)(3) and 3.73(b) of 
this chapter, but the partial assignee cannot file 
the assertion without resort to a party identified under 
§ 1.33(b) of this part. 

(3) Assertion by payment of the small entity 
basic filing or basic national fee. The payment, by 
any party, of the exact amount of one of the small 
entity basic filing fees set forth in §§ 1.16(a), 1.16(b), 
1.16(c), 1.16(d), 1.16(e), or the small entity basic 
national fee set forth in § 1.492(a), will be treated as a 
written assertion of entitlement to small entity status 
even if the type of basic filing or basic national fee is 
inadvertently selected in error. 
(i) If the Office accords small entity status 
based on payment of a small entity basic filing or 
basic national fee under paragraph (c)(3) of this section 
that is not applicable to that application, any balance 
of the small entity fee that is applicable to that 
application will be due along with the appropriate surcharge 
set forth in § 1.16(f), or § 1.16(g). 
(ii) The payment of any small entity fee 
other than those set forth in paragraph (c)(3) of this 
section (whether in the exact fee amount or not) will 
not be treated as a written assertion of entitlement to 


 

small entity status and will not be sufficient to establish 
small entity status in an application or a patent. 

(4) Assertion required in related, continuing, 
and reissue applications. Status as a small entity must 
be specifically established by an assertion in each 
related, continuing and reissue application in which 
status is appropriate and desired. Status as a small 
entity in one application or patent does not affect the 
status of any other application or patent, regardless of 
the relationship of the applications or patents. The 
refiling of an application under § 1.53 as a continuation, 
divisional, or continuation-in-part application 
(including a continued prosecution application under 
§ 1.53(d)), or the filing of a reissue application, 
requires a new assertion as to continued entitlement to 
small entity status for the continuing or reissue application. 
(d) When small entity fees can be paid. Any fee, 
other than the small entity basic filing fees and the 
small entity national fees of paragraph (c)(3) of this 
section, can be paid in the small entity amount only 
if it is submitted with, or subsequent to, the submission 
of a written assertion of entitlement to 
small entity status, except when refunds are permitted 
by § 1.28(a). 
(e) Only one assertion required. 


(1) An assertion of small entity status need 
only be filed once in an application or patent. Small 
entity status, once established, remains in effect until 
changed pursuant to paragraph (g)(1) of this section. 
Where an assignment of rights or an obligation to 
assign rights to other parties who are small entities 
occurs subsequent to an assertion of small entity status, 
a second assertion is not required. 
(2) Once small entity status is withdrawn 
pursuant to paragraph (g)(2) of this section, a new 
written assertion is required to again obtain small 
entity status. 
(f) Assertion requires a determination of entitlement to pay small entity fees. Prior to submitting an 
assertion of entitlement to small entity status in an 
application, including a related, continuing, or reissue 
application, a determination of such entitlement 
should be made pursuant to the requirements of paragraph 
(a) of this section. It should be determined that 
all parties holding rights in the invention qualify for 
small entity status. The Office will generally not question 
any assertion of small entity status that is made in 


accordance with the requirements of this section, but 
note paragraph (h) of this section. 

(g)(1) New determination of entitlement to small 
entity status is needed when issue and maintenance 
fees are due. Once status as a small entity has been 
established in an application or patent, fees as a small 
entity may thereafter be paid in that application or 
patent without regard to a change in status until the 
issue fee is due or any maintenance fee is due. 

(2) Notification of loss of entitlement to small 
entity status is required when issue and maintenance 
fees are due. Notification of a loss of entitlement to 
small entity status must be filed in the application or 
patent prior to paying, or at the time of paying, the 
earliest of the issue fee or any maintenance fee due 
after the date on which status as a small entity as 
defined in paragraph (a) of this section is no longer 
appropriate. The notification that small entity status is 
no longer appropriate must be signed by a party identified 
in § 1.33(b). Payment of a fee in other than the 
small entity amount is not sufficient notification that 
small entity status is no longer appropriate. 
(h) Fraud attempted or practiced on the Office. 


(1) Any attempt to fraudulently establish status 
as a small entity, or pay fees as a small entity, shall 
be considered as a fraud practiced or attempted on the 
Office. 
(2) Improperly, and with intent to deceive, 
establishing status as a small entity, or paying fees as 
a small entity, shall be considered as a fraud practiced 
or attempted on the Office. 


[47 FR 40139, Sept. 10, 1982, added effective Oct. 1, 
1982; para. (c) added, 47 FR 43276, Sept. 30, 1982; paras. 
(b), (c), and (d), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 
1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec.1, 
1997; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 
8, 2000; para. (a) revised, 69 FR 56481, Sept. 21, 2004, 
effective Sept. 21, 2004; paras. (b) and (c)(3) revised, 70 
FR 3880, Jan. 27, 2005, effective Dec. 8, 2004] 

§ 1.28 Refunds when small entity status is later 

established; how errors in small entity 

status are excused. 

(a) Refunds based on later establishment of 
small entity status. A refund pursuant to § 1.26, based 
on establishment of small entity status, of a portion of 
fees timely paid in full prior to establishing status as a 
small entity may only be obtained if an assertion 

 

under § 1.27(c) and a request for a refund of the 
excess amount are filed within three months of the 
date of the timely payment of the full fee. The three-
month time period is not extendable under § 1.136. 
Status as a small entity is waived for any fee by the 
failure to establish the status prior to paying, at the 
time of paying, or within three months of the date of 
payment of, the full fee. 

(b) Date of payment. 

(1) The three-month period for requesting a 
refund, pursuant to paragraph (a) of this section, starts 
on the date that a full fee has been paid; 
(2) The date when a deficiency payment is 
paid in full determines the amount of deficiency that 
is due, pursuant to paragraph (c) of this section. 
(c) How errors in small entity status are 
excused. If status as a small entity is established in 
good faith, and fees as a small entity are paid in good 
faith, in any application or patent, and it is later discovered 
that such status as a small entity was established 
in error, or that through error the Office was not 
notified of a loss of entitlement to small entity status 
as required by § 1.27(g)(2), the error will be excused 
upon: compliance with the separate submission and 
itemization requirements of paragraphs (c)(1) and 
(c)(2) of this section, and the deficiency payment 
requirement of paragraph (c)(2) of this section: 
(1) Separate submission required for each 
application or patent. Any paper submitted under this 
paragraph must be limited to the deficiency payment 
(all fees paid in error), required by paragraph (c)(2) of 
this section, for one application or one patent. Where 
more than one application or patent is involved, separate 
submissions of deficiency payments (e.g., 
checks) and itemizations are required for each application 
or patent. See § 1.4(b). 
(2) Payment of deficiency owed. The deficiency 
owed, resulting from the previous erroneous 
payment of small entity fees, must be paid. 
(i) Calculation of the deficiency owed. 
The deficiency owed for each previous fee erroneously 
paid as a small entity is the difference between 
the current fee amount (for other than a small entity) 
on the date the deficiency is paid in full and the 
amount of the previous erroneous (small entity) fee 
payment. The total deficiency payment owed is the 
sum of the individual deficiency owed amounts for 
each fee amount previously erroneously paid as a 


small entity. Where a fee paid in error as a small entity 
was subject to a fee decrease between the time the fee 
was paid in error and the time the deficiency is paid in 
full, the deficiency owed is equal to the amount (previously) 
paid in error; 

(ii) Itemization of the deficiency payment. 
An itemization of the total deficiency payment is 
required. The itemization must include the following 
information: 
(A) Each particular type of fee that was 
erroneously paid as a small entity, (e.g., basic statutory 
filing fee, two-month extension of time fee) 
along with the current fee amount for a non-small 
entity; 
(B) The small entity fee actually paid, 
and when. This will permit the Office to differentiate, 
for example, between two one-month extension of 
time fees erroneously paid as a small entity but on different 
dates; 
(C) The deficiency owed amount (for 
each fee erroneously paid); and 
(D) The total deficiency payment owed, 
which is the sum or total of the individual deficiency 
owed amounts set forth in paragraph (c)(2)(ii)(C) of 
this section. 
(3) Failure to comply with requirements. If 
the requirements of paragraphs (c)(1) and (c)(2) of 
this section are not complied with, such failure will 
either: be treated as an authorization for the Office to 
process the deficiency payment and charge the processing 
fee set forth in § 1.17(i), or result in a requirement 
for compliance within a one-month non-
extendable time period under § 1.136(a) to avoid the 
return of the fee deficiency paper, at the option of the 
Office. 
(d) Payment of deficiency operates as notification of loss of status. Any deficiency payment (based 
on a previous erroneous payment of a small entity fee) 
submitted under paragraph (c) of this section will be 
treated under § 1.27(g)(2) as a notification of a loss of 
entitlement to small entity status. 


[47 FR 40140, Sept. 10, 1982, added effective Oct. 1, 
1982; para. (a), 49 FR 553, Jan. 4, 1984, effective Apr. 1, 
1984; para. (d)(2), 57 FR 2021, Jan. 17, 1992, effective 
Mar. 16, 1992; para. (c) revised, 58 FR 54504, Oct. 22, 
1993, effective Jan. 3, 1994; para. (a) revised, 60 FR 
20195, Apr. 25, 1995, effective June 8, 1995; paras. (a) & 

(c) revised, 62 FR 53131, Oct. 10 1997, effective Dec. 1, 

 

1997; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 
7, 2000] 

Subpart B — National Processing 
Provisions


PROSECUTION OF APPLICATION AND 
APPOINTMENT OF ATTORNEY OR AGENT 

§ 1.31 Applicant may be represented by one or 

more patent practitioners or joint inven

tors. 

An applicant for patent may file and prosecute his 
or her own case, or he or she may give a power of 
attorney so as to be represented by one or more patent 
practitioners or joint inventors. The United States 
Patent and Trademark Office cannot aid in the selection 
of a patent practitioner. 

[50 FR 5171, Feb. 6, 1985, effective Mar. 8, 1985; 
revised, 69 FR 29865, May 26, 2004, effective June 25, 
2004; revised 69 FR 35427, June 24, 2004, effective July 
26, 2004; revised, 70 FR 56119, Sept. 26, 2005, effective 
Nov. 25, 2005] 

§ 1.32 Power of attorney. 

(a) Definitions. 

(1) Patent practitioner means a registered 
patent attorney or registered patent agent under § 
(2) Power of attorney means a written document 
by which a principal authorizes one or more 
patent practitioners or joint inventors to act on his or 
her behalf. 
(3) Principal means either an applicant for 
patent (§ 1.41(b)) or an assignee of entire interest of 
the applicant for patent or in a reexamination proceeding, 
the assignee of the entirety of ownership of a 
patent. The principal executes a power of attorney 
designating one or more patent practitioners or joint 
inventors to act on his or her behalf. 
(4) Revocation means the cancellation by the 
principal of the authority previously given to a patent 
practitioner or joint inventor to act on his or her 
behalf. 
(5) Customer Number means a number that 
may be used to: 


11.6. 

(i) Designate the correspondence address 
of a patent application or patent such that the correspondence 
address for the patent application, patent or 
other patent proceeding would be the address associated 
with the Customer Number; 
(ii) Designate the fee address (§ 1.363) of a 
patent such that the fee address for the patent would 
be the address associated with the Customer Number; 
and 


(iii) Submit a list of patent practitioners 
such that those patent practitioners associated with the 
Customer Number would have power of attorney. 

(b) A power of attorney must: 
(1) Be in writing; 


(2) Name one or more representatives in 
compliance with (c) of this section; 
(3) Give the representative power to act on 
behalf of the principal; and 
(4) Be signed by the applicant for patent (§ 
1.41(b)) or the assignee of the entire interest of the 
applicant. 
(c) A power of attorney may only name as representative: 
(1) One or more joint inventors (§ 1.45); 


(2) Those registered patent practitioners 
associated with a Customer Number; 
(3) Ten or fewer patent practitioners, stating 
the name and registration number of each patent practitioner. 
Except as provided in paragraph (c)(1) or 
(c)(2) of this section, the Office will not recognize 
more than ten patent practitioners as being of record 
in an application or patent. If a power of attorney 
names more than ten patent practitioners, such power 
of attorney must be accompanied by a separate paper 
indicating which ten patent practitioners named in the 
power of attorney are to be recognized by the Office 
as being of record in the application or patent to 
which the power of attorney is directed. 


[Added, 69 FR 29865, May 26, 2004, effective June 
25, 2004; paras. (a) and (c)(3) revised, 70 FR 56119, Sept. 
26, 2005, effective Nov. 25, 2005] 

§ 1.33 Correspondence respecting patent applications, reexamination proceedings, and 
other proceedings. 

(a) Correspondence address and daytime telephone number. When filing an application, a correspondence 
address must be set forth in either an 

 

application data sheet (§ 1.76), or elsewhere, in a 
clearly identifiable manner, in any paper submitted 
with an application filing. If no correspondence 
address is specified, the Office may treat the mailing 
address of the first named inventor (if provided, see 
§§ 1.76(b)(1) and 1.63(c)(2)) as the correspondence 
address. The Office will direct all notices, official letters, 
and other communications relating to the application 
to the correspondence address. The Office will 
not engage in double correspondence with an applicant 
and a patent practitioner, or with more than one 
patent practitioner except as deemed necessary by the 
Director. If more than one correspondence address is 
specified in a single document, the Office will select 
one of the specified addresses for use as the correspondence 
address and, if given, will select the 
address associated with a Customer Number over a 
typed correspondence address. For the party to whom 
correspondence is to be addressed, a daytime telephone 
number should be supplied in a clearly identifiable 
manner and may be changed by any party who 
may change the correspondence address. The correspondence 
address may be changed as follows: 

(1) Prior to filing of § 1.63 oath or declaration by any of the inventors. If a § 1.63 oath or declaration 
has not been filed by any of the inventors, the 
correspondence address may be changed by the party 
who filed the application. If the application was filed 
by a patent practitioner, any other patent practitioner 
named in the transmittal papers may also change the 
correspondence address. Thus, the inventor(s), any 
patent practitioner named in the transmittal papers 
accompanying the original application, or a party that 
will be the assignee who filed the application, may 
change the correspondence address in that application 
under this paragraph. 
(2) Where a § 1.63 oath or declaration has 
been filed by any of the inventors. If a § 1.63 oath or 
declaration has been filed, or is filed concurrent with 
the filing of an application, by any of the inventors, 
the correspondence address may be changed by the 
parties set forth in paragraph (b) of this section, 
except for paragraph (b)(2). 
(b) Amendments and other papers. Amendments 
and other papers, except for written assertions 
pursuant to § 1.27(c)(2)(ii) of this part, filed in the 
application must be signed by: 


(1) A patent practitioner of record appointed 
in compliance with § 1.32(b); 
(2) A patent practitioner not of record who 
acts in a representative capacity under the provisions 
of § 1.34; 
(3) An assignee as provided for under 
§ 3.71(b) of this chapter; or 
(4) All of the applicants (§ 1.41(b)) for 
patent, unless there is an assignee of the entire interest 
and such assignee has taken action in the application 
in accordance with § 3.71 of this chapter. 
(c) All notices, official letters, and other communications 
for the patent owner or owners in a reexamination 
proceeding will be directed to the attorney 
or agent of record (see § 1.32(b)) in the patent file at 
the address listed on the register of patent attorneys 
and agents maintained pursuant to §§ 11.5 and 11.11 
of this subchapter, or, if no attorney or agent is of 
record, to the patent owner or owners at the address or 
addresses of record. Amendments and other papers 
filed in a reexamination proceeding on behalf of the 
patent owner must be signed by the patent owner, or if 
there is more than one owner by all the owners, or by 
an attorney or agent of record in the patent file, or by a 
registered attorney or agent not of record who acts in 
a representative capacity under the provisions of § 


1.34. Double correspondence with the patent owner or 
owners and the patent owner’s attorney or agent, or 
with more than one attorney or agent, will not be 
undertaken. If more than one attorney or agent is of 
record and a correspondence address has not been 
specified, correspondence will be held with the last 
attorney or agent made of record. 

(d) A “correspondence address” or change 
thereto may be filed with the Patent and Trademark 
Office during the enforceable life of the patent. The 
“correspondence address” will be used in any correspondence 
relating to maintenance fees unless a separate 
“fee address” has been specified. See § 1.363 for 
“fee address” used solely for maintenance fee purposes. 
(e) A change of address filed in a patent application 
or patent does not change the address for a 
patent practitioner in the roster of patent attorneys and 
agents. See § 11.11 of this title. 


[36 FR 12617, July 2, 1971; 46 FR 29181, May 29, 
1981; para. (d) added, 49 FR 34724, Aug. 31, 1984, effective 
Nov. 1, 1984; para. (c), 50 FR 5171, Feb. 6, 1985, 

 

effective Mar. 8, 1985; paras. (a) & (b) revised, 62 FR 
53131, Oct. 10 1997, effective Dec. 1, 1997; paras. (a) and 

(b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; (a) introductory text, (b) introductory 
text, and paras. (b)(1), (b)(2) and (c) revised, 69 FR 29865, 
May 26, 2004, effective June 25, 2004; para. (c) revised, 69 
FR 35427, June 24, 2004, effective July 26, 2004; para. (c) 
revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; 
para. (a) introductory text revised, paras. (a)(1), (b)(1), and 
(b)(2) revised, and para. (e) added, 70 FR 56119, Sept. 26, 
2005, effective Nov. 25, 2005] 

§ 1.34 Acting in a representative capacity. 

When a patent practitioner acting in a representative 
capacity appears in person or signs a paper in 
practice before the United States Patent and Trademark 
Office in a patent case, his or her personal 
appearance or signature shall constitute a representation 
to the United States Patent and Trademark Office 
that under the provisions of this subchapter and the 
law, he or she is authorized to represent the particular 
party on whose behalf he or she acts. In filing such a 
paper, the patent practitioner must set forth his or her 
registration number, his or her name and signature. 
Further proof of authority to act in a representative 
capacity may be required. 

[46 FR 29181, May 29, 1981; para. (a), 50 FR 5171, 
Feb. 6, 1985, effective Mar. 6, 1985; revised, 65 FR 54604, 
Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR 
29865, May 26, 2004, effective June 25, 2004; revised, 70 
FR 56119, Sept. 26, 2005, effective Nov. 25, 2005] 

§ 1.36 Revocation of power of attorney; withdrawal 
of patent attorney or agent. 
(a) A power of attorney, pursuant to § 1.32(b), 

may be revoked at any stage in the proceedings of a 
case by an applicant for patent (§ 1.41(b)) or an 
assignee of the entire interest of the applicant, or the 
owner of the entire interest of a patent. A power of 
attorney to the patent practitioners associated with a 
Customer Number will be treated as a request to 
revoke any powers of attorney previously given. 
Fewer than all of the applicants (or fewer than all of 
the assignees of the entire interest of the applicant or, 
in a reexamination proceeding, fewer than all the 
owners of the entire interest of a patent) may revoke 
the power of attorney only upon a showing of sufficient 
cause, and payment of the petition fee set forth 
in § 1.17(f). A patent practitioner will be notified of 
the revocation of the power of attorney. Where power 
of attorney is given to the patent practitioners associated 
with a Customer Number (§ 1.32(c)(2)), the practitioners 
so appointed will also be notified of the 
revocation of the power of attorney when the power 
of attorney to all of the practitioners associated with 
the Customer Number is revoked. The notice of revocation 
will be mailed to the correspondence address 
for the application (§ 1.33) in effect before the revocation. 
An assignment will not of itself operate as a 
revocation of a power previously given, but the 
assignee of the entire interest of the applicant may 
revoke previous powers of attorney and give another 
power of attorney of the assignee’s own selection as 
provided in § 1.32(b). 

(b) A registered patent attorney or patent agent 
who has been given a power of attorney pursuant to § 
1.32(b) may withdraw as attorney or agent of record 
upon application to and approval by the Director. The 
applicant or patent owner will be notified of the withdrawal 
of the registered patent attorney or patent 
agent. Where power of attorney is given to the patent 
practitioners associated with a Customer Number, a 
request to delete all of the patent practitioners associated 
with the Customer Number may not be granted if 
an applicant has given power of attorney to the patent 
practitioners associated with the Customer Number in 
an application that has an Office action to which a 
reply is due, but insufficient time remains for the 
applicant to file a reply. See § 41.5 of this title for 
withdrawal during proceedings before the Board of 
Patent Appeals and Interferences. 

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003; revised, 69 FR 29865, May 26, 2004, effective 
June 25, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004; para. (a) revised, 70 FR 56119, Sept. 
26, 2005, effective Nov. 25, 2005] 

WHO MAY APPLY FOR A PATENT 

§ 1.41 Applicant for patent. 

(a) A patent is applied for in the name or names 
of the actual inventor or inventors. 

 

(1) The inventorship of a nonprovisional 
application is that inventorship set forth in the oath or 
declaration as prescribed by § 1.63, except as provided 
for in §§ 1.53(d)(4) and 1.63(d). If an oath or 
declaration as prescribed by § 1.63 is not filed during 
the pendency of a nonprovisional application, the 
inventorship is that inventorship set forth in the application 
papers filed pursuant to § 1.53(b), unless applicant 
files a paper, including the processing fee set 
forth in § 1.17(i), supplying or changing the name or 
names of the inventor or inventors. 
(2) The inventorship of a provisional application 
is that inventorship set forth in the cover sheet as 
prescribed by § 1.51(c)(1). If a cover sheet as prescribed 
by § 1.51(c)(1) is not filed during the pendency 
of a provisional application, the inventorship is 
that inventorship set forth in the application papers 
filed pursuant to § 1.53(c), unless applicant files a 
paper including the processing fee set forth in 
§ 1.17(q), supplying or changing the name or names 
of the inventor or inventors. 
(3) In a nonprovisional application filed 
without an oath or declaration as prescribed by § 1.63 
or a provisional application filed without a cover 
sheet as prescribed by § 1.51(c)(1), the name, residence, 
and citizenship of each person believed to be 
an actual inventor should be provided when the application 
papers pursuant to § 1.53(b) or § 1.53(c) are 
filed. 
(4) The inventorship of an international 
application entering the national stage under 
35 U.S.C. 371 is that inventorship set forth in the 
international application, which includes any change 
effected under PCT Rule 92bis. See § 1.497(d) and (f) 
for filing an oath or declaration naming an inventive 
entity different from the inventive entity named in the 
international application, or if a change to the inventive 
entity has been effected under PCT Rule 92bis 
subsequent to the execution of any declaration filed 
under PCT Rule 4.17(iv) (§ 1.48(f)(1) does not apply 
to an international application entering the national 
stage under 35 U.S.C. 371). 
(b) Unless the contrary is indicated the word 
“applicant” when used in these sections refers to the 
inventor or joint inventors who are applying for a 
patent, or to the person mentioned in §§ 1.42, 1.43 or 


1.47 who is applying for a patent in place of the 
inventor. 

(c) Any person authorized by the applicant may 
physically or electronically deliver an application for 
patent to the Office on behalf of the inventor or inventors, 
but an oath or declaration for the application 
(§ 1.63) can only be made in accordance with § 1.64. 
(d) A showing may be required from the person 
filing the application that the filing was authorized 
where such authorization comes into question. 


[48 FR 2708, Jan. 20, 1983; 48 FR 4285, Jan. 31, 
1983; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; paras. (a) and (c) revised, 65 FR 54604, 
Sept. 8, 2000, effective Nov. 7, 2000; para. (a)(4) revised, 
67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002] 

§ 1.42 When the inventor is dead. 

In case of the death of the inventor, the legal representative 
(executor, administrator, etc.) of the 
deceased inventor may make the necessary oath or 
declaration, and apply for and obtain the patent. 
Where the inventor dies during the time intervening 
between the filing of the application and the granting 
of a patent thereon, the letters patent may be issued to 
the legal representative upon proper intervention. 

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983] 

§ 1.43 When the inventor is insane or legally 
incapacitated. 

In case an inventor is insane or otherwise legally 
incapacitated, the legal representative (guardian, conservator, 
etc.) of such inventor may make the necessary 
oath or declaration, and apply for and obtain the 
patent. 

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983] 

§ 1.44 [Reserved] 

[Removed and reserved, 65 FR 54604, Sept. 8, 2000, 
effective Sept. 8, 2000] 

§ 1.45 Joint inventors. 

(a) Joint inventors must apply for a patent 
jointly and each must make the required oath or declaration: 
neither of them alone, nor less than the entire 
number, can apply for a patent for an invention 
invented by them jointly, except as provided in § 1.47. 

 

(b) Inventors may apply for a patent jointly 
even though 
(1) They did not physically work together or 
at the same time, 
(2) Each inventor did not make the same type 
or amount of contribution, or 
(3) Each inventor did not make a contribution 
to the subject matter of every claim of the application. 
(c) If multiple inventors are named in a nonprovisional 
application, each named inventor must have 
made a contribution, individually or jointly, to the 
subject matter of at least one claim of the application 
and the application will be considered to be a joint 
application under 35 U.S.C. 116. If multiple inventors 
are named in a provisional application, each named 
inventor must have made a contribution, individually 
or jointly, to the subject matter disclosed in the provisional 
application and the provisional application will 
be considered to be a joint application under 
35 U.S.C. 116. 


[paras. (b) and (c), 47 FR 41274, Sept. 17, 1982, effective 
Oct. 1, 1982; 48 FR 2709, Jan. 20, 1983, effective Feb. 
27, 1983; 50 FR 9379, Mar. 7, 1985, effective May 8, 1985; 
para. (c) revised, 60 FR 20195, Apr. 25, 1995, effective 
June 8, 1995] 

§ 1.46 Assigned inventions and patents. 

In case the whole or a part interest in the invention 
or in the patent to be issued is assigned, the application 
must still be made or authorized to be made, and 
an oath or declaration signed, by the inventor or one 
of the persons mentioned in §§ 1.42, 1.43, or 1.47. 
However, the patent may be issued to the assignee or 
jointly to the inventor and the assignee as provided in 
§ 3.81. 

[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 
57 FR 29642, July 6, 1992, effective Sept. 4, 1992] 

§ 1.47 Filing when an inventor refuses to sign or 
cannot be reached. 

(a) If a joint inventor refuses to join in an application 
for patent or cannot be found or reached after 
diligent effort, the application may be made by the 
other inventor on behalf of himself or herself and the 
nonsigning inventor. The oath or declaration in such 
an application must be accompanied by a petition 
including proof of the pertinent facts, the fee set forth 
in § 1.17(g), and the last known address of the non-
signing inventor. The nonsigning inventor may subsequently 
join in the application by filing an oath or 
declaration complying with § 1.63. 

(b) Whenever all of the inventors refuse to execute 
an application for patent, or cannot be found or 
reached after diligent effort, a person to whom an 
inventor has assigned or agreed in writing to assign 
the invention, or who otherwise shows sufficient proprietary 
interest in the matter justifying such action, 
may make application for patent on behalf of and as 
agent for all the inventors. The oath or declaration in 
such an application must be accompanied by a petition 
including proof of the pertinent facts, a showing 
that such action is necessary to preserve the rights of 
the parties or to prevent irreparable damage, the fee 
set forth in § 1.17(g), and the last known address of all 
of the inventors. An inventor may subsequently join 
in the application by filing an oath or declaration 
complying with § 1.63. 
(c) The Office will send notice of the filing of 
the application to all inventors who have not joined in 
the application at the address(es) provided in the petition 
under this section, and publish notice of the filing 
of the application in the Official Gazette. The Office 
may dispense with this notice provision in a continuation 
or divisional application, if notice regarding the 
filing of the prior application was given to the non-
signing inventor(s). 


[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982; 
48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; revised, 
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; 
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; paras. (a) and (b) revised, 69 FR 56481, Sept. 21, 
2004, effective Nov. 22, 2004] 

§ 1.48 Correction of inventorship in a patent 

application, other than a reissue applica

tion, pursuant to 35 U.S.C. 116. 

(a) Nonprovisional application after oath/declaration filed. If the inventive entity is set forth in 
error in an executed § 1.63 oath or declaration in a 
nonprovisional application, and such error arose without 
any deceptive intention on the part of the person 
named as an inventor in error or on the part of the person 
who through error was not named as an inventor, 
the inventorship of the nonprovisional application 

 

may be amended to name only the actual inventor or 
inventors. Amendment of the inventorship requires: 

(1) A request to correct the inventorship that 
sets forth the desired inventorship change; 
(2) A statement from each person being 
added as an inventor and from each person being 
deleted as an inventor that the error in inventorship 
occurred without deceptive intention on his or her 
part; 
(3) An oath or declaration by the actual 
inventor or inventors as required by § 1.63 or as permitted 
by §§ 1.42, 1.43 or § 1.47; 
(4) The processing fee set forth in § 1.17(i); 
and 
(5) If an assignment has been executed by 
any of the original named inventors, the written consent 
of the assignee (see § 3.73(b) of this chapter). 
(b) Nonprovisional application—fewer inventors due to amendment or cancellation of claims. If 
the correct inventors are named in a nonprovisional 
application, and the prosecution of the nonprovisional 
application results in the amendment or cancellation 
of claims so that fewer than all of the currently named 
inventors are the actual inventors of the invention 
being claimed in the nonprovisional application, an 
amendment must be filed requesting deletion of the 
name or names of the person or persons who are not 
inventors of the invention being claimed. Amendment 
of the inventorship requires: 
(1) A request, signed by a party set forth in 
§ 1.33(b), to correct the inventorship that identifies 
the named inventor or inventors being deleted and 
acknowledges that the inventor’s invention is no 
longer being claimed in the nonprovisional application; 
and 
(2) The processing fee set forth in § 1.17(i). 


(c) Nonprovisional application—inventors 
added for claims to previously unclaimed subject matter. If a nonprovisional application discloses 
unclaimed subject matter by an inventor or inventors 
not named in the application, the application may be 
amended to add claims to the subject matter and name 
the correct inventors for the application. Amendment 
of the inventorship requires: 
(1) A request to correct the inventorship that 
sets forth the desired inventorship change; 
(2) A statement from each person being 
added as an inventor that the addition is necessitated 


by amendment of the claims and that the inventorship 
error occurred without deceptive intention on his or 
her part; 

(3) An oath or declaration by the actual 
inventors as required by § 1.63 or as permitted by §§ 
1.42, 1.43, or § 1.47; 
(4) The processing fee set forth in § 1.17(i); 
and 
(5) If an assignment has been executed by 
any of the original named inventors, the written consent 
of the assignee (see § 3.73(b) of this chapter). 
(d) Provisional application—adding omitted 
inventors. If the name or names of an inventor or 
inventors were omitted in a provisional application 
through error without any deceptive intention on the 
part of the omitted inventor or inventors, the provisional 
application may be amended to add the name or 
names of the omitted inventor or inventors. Amendment 
of the inventorship requires: 
(1) A request, signed by a party set forth in § 
1.33(b), to correct the inventorship that identifies the 
inventor or inventors being added and states that the 
inventorship error occurred without deceptive intention 
on the part of the omitted inventor or inventors; 
and 
(2) The processing fee set forth in § 1.17(q). 


(e) Provisional application—deleting the name 
or names of the inventor or inventors. If a person or 
persons were named as an inventor or inventors in a 
provisional application through error without any 
deceptive intention on the part of such person or persons, 
an amendment may be filed in the provisional 
application deleting the name or names of the person 
or persons who were erroneously named. Amendment 
of the inventorship requires: 
(1) A request to correct the inventorship that 
sets forth the desired inventorship change; 
(2) A statement by the person or persons 
whose name or names are being deleted that the 
inventorship error occurred without deceptive intention 
on the part of such person or persons; 
(3) The processing fee set forth in § 1.17(q); 
and 
(4) If an assignment has been executed by 
any of the original named inventors, the written consent 
of the assignee (see § 3.73(b) of this chapter). 


(f)(1) Nonprovisional application—filing executed oath/declaration corrects inventorship. If the 

 

correct inventor or inventors are not named on filing a 
nonprovisional application under § 1.53(b) without an 
executed oath or declaration under § 1.63 by any of 
the inventors, the first submission of an executed oath 
or declaration under § 1.63 by any of the inventors 
during the pendency of the application will act to correct 
the earlier identification of inventorship. See 
§§ 1.41(a)(4) and 1.497(d) and (f) for submission of 
an executed oath or declaration to enter the national 
stage under 35 U.S.C. 371 naming an inventive entity 
different from the inventive entity set forth in the 
international stage. 

(2) Provisional application filing cover sheet 
corrects inventorship. If the correct inventor or inventors 
are not named on filing a provisional application 
without a cover sheet under § 1.51(c)(1), the later submission 
of a cover sheet under § 1.51(c)(1) during the 
pendency of the application will act to correct the earlier 
identification of inventorship. 
(g) Additional information may be required. 
The Office may require such other information as may 
be deemed appropriate under the particular circumstances 
surrounding the correction of inventorship. 
(h) Reissue applications not covered. The provisions 
of this section do not apply to reissue applications. 
See §§ 1.171 and 1.175 for correction of 
inventorship in a patent via a reissue application. 
(i) Correction of inventorship in patent. See 
§ 1.324 for correction of inventorship in a patent. 
(j) Correction of inventorship in a contested 
case before the Board of Patent Appeals and Interferences. In a contested case under part 41, subpart D, of 
this title, a request for correction of an application 
must be in the form of a motion under § 41.121(a)(2) 
of this title and must comply with the requirements of 
this section. 


[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 
49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 
50 FR 9379, Mar. 7, 1985, effective May 8, 1985; para. (a), 
57 FR 56446, Nov. 30, 1992, effective Jan. 4, 1993; 
revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 
1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; para. (f)(1) revised, 67 FR 520, Jan. 4, 2002, 
effective Apr. 1, 2002; paras. (a)-(c) and (i) revised and 
para. (j) added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

THE APPLICATION 

§ 1.51 General requisites of an application. 

(a) Applications for patents must be made to 
the Director of the United States Patent and Trademark 
Office. 
(b) A complete application filed under 
§ 1.53(b) or § 1.53(d) comprises: 
(1) A specification as prescribed by 
35 U.S.C. 112, including a claim or claims, see §§ 


1.71 to 1.77; 

(2) An oath or declaration, see §§ 1.63 and 
1.68; 
(3) Drawings, when necessary, see §§ 1.81 to 
1.85; and 
(4) The prescribed filing fee, search fee, 
examination fee, and application size fee, see § 1.16. 
(c) A complete provisional application filed 
under § 1.53(c) comprises: 
(1) A cover sheet identifying: 


(i) The application as a provisional application, 
(ii) The name or names of the inventor or 
inventors, (see § 1.41(a)(2)), 
(iii) The residence of each named inventor, 
(iv) The title of the invention, 


(v) The name and registration number of 
the attorney or agent (if applicable), 
(vi) The docket number used by the person 
filing the application to identify the application (if 
applicable), 


(vii) The correspondence address, and 

(viii) The name of the U.S. Government 
agency and Government contract number (if the 
invention was made by an agency of the U.S. Government 
or under a contract with an agency of the U.S. 
Government); 

(2) A specification as prescribed by the first 
paragraph of 35 U.S.C. 112, see § 1.71; 
(3) Drawings, when necessary, see §§ 1.81 to 
1.85; and 
(4) The prescribed filing fee and application 
size fee, see § 1.16. 
(d) Applicants are encouraged to file an information 
disclosure statement in nonprovisional applications. 
See § 1.97 and § 1.98. No information 
disclosure statement may be filed in a provisional 
application. 


 

[42 FR 5593, Jan. 28, 1977; paras. (a) and (c), 47 FR 
41275, Sept. 17, 1982, effective Oct. 1, 1982; paras. (a) and 
(b), 48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 
para. (b), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 
1992; paras. (a) & (b) revised, 60 FR 20195, Apr. 25, 1995, 
effective June 8, 1995; revised, 62 FR 53131, Oct. 10, 
1997, effective Dec. 1, 1997; para. (b) revised, 65 FR 
54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (a) 
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 
2003; paras. (b)(4) and (c)(4) revised, 70 FR 3880, Jan. 27, 
2005, effective Dec. 8, 2004] 

§ 1.52 Language, paper, writing, margins, compact disc specifications. 

(a) Papers that are to become a part of the permanent United States Patent and Trademark Office 
records in the file of a patent application or a reexamination proceeding. 
(1) All papers, other than drawings, that are 
submitted on paper or by facsimile transmission, and 
are to become a part of the permanent United States 
Patent and Trademark Office records in the file of a 
patent application or reexamination proceeding, must 
be on sheets of paper that are the same size, not permanently 
bound together, and: 
(i) Flexible, strong, smooth, non-shiny, 
durable, and white; 
(ii) 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), with 
each sheet including a top margin of at least 2.0 cm 
(3/4 inch), a left side margin of at least 2.5 cm (1 
inch), a right side margin of at least 2.0 cm (3/4 inch), 
and a bottom margin of at least 2.0 cm (3/4 inch); 


(iii) Written on only one side in portrait orientation; 


(iv) Plainly and legibly written either by a 
typewriter or machine printer in permanent dark ink 
or its equivalent; and 
(v) Presented in a form having sufficient 
clarity and contrast between the paper and the writing 
thereon to permit the direct reproduction of readily 
legible copies in any number by use of photographic, 
electrostatic, photo-offset, and microfilming processes 
and electronic capture by use of digital imaging 
and optical character recognition. 
(2) All papers that are submitted on paper or 
by facsimile transmission and are to become a part of 
the permanent records of the United States Patent and 


Trademark Office should have no holes in the sheets 
as submitted. 

(3) The provisions of this paragraph and 
paragraph (b) of this section do not apply to the preprinted 
information on paper forms provided by the 
Office, or to the copy of the patent submitted on paper 
in double column format as the specification in a reissue 
application or request for reexamination. 
(4) See § 1.58 for chemical and mathematical 
formulae and tables, and § 1.84 for drawings. 
(5) Papers that are submitted electronically 
to the Office must be formatted and transmitted in 
compliance with the Office’s electronic filing system 
requirements. 
(b) The application (specification, including the 
claims, drawings, and oath or declaration) or reexamination proceeding and any amendments or corrections to the application or reexamination proceeding. 
(1) The application or proceeding and any 
amendments or corrections to the application (including 
any translation submitted pursuant to paragraph 
(d) of this section) or proceeding, except as provided 
for in § 1.69 and paragraph (d) of this section, must: 
(i) Comply with the requirements of paragraph 
(a) of this section; and 
(ii) Be in the English language or be 
accompanied by a translation of the application and a 
translation of any corrections or amendments into the 
English language together with a statement that the 
translation is accurate. 
(2) The specification (including the abstract 
and claims) for other than reissue applications and 
reexamination proceedings, and any amendments for 
applications (including reissue applications) and reexamination 
proceedings to the specification, except as 
provided for in §§ 1.821 through 1.825, must have: 
(i) Lines that are 1 1/2 or double spaced; 


(ii) Text written in a nonscript type font 
(e.g., Arial, Times Roman, or Courier, preferably a 
font size of 12) lettering style having capital letters 
which should be at least 0.3175 cm. (0.125 inch) high, 
but may be no smaller than 0.21 cm. (0.08 inch) high 
(e.g., a font size of 6); and 
(iii) Only a single column of text. 


(3) The claim or claims must commence on a 
separate physical sheet or electronic page (§ 1.75(h)). 
(4) The abstract must commence on a separate 
physical sheet or electronic page or be submitted 


 

as the first page of the patent in a reissue application 
or reexamination proceeding (§ 1.72(b)). 

(5) Other than in a reissue application or 
reexamination proceeding, the pages of the specification 
including claims and abstract must be numbered 
consecutively, starting with 1, the numbers being centrally 
located above or preferably below, the text. 
(6) Other than in a reissue application or 
reexamination proceeding, the paragraphs of the specification, 
other than in the claims or abstract, may be 
numbered at the time the application is filed, and 
should be individually and consecutively numbered 
using Arabic numerals, so as to unambiguously identify 
each paragraph. The number should consist of at 
least four numerals enclosed in square brackets, 
including leading zeros (e.g., [0001]). The numbers 
and enclosing brackets should appear to the right of 
the left margin as the first item in each paragraph, 
before the first word of the paragraph, and should be 
highlighted in bold. A gap, equivalent to approximately 
four spaces, should follow the number. Non-
text elements (e.g., tables, mathematical or chemical 
formulae, chemical structures, and sequence data) are 
considered part of the numbered paragraph around or 
above the elements, and should not be independently 
numbered. If a nontext element extends to the left 
margin, it should not be numbered as a separate and 
independent paragraph. A list is also treated as part of 
the paragraph around or above the list, and should not 
be independently numbered. Paragraph or section 
headers (titles), whether abutting the left margin or 
centered on the page, are not considered paragraphs 
and should not be numbered. 
(c)(1) Any interlineation, erasure, cancellation or 
other alteration of the application papers filed must be 
made before the signing of any accompanying oath or 
declaration pursuant to § 1.63 referring to those application 
papers and should be dated and initialed or 
signed by the applicant on the same sheet of paper. 
Application papers containing alterations made after 
the signing of an oath or declaration referring to those 
application papers must be supported by a supplemental 
oath or declaration under § 1.67. In either situation, 
a substitute specification (§ 1.125) is required if the 
application papers do not comply with paragraphs (a) 
and (b) of this section. 


(2) After the signing of the oath or declaration 
referring to the application papers, amendments 


may only be made in the manner provided by § 

1.121. 

(3) Notwithstanding the provisions of this 
paragraph, if an oath or declaration is a copy of the 
oath or declaration from a prior application, the application 
for which such copy is submitted may contain 
alterations that do not introduce matter that would 
have been new matter in the prior application. 
(d) A nonprovisional or provisional application 
may be in a language other than English. 
(1) Nonprovisional application. If a nonprovisional 
application is filed in a language other than 
English, an English language translation of the non-
English language application, a statement that the 
translation is accurate, and the processing fee set forth 
in § 1.17(i) are required. If these items are not filed 
with the application, applicant will be notified and 
given a period of time within which they must be filed 
in order to avoid abandonment. 
(2) Provisional application. If a provisional 
application is filed in a language other than English, 
an English language translation of the non-English 
language provisional application will not be required 
in the provisional application. See § 1.78(a) for the 
requirements for claiming the benefit of such provisional 
application in a nonprovisional application. 
(e) Electronic documents that are to become 
part of the permanent United States Patent and Trademark Office records in the file of a patent application 
or reexamination proceeding. 
(1) The following documents may be submitted 
to the Office on a compact disc in compliance with 
this paragraph: 
(i) A computer program listing (see § 
1.96); 
(ii) A “Sequence Listing” (submitted 
under § 1.821(c)); or 


(iii) Any individual table (see § 1.58) if the 
table is more than 50 pages in length, or if the total 
number of pages of all of the tables in an application 
exceeds 100 pages in length, where a table page is a 
page printed on paper in conformance with paragraph 

(b) of this section and § 1.58(c). 
(2) A compact disc as used in this part means 
a Compact Disc-Read Only Memory (CD-ROM) or a 
Compact Disc-Recordable (CD-R) in compliance 
with this paragraph. A CD-ROM is a “read-only” 
medium on which the data is pressed into the disc so 


 

that it cannot be changed or erased. A CD-R is a 
“write once” medium on which once the data is 
recorded, it is permanent and cannot be changed or 
erased. 

(3)(i) Each compact disc must conform to the 
International Standards Organization (ISO) 9660 standard, 
and the contents of each compact disc must be in 
compliance with the American Standard Code for 
Information Interchange (ASCII). CD-R discs must 
be finalized so that they are closed to further writing 
to the CD-R. 

(ii) Each compact disc must be enclosed in 
a hard compact disc case within an unsealed padded 
and protective mailing envelope and accompanied by 
a transmittal letter on paper in accordance with paragraph 
(a) of this section. The transmittal letter must 
list for each compact disc the machine format (e.g., 
IBM-PC, Macintosh), the operating system compatibility 
(e.g., MS-DOS, MS-Windows, Macintosh, 
Unix), a list of files contained on the compact disc 
including their names, sizes in bytes, and dates of creation, 
plus any other special information that is necessary 
to identify, maintain, and interpret (e.g., tables in 
landscape orientation should be identified as landscape 
orientation or be identified when inquired 
about) the information on the compact disc. Compact 
discs submitted to the Office will not be returned to 
the applicant. 
(4) Any compact disc must be submitted 
in duplicate unless it contains only the “Sequence 
Listing” in computer readable form required by 
§ 1.821(e). The compact disc and duplicate copy must 
be labeled “Copy 1” and “Copy 2,” respectively. The 
transmittal letter which accompanies the compact disc 
must include a statement that the two compact discs 
are identical. In the event that the two compact discs 
are not identical, the Office will use the compact disc 
labeled “Copy 1” for further processing. Any amendment 
to the information on a compact disc must be by 
way of a replacement compact disc in compliance 
with this paragraph containing the substitute information, 
and must be accompanied by a statement that the 
replacement compact disc contains no new matter. 
The compact disc and copy must be labeled “COPY 1 
REPLACEMENT MM/DD/YYYY” (with the month, 
day and year of creation indicated), and “COPY 2 
REPLACEMENT MM/DD/YYYY,” respectively. 


(5) The specification must contain an incorporation-
by-reference of the material on the compact 
disc in a separate paragraph (§ 1.77(b)(5)), identifying 
each compact disc by the names of the files contained 
on each of the compact discs, their date of creation 
and their sizes in bytes. The Office may require applicant 
to amend the specification to include in the paper 
portion any part of the specification previously submitted 
on compact disc. 
(6) A compact disc must also be labeled with 
the following information: 
(i) The name of each inventor (if known); 
(ii) Title of the invention; 






(iii) The docket number, or application 
number if known, used by the person filing the application 
to identify the application; and 

(iv) A creation date of the compact disc. 

(v) If multiple compact discs are submitted, 
the label shall indicate their order (e.g. “1 of X”). 
(vi) An indication that the disk is “Copy 1” 
or “Copy 2” of the submission. See paragraph (b)(4) 
of this section. 
(7) If a file is unreadable on both copies of 
the disc, the unreadable file will be treated as not having 
been submitted. A file is unreadable if, for example, 
it is of a format that does not comply with the 
requirements of paragraph (e)(3) of this section, it is 
corrupted by a computer virus, or it is written onto a 
defective compact disc. 
(f)(1) Any sequence listing in an electronic 
medium in compliance with §§ 1.52(e) and 1.821(c) 
or (e), and any computer program listing filed in an 
electronic medium in compliance with §§ 1.52(e) and 
1.96, will be excluded when determining the application 
size fee required by § 1.16(s) or § 1.492(j). For 
purposes of determining the application size fee 
required by § 1.16(s) or § 1.492(j), for an application 
the specification and drawings of which, excluding 
any sequence listing in compliance with § 1.821(c) or 
(e), and any computer program listing filed in an electronic 
medium in compliance with §§ 1.52(e) and 
1.96, are submitted in whole or in part on an electronic 
medium other than the Office electronic filing 
system, each three kilobytes of content submitted on 
an electronic medium shall be counted as a sheet of 
paper. 


(2) Except as otherwise provided in this paragraph, 
the paper size equivalent of the specification 


 

and drawings of an application submitted via the 
Office electronic filing system will be considered to 
be seventy-five percent of the number of sheets of 
paper present in the specification and drawings of the 
application when entered into the Office file wrapper 
after being rendered by the Office electronic filing 
system for purposes of determining the application 
size fee required by § 1.16(s). Any sequence listing in 
compliance with § 1.821(c) or (e), and any computer 
program listing in compliance with § 1.96, submitted 
via the Office electronic filing system will be 
excluded when determining the application size fee 
required by § 1.16(s) if the listing is submitted in 
ASCII text as part of an associated file. 

[43 FR 20462, May 11, 1978; paras. (a) and (d), 47 FR 
41275, Sept. 17, 1982, effective Oct. 1, 1982; para. (c), 
48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; para. 
(d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; para. 
(c), 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; 
paras. (a) and (b) amended, 61 FR 42790, Aug. 19, 1996, 
effective Sept. 23, 1996; paras. (a), (c) & (d) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (e) 
added, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000 
(effective date corrected, 65 FR 78958, Dec. 18, 2000); 
paras. (a), (b), and (c) revised, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000; para. (d) revised, 65 FR 57024, 
Sept. 20, 2000, effective Nov. 29, 2000; paras. (a) and (b) 
revised, 68 FR 38611, June 30, 2003, effective July 30, 
2003; section heading and paras. (b)(2)(ii), (e)(1)(iii) and 
(e)(3)(i)-(ii) revised, 69 FR 56481, Sept. 21, 2004, effective 
Oct. 21, 2004; section heading revised and para. (f) added; 
70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; para. (f) 
revised, 70 FR 30360, May 26, 2005, effective July 1, 
2005; para. (e)(5) revised, 70 FR 54259, Sept. 14, 2005, 
effective Sept. 14, 2005; paras. (a)(5), (a)(7), and (b)(7) 
removed and para. (a)(6) redesignated as (a)(5), 70 FR 
56119, Sept. 26, 2005, effective Nov. 25, 2005] 

§ 1.53 Application number, filing date, and 
completion of application. 
(a) Application number. Any papers received in 

the Patent and Trademark Office which purport to be 
an application for a patent will be assigned an application 
number for identification purposes. 

(b) Application filing requirements - Nonprovisional application. The filing date of an application 
for patent filed under this section, except for a provisional 
application under paragraph (c) of this section 
or a continued prosecution application under paragraph 
(d) of this section, is the date on which a specification 
as prescribed by 35 U.S.C. 112 containing a 
description pursuant to § 1.71 and at least one claim 
pursuant to § 1.75, and any drawing required by 
§ 1.81(a) are filed in the Patent and Trademark Office. 
No new matter may be introduced into an application 
after its filing date. A continuing application, which 
may be a continuation, divisional, or continuation-inpart 
application, may be filed under the conditions 
specified in 35 U.S.C. 120, 121 or 365(c) and 
§1.78(a). 

(1) A continuation or divisional application 
that names as inventors the same or fewer than all 
of the inventors named in the prior application may 
be filed under this paragraph or paragraph (d) of this 
section. 
(2) A continuation-in-part application (which 
may disclose and claim subject matter not disclosed in 
the prior application) or a continuation or divisional 
application naming an inventor not named in the prior 
application must be filed under this paragraph. 
(c) Application filing requirements - Provisional application. The filing date of a provisional 
application is the date on which a specification as prescribed 
by the first paragraph of 35 U.S.C. 112, and 
any drawing required by § 1.81(a) are filed in the 
Patent and Trademark Office. No amendment, other 
than to make the provisional application comply with 
the patent statute and all applicable regulations, may 
be made to the provisional application after the filing 
date of the provisional application. 
(1) A provisional application must also 
include the cover sheet required by § 1.51(c)(1), 
which may be an application data sheet (§ 1.76), or a 
cover letter identifying the application as a provisional 
application. Otherwise, the application will be 
treated as an application filed under paragraph (b) of 
this section. 
(2) An application for patent filed under 
paragraph (b) of this section may be converted to a 
provisional application and be accorded the original 
filing date of the application filed under paragraph (b) 
of this section. The grant of such a request for conversion 
will not entitle applicant to a refund of the fees 
that were properly paid in the application filed under 
paragraph (b) of this section. Such a request for conversion 
must be accompanied by the processing fee 


 

set forth in § 1.17(q) and be filed prior to the earliest 
of: 

(i) Abandonment of the application filed 
under paragraph (b) of this section; 
(ii) Payment of the issue fee on the application 
filed under paragraph (b) of this section; 


(iii) Expiration of twelve months after the 
filing date of the application filed under paragraph (b) 
of this section; or 

(iv) The filing of a request for a statutory 
invention registration under § 1.293 in the application 
filed under paragraph (b) of this section. 
(3) A provisional application filed under 
paragraph (c) of this section may be converted to a 
nonprovisional application filed under paragraph (b) 
of this section and accorded the original filing date of 
the provisional application. The conversion of a provisional 
application to a nonprovisional application 
will not result in either the refund of any fee properly 
paid in the provisional application or the application 
of any such fee to the filing fee, or any other fee, for 
the nonprovisional application. Conversion of a provisional 
application to a nonprovisional application 
under this paragraph will result in the term of any 
patent to issue from the application being measured 
from at least the filing date of the provisional application 
for which conversion is requested. Thus, applicants 
should consider avoiding this adverse patent 
term impact by filing a nonprovisional application 
claiming the benefit of the provisional application 
under 35 U.S.C. 119(e) (rather than converting the 
provisional application into a nonprovisional application 
pursuant to this paragraph). A request to convert 
a provisional application to a nonprovisional application 
must be accompanied by the fee set forth in 
§ 1.17(i) and an amendment including at least one 
claim as prescribed by the second paragraph of 
35 U.S.C. 112, unless the provisional application 
under paragraph (c) of this section otherwise contains 
at least one claim as prescribed by the second paragraph 
of 35 U.S.C.112. The nonprovisional application 
resulting from conversion of a provisional 
application must also include the filing fee, search 
fee, and examination fee for a nonprovisional application, 
an oath or declaration by the applicant pursuant 
to §§ 1.63, 1.162, or 1.175, and the surcharge required 
by § 1.16(f) if either the basic filing fee for a nonprovisional 
application or the oath or declaration was not 


present on the filing date accorded the resulting non-
provisional application (i.e., the filing date of the original 
provisional application). A request to convert a 
provisional application to a nonprovisional application 
must also be filed prior to the earliest of: 

(i) Abandonment of the provisional application 
filed under paragraph (c) of this section; or 
(ii) Expiration of twelve months after the 
filing date of the provisional application filed under 
paragraph (c) of this section. 
(4) A provisional application is not entitled 
to the right of priority under 35 U.S.C. 119 or 365(a) 
or § 1.55, or to the benefit of an earlier filing date 
under 35 U.S.C. 120, 121 or 365(c) or § 1.78 of any 
other application. No claim for priority under 
35 U.S.C. 119(e) or § 1.78(a)(4) may be made in a 
design application based on a provisional application. 
No request under § 1.293 for a statutory invention 
registration may be filed in a provisional application. 
The requirements of §§ 1.821 through 1.825 regarding 
application disclosures containing nucleotide and/ 
or amino acid sequences are not mandatory for provisional 
applications. 
(d) Application filing requirements - Continued 
prosecution (nonprovisional) application. 
(1) A continuation or divisional application 
(but not a continuation-in-part) of a prior nonprovisional 
application may be filed as a continued prosecution 
application under this paragraph, provided that: 
(i) The application is for a design patent; 


(ii) The prior nonprovisional application is 
a design application that is complete as defined by 
§1.51(b); and 


(iii) The application under this paragraph is 
filed before the earliest of: 

(A) Payment of the issue fee on the prior 
application, unless a petition under § 1.313(c) is 
granted in the prior application; 
(B) Abandonment of the prior application; 
or 
(C) Termination of proceedings on the 
prior application. 
(2) The filing date of a continued prosecution 
application is the date on which a request on a separate 
paper for an application under this paragraph is 
filed. An application filed under this paragraph: 


(i) Must identify the prior application; 

 

(ii) Discloses and claims only subject matter 
disclosed in the prior application; 

(iii) Names as inventors the same inventors 
named in the prior application on the date the application 
under this paragraph was filed, except as provided 
in paragraph (d)(4) of this section; 

(iv) Includes the request for an application 
under this paragraph, will utilize the file jacket and 
contents of the prior application, including the specification, 
drawings and oath or declaration from the 
prior application, to constitute the new application, 
and will be assigned the application number of the 
prior application for identification purposes; and 
(v) Is a request to expressly abandon the 
prior application as of the filing date of the request for 
an application under this paragraph. 
(3) The filing fee, search fee, and examination 
fee for a continued prosecution application filed 
under this paragraph are the basic filing fee as set 
forth in § 1.16(b), the search fee as set forth in § 1.16 
(l), and the examination fee as set forth in § 1.16(p). 
(4) An application filed under this paragraph 
may be filed by fewer than all the inventors named in 
the prior application, provided that the request for an 
application under this paragraph when filed is accompanied 
by a statement requesting deletion of the name 
or names of the person or persons who are not inventors 
of the invention being claimed in the new application. 
No person may be named as an inventor in an 
application filed under this paragraph who was not 
named as an inventor in the prior application on the 
date the application under this paragraph was filed, 
except by way of correction of inventorship under 
§ 1.48. 
(5) Any new change must be made in the 
form of an amendment to the prior application as it 
existed prior to the filing of an application under this 
paragraph. No amendment in an application under this 
paragraph (a continued prosecution application) may 
introduce new matter or matter that would have been 
new matter in the prior application. Any new specification 
filed with the request for an application under 
this paragraph will not be considered part of the original 
application papers, but will be treated as a substitute 
specification in accordance with § 1.125. 
(6) The filing of a continued prosecution 
application under this paragraph will be construed to 
include a waiver of confidentiality by the applicant 


under 35 U.S.C. 122 to the extent that any member of 
the public, who is entitled under the provisions of 
§ 1.14 to access to, copies of, or information concerning 
either the prior application or any continuing 
application filed under the provisions of this paragraph, 
may be given similar access to, copies of, or 
similar information concerning the other application 
or applications in the file jacket. 

(7) A request for an application under this 
paragraph is the specific reference required by 
35 U.S.C. 120 to every application assigned the application 
number identified in such request. No amendment 
in an application under this paragraph may 
delete this specific reference to any prior application. 
(8) In addition to identifying the application 
number of the prior application, applicant should furnish 
in the request for an application under this paragraph 
the following information relating to the prior 
application to the best of his or her ability: 
(i) Title of invention; 
(ii) Name of applicant(s); and 


(iii) Correspondence address. 


(9) See § 1.103(b) for requesting a limited 
suspension of action in an application filed under this 
paragraph. 
(e) Failure to meet filing date requirements. 


(1) If an application deposited under paragraph 
(b), (c), or (d) of this section does not meet the 
requirements of such paragraph to be entitled to a filing 
date, applicant will be so notified, if a correspondence 
address has been provided, and given a period 
of time within which to correct the filing error. If, 
however, a request for an application under paragraph 
(d) of this section does not meet the requirements of 
that paragraph because the application in which the 
request was filed is not a design application, and if the 
application in which the request was filed was itself 
filed on or after June 8, 1995, the request for an application 
under paragraph (d) of this section will be 
treated as a request for continued examination under § 
(2) Any request for review of a notification 
pursuant to paragraph (e)(1) of this section, or a notification 
that the original application papers lack a portion 
of the specification or drawing(s), must be by 
way of a petition pursuant to this paragraph accompanied 
by the fee set forth in § 1.17(f). In the absence of 
a timely (§ 1.181(f)) petition pursuant to this para-


1.114. 

 

graph, the filing date of an application in which the 
applicant was notified of a filing error pursuant to 
paragraph (e)(1) of this section will be the date the filing 
error is corrected. 

(3) If an applicant is notified of a filing error 
pursuant to paragraph (e)(1) of this section, but fails 
to correct the filing error within the given time period 
or otherwise timely (§ 1.181(f)) take action pursuant 
to this paragraph, proceedings in the application will 
be considered terminated. Where proceedings in an 
application are terminated pursuant to this paragraph, 
the application may be disposed of, and any filing 
fees, less the handling fee set forth in § 1.21(n), will 
be refunded. 
(f) Completion of application subsequent to filing—Nonprovisional (including continued prosecution or reissue) application. 
(1) If an application which has been accorded 
a filing date pursuant to paragraph (b) or (d) of this 
section does not include the basic filing fee, the search 
fee, or the examination fee, or if an application which 
has been accorded a filing date pursuant to paragraph 
(b) of this section does not include an oath or declaration 
by the applicant pursuant to §§ 1.63, 1.162 or § 
1.175, and applicant has provided a correspondence 
address (§1.33(a)), applicant will be notified and 
given a period of time within which to pay the basic 
filing fee, search fee, and examination fee, file an oath 
or declaration in an application under paragraph (b) of 
this section, and pay the surcharge if required by § 
1.16(f) to avoid abandonment. 
(2) If an application which has been accorded 
a filing date pursuant to paragraph (b) of this section 
does not include the basic filing fee, the search fee, 
the examination fee, or an oath or declaration by the 
applicant pursuant to §§ 1.63, 1.162 or § 1.175, and 
applicant has not provided a correspondence address 
(§ 1.33(a)), applicant has two months from the filing 
date of the application within which to pay the basic 
filing fee, search fee, and examination fee, file an oath 
or declaration, and pay the surcharge required by § 
1.16(f) to avoid abandonment. 
(3) If the excess claims fees required by §§ 
1.16(h) and (i) and multiple dependent claim fee 
required by § 1.16(j) are not paid on filing or on later 
presentation of the claims for which the excess claims 
or multiple dependent claim fees are due, the fees 
required by §§ 1.16(h), (i) and (j) must be paid or the 


claims canceled by amendment prior to the expiration 
of the time period set for reply by the Office in any 
notice of fee deficiency. If the application size fee 
required by § 1.16(s) (if any) is not paid on filing or 
on later presentation of the amendment necessitating a 
fee or additional fee under § 1.16(s), the fee required 
by § 1.16(s) must be paid prior to the expiration of the 
time period set for reply by the Office in any notice of 
fee deficiency in order to avoid abandonment. 

(4) This paragraph applies to continuation or 
divisional applications under paragraphs (b) or (d) of 
this section and to continuation-in-part applications 
under paragraph (b) of this section. See § 1.63(d) concerning 
the submission of a copy of the oath or declaration 
from the prior application for a continuation or 
divisional application under paragraph (b) of this section. 
(5) If applicant does not pay the basic filing 
fee during the pendency of the application, the Office 
may dispose of the application. 
(g) Completion of application subsequent to filing—Provisional application. 
(1) If a provisional application which has 
been accorded a filing date pursuant to paragraph (c) 
of this section does not include the cover sheet 
required by § 1.51(c)(1) or the basic filing fee (§ 
1.16(d)), and applicant has provided a correspondence 
address (§ 1.33(a)), applicant will be notified and 
given a period of time within which to pay the basic 
filing fee, file a cover sheet (§ 1.51(c)(1)), and pay the 
surcharge required by § 1.16(g) to avoid abandonment. 
(2) If a provisional application which has 
been accorded a filing date pursuant to paragraph 
(c) of this section does not include the cover 
sheet required by § 1.51(c)(1) or the basic filing fee 
(§ 1.16(d)), and applicant has not provided a correspondence 
address (§ 1.33(a)), applicant has two 
months from the filing date of the application 
within which to pay the basic filing fee, file a cover 
sheet (§ 1.51(c)(1)), and pay the surcharge required 
by § 1.16(g) to avoid abandonment. 
(3) If the application size fee required by § 
1.16(s) (if any) is not paid on filing, the fee required 
by § 1.16(s) must be paid prior to the expiration of the 
time period set for reply by the Office in any notice of 
fee deficiency in order to avoid abandonment. 


 

(4) If applicant does not pay the basic filing 
fee during the pendency of the application, the Office 
may dispose of the application. 
(h) Subsequent treatment of application - Non-
provisional (including continued prosecution) application. An application for a patent filed under 
paragraphs (b) or (d) of this section will not be placed 
on the files for examination until all its required parts, 
complying with the rules relating thereto, are 
received, except that certain minor informalities may 
be waived subject to subsequent correction whenever 
required. 
(i) Subsequent treatment of application - Provisional application. A provisional application for a 
patent filed under paragraph (c) of this section will 
not be placed on the files for examination and will 
become abandoned no later than twelve months after 
its filing date pursuant to 35 U.S.C. 111(b)(1). 
(j) Filing date of international application. The 
filing date of an international application designating 
the United States of America is treated as the filing 
date in the United States of America under PCT Article 
11(3), except as provided in 35 U.S.C. 102(e). 


[48 FR 2709, Jan. 20, 1983, effective Feb. 27, 1983; 
paras. (b) and (d), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 
1984; para. (c), 50 FR 31826, Aug. 6, 1985, effective Oct. 
5, 1985; paras. (c) and (d), 53 FR 47808, Nov. 28, 1988, 
effective Jan. 1, 1989; paras. (b) and (c), 54 FR 47518, 
Nov. 15, 1989, effective Jan. 16, 1990; paras. (a)-(e) 
revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 
1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; para. (d) revised, 63 FR 5734, Feb. 4, 1998, effective 
Feb. 4, 1998 (adopted as final, 63 FR 36184, Jul. 2, 
1998); paras. (c)(3), (c)(4) and (d) revised, 65 FR 14865, 
Mar. 20, 2000, effective May 29, 2000 (paras. (c)(4) and (d) 
adopted as final, 65 FR 50092, Aug. 16, 2000); para. (c)(3) 
revised, 65 FR 50092, Aug. 16, 2000, effective Aug. 16, 
2000; paras. (c)(1), (c)(2), (d)(4), (e)(2), (f), and (g) revised 
and para. (d)(10) added, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; para. (c)(4) revised, 65 FR 78958, Dec. 
18, 2000; para. (d)(9) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; paras. (d)(1), (d)(3) and (e)(1) 
revised, 68 FR 32376, May 30, 2003, effective July 14, 
2003; para. (d)(9) deleted and para. (d)(10) redesignated as 
para. (d)(9), 69 FR 29865, May 26, 2004, effective June 25, 
2004; para. (e)(2) revised, 69 FR 56481, Sept. 21, 2004, 
effective Nov. 22, 2004; paras (c)(3), (f) and (g) revised, 70 
FR 3880, Jan. 27, 2005, effective Dec., 8, 2004; paras. 
(d)(3) and (f)(5) revised, 70 FR 30360, May 26, 2005, 
effective July 1, 2005] 

§ 1.54 Parts of application to be filed together; 
filing receipt. 

(a) It is desirable that all parts of the complete 
application be deposited in the Office together; otherwise, 
a letter must accompany each part, accurately 
and clearly connecting it with the other parts of the 
application. See § 1.53(f) and (g) with regard to completion 
of an application. 
(b) Applicant will be informed of the application 
number and filing date by a filing receipt, unless 
the application is an application filed under § 1.53(d). 


[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 
para. (b) amended, 61 FR 42790, Aug. 19, 1996, effective 
Sept. 23, 1996; revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997] 

§ 1.55 Claim for foreign priority. 

(a) An applicant in a nonprovisional application 
may claim the benefit of the filing date of one or more 
prior foreign applications under the conditions specified 
in 35 U.S.C. 119(a) through (d) and (f), 172, and 
365(a) and (b). 

(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. 
(ii) 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. 


 

(2) 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. If the claim for priority or 
the certified copy of the foreign application is filed 
after the date the issue fee is paid, it must be accompanied 
by the processing fee set forth in § 1.17(i), but 
the patent will not include the priority claim unless 
corrected by a certificate of correction under 
35 U.S.C. 255 and § 1.323 
(3) The Office may require that the claim for 
priority and the certified copy of the foreign application 
be filed earlier than provided in paragraphs (a)(1) 
or (a)(2) of this section: 
(i) When the application becomes 
involved in an interference (see § 41.202 of this title), 
(ii) When necessary to overcome the date 
of a reference relied upon by the examiner, or 


(iii) When deemed necessary by the examiner. 


(4)(i) An English language translation of a non-
English language foreign application is not required 
except: 

(A) When the application is involved in 
an interference (see § 41.202 of this title), 
(B) When necessary to overcome the 
date of a reference relied upon by the examiner, or 
(C) When specifically required by the 
examiner. 
(ii) If an English language translation is 
required, it must be filed together with a statement 
that the translation of the certified copy is accurate. 
(b) An applicant in a nonprovisional application 
may under certain circumstances claim priority on the 
basis of one or more applications for an inventor’s 
certificate in a country granting both inventor’s certificates 
and patents. To claim the right of priority on the 
basis of an application for an inventor’s certificate in 
such a country under 35 U.S.C. 119(d), the applicant 
when submitting a claim for such right as specified in 
paragraph (a) of this section, shall include an affidavit 
or declaration. The affidavit or declaration must 
include a specific statement that, upon an investigation, 
he or she is satisfied that to the best of his or her 
knowledge, the applicant, when filing the application 
for the inventor’s certificate, had the option to file an 
application for either a patent or an inventor’s certifi


cate as to the subject matter of the identified claim or 
claims forming the basis for the claim of priority. 

(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 foreign application, 
unless previously submitted; 
(2) The surcharge set forth in § 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 Director may require additional information 
where there is a question whether the delay 
was unintentional. 


[para. (b), 48 FR 41275, Sept. 17, 1982, effective Oct. 
1 1982; 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 
para. (b), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 
para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 
1985; para. (a), 54 FR 6893, Feb. 15, 1989, effective Apr. 
17, 1989; para. (a) revised, 54 FR 9432, March 7, 1989, 
effective Apr. 17, 1989; para. (a), 54 FR 47518, Nov. 15, 
1989, effective Jan. 16, 1990; para. (a) revised, 58 FR 
54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 60 FR 
20195, Apr.25, 1995, effective June 8, 1995; para. (a) 
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997; para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; para. (a) revised and para. (c) added, 65 
FR 57024, Sept. 20, 2000, effective Nov. 29, 2000; paras. 

(a) and (c) corrected, 65 FR 66502, Nov. 6, 2000, effective 
Nov. 29, 2000; paras.(a)(1) and (c) revised, 66 FR 67087, 
Dec. 28, 2001, effective Dec. 28, 2001; para. (c)(3) revised, 
68 FR 14332, Mar. 25, 2003, effective May 1, 2003; paras. 
(a)(3) and (a)(4) revised, 69 FR 49959, Aug. 12, 2004, 
effective Sept. 13, 2004] 

 

§ 1.56 Duty to disclose information material to 
patentability. 

(a) A patent by its very nature is affected with a 
public interest. The public interest is best served, and 
the most effective patent examination occurs when, at 
the time an application is being examined, the Office 
is aware of and evaluates the teachings of all information 
material to patentability. Each individual associated 
with the filing and prosecution of a patent 
application has a duty of candor and good faith in 
dealing with the Office, which includes a duty to disclose 
to the Office all information known to that individual 
to be material to patentability as defined in this 
section. The duty to disclose information exists with 
respect to each pending claim until the claim is cancelled 
or withdrawn from consideration, or the application 
becomes abandoned. Information material 
to the patentability of a claim that is cancelled or 
withdrawn from consideration need not be submitted 
if the information is not material to the patentability 
of any claim remaining under consideration in the 
application. There is no duty to submit information 
which is not material to the patentability of any existing 
claim. The duty to disclose all information known 
to be material to patentability is deemed to be satisfied 
if all information known to be material to patentability 
of any claim issued in a patent was cited by the 
Office or submitted to the Office in the manner prescribed 
by §§ 1.97(b)-(d) and 1.98. However, no 
patent will be granted on an application in connection 
with which fraud on the Office was practiced or 
attempted or the duty of disclosure was violated 
through bad faith or intentional misconduct. The 
Office encourages applicants to carefully examine: 
(1) Prior art cited in search reports of a foreign 
patent office in a counterpart application, and 
(2) The closest information over which individuals 
associated with the filing or prosecution of a 
patent application believe any pending claim patentably 
defines, to make sure that any material information 
contained therein is disclosed to the Office. 
(b) Under this section, information is material 
to patentability when it is not cumulative to information 
already of record or being made of record in the 
application, and 


(1) It establishes, by itself or in combination 
with other information, a prima facie case of unpatentability 
of a claim; or 
(2) It refutes, or is inconsistent with, a position 
the applicant takes in: 
(i) Opposing an argument of unpatentability 
relied on by the Office, or 


(ii) Asserting an argument of patentability. 

A prima facie case of unpatentability is established 
when the information compels a conclusion that a 
claim is unpatentable under the preponderance of evidence, 
burden-of-proof standard, giving each term in 
the claim its broadest reasonable construction consistent 
with the specification, and before any consideration 
is given to evidence which may be submitted in 
an attempt to establish a contrary conclusion of patentability. 


(c) Individuals associated with the filing or 
prosecution of a patent application within the meaning 
of this section are: 
(1) Each inventor named in the application; 


(2) Each attorney or agent who prepares or 
prosecutes the application; and 
(3) Every other person who is substantively 
involved in the preparation or prosecution of the 
application and who is associated with the inventor, 
with the assignee or with anyone to whom there is an 
obligation to assign the application. 
(d) Individuals other than the attorney, agent or 
inventor may comply with this section by disclosing 
information to the attorney, agent, or inventor. 
(e) In any continuation-in-part application, the 
duty under this section includes the duty to disclose to 
the Office all information known to the person to be 
material to patentability, as defined in paragraph (b) 
of this section, which became available between the 
filing date of the prior application and the national or 
PCT international filing date of the continuation-inpart 
application. 


[42 FR 5593, Jan. 28, 1977; paras. (d) & (e) - (i), 
47 FR 21751, May 19, 1982, effective July 1, 1982; para. 
(c), 48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 
paras. (b) and (j), 49 FR 554, Jan. 4, 1984, effective Apr. 1, 
1984; paras. (d) and (h), 50 FR 5171, Feb. 6, 1985, effective 
Mar. 8, 1985; para. (e), 53 FR 47808, Nov. 28, 1988, 
effective Jan. 1, 1989; 57 FR 2021, Jan. 17, 1992, effective 
Mar. 16, 1992; para. (e) added, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000] 

 

§ 1.57 Incorporation by reference. 

(a) Subject to the conditions and requirements 
of this paragraph, if all or a portion of the specification 
or drawing(s) is inadvertently omitted from an 
application, but the application contains a claim under 
§ 1.55 for priority of a prior-filed foreign application, 
or a claim under § 1.78 for the benefit of a prior-filed 
provisional, nonprovisional, or international application, 
that was present on the filing date of the application, 
and the inadvertently omitted portion of the 
specification or drawing(s) is completely contained in 
the prior-filed application, the claim under § 1.55 or § 

1.78 shall also be considered an incorporation by reference 
of the prior-filed application as to the inadvertently 
omitted portion of the specification or 
drawing(s). 

(1) The application must be amended to 
include the inadvertently omitted portion of the specification 
or drawing(s) within any time period set by 
the Office, but in no case later than the close of prosecution 
as defined by § 1.114(b), or abandonment of 
the application, whichever occurs earlier. The applicant 
is also required to: 
(i) Supply a copy of the prior-filed application, 
except where the prior-filed application is an 
application filed under 35 U.S.C. 111; 
(ii) Supply an English language translation 
of any prior-filed application that is in a language 
other than English; and 


(iii) Identify where the inadvertently omitted 
portion of the specification or drawings can be 
found in the prior-filed application. 

(2) Any amendment to an international application 
pursuant to this paragraph shall be effective 
only as to the United States, and shall have no effect 
on the international filing date of the application. In 
addition, no request to add the inadvertently omitted 
portion of the specification or drawings in an international 
application designating the United States will 
be acted upon by the Office prior to the entry and 
commencement of the national stage (§ 1.491) or the 
filing of an application under 35 U.S.C. 111 (a) which 
claims benefit of the international application. 
(3) If an application is not otherwise entitled 
to a filing date under § 1.53(b), the amendment must 
be by way of a petition pursuant to this paragraph 
accompanied by the fee set forth in § 1.17(f). 


(b) Except as provided in paragraph (a) of 
this section, an incorporation by reference must be set 
forth in the specification and must: 
(1) Express a clear intent to incorporate by 
reference by using the root words “incorporat(e)” and 
“reference” (e.g., “incorporate by reference”); and 
(2) Clearly identify the referenced patent, 
application, or publication. 
(c) “Essential material” may be incorporated by 
reference, but only by way of an incorporation by reference 
to a U.S. patent or U.S. patent application publication, 
which patent or patent application 
publication does not itself incorporate such essential 
material by reference. “Essential material” is material 
that is necessary to: 
(1) Provide a written description of the 
claimed invention, and of the manner and process of 
making and using it, in such full, clear, concise, and 
exact terms as to enable any person skilled in the art 
to which it pertains, or with which it is most nearly 
connected, to make and use the same, and set forth the 
best mode contemplated by the inventor of carrying 
out the invention as required by the first paragraph of 
35 U.S.C. 112; 
(2) Describe the claimed invention in terms 
that particularly point out and distinctly claim the 
invention as required by the second paragraph of 35 


U.S.C. 112; or 

(3) Describe the structure, material, or acts 
that correspond to a claimed means or step for performing 
a specified function as required by the sixth 
paragraph of 35 U.S.C. 112. 
(d) Other material (“Nonessential material”) 
may be incorporated by reference to U.S. patents, 


U.S. patent application publications, foreign patents, 
foreign published applications, prior and concurrently 
filed commonly owned U.S. applications, or non-
patent publications. An incorporation by reference by 
hyperlink or other form of browser executable code is 
not permitted. 

(e) The examiner may require the applicant to 
supply a copy of the material incorporated by reference. 
If the Office requires the applicant to supply a 
copy of material incorporated by reference, the material 
must be accompanied by a statement that the copy 
supplied consists of the same material incorporated by 
reference in the referencing application. 

 

(f) Any insertion of material incorporated by 
reference into the specification or drawings of an 
application must be by way of an amendment to the 
specification or drawings. Such an amendment must 
be accompanied by a statement that the material being 
inserted is the material previously incorporated by reference 
and that the amendment contains no new matter. 
(g) An incorporation of material by reference 
that does not comply with paragraphs (b), (c), or (d) 
of this section is not effective to incorporate such 
material unless corrected within any time period set 
by the Office, but in no case later than the close of 
prosecution as defined by § 1.114(b), or abandonment 
of the application, whichever occurs earlier. In addition: 
(1) A correction to comply with paragraph 
(b)(1) of this section is permitted only if the application 
as filed clearly conveys an intent to incorporate 
the material by reference. A mere reference to material 
does not convey an intent to incorporate the material 
by reference. 
(2) A correction to comply with paragraph 
(b)(2) of this section is only permitted for material 
that was sufficiently described to uniquely identify the 
document. 


[Added, 69 FR 56481, Sept. 21, 2004, effective Oct. 
21, 2004; para. (a)(3) added, 69 FR 56481, Sept. 21, 2004, 
effective Nov. 22, 2004] 

§ 1.58 Chemical and mathematical formulae 
and tables. 

(a) The specification, including the claims, may 
contain chemical and mathematical formulae, but 
shall not contain drawings or flow diagrams. The 
description portion of the specification may contain 
tables, but the same tables may only be included in 
both the drawings and description portion of the specification 
if the application was filed under 35 U.S.C. 

371. Claims may contain tables either if necessary to 
conform to 35 U.S.C. 112 or if otherwise found to be 
desirable. 

(b) Tables that are submitted in electronic form 
(§§ 1.96(c) and 1.821(c)) must maintain the spatial 
relationships (e.g., alignment of columns and rows) of 
the table elements when displayed so as to visually 
preserve the relational information they convey. 

Chemical and mathematical formulae must be 
encoded to maintain the proper positioning of their 
characters when displayed in order to preserve their 
intended meaning. 

(c) Chemical and mathematical formulae and 
tables must be presented in compliance with § 1.52(a) 
and (b), except that chemical and mathematical formulae 
or tables may be placed in a landscape orientation 
if they cannot be presented satisfactorily in a 
portrait orientation. Typewritten characters used in 
such formulae and tables must be chosen from a block 
(nonscript) type font or lettering style having capital 
letters which should be at least 0.422 cm. (0.166 inch) 
high (e.g., preferably Arial, Times Roman, or Courier 
with a font size of 12), but may be no smaller than 

0.21 cm. (0.08 inch) high (e.g., a font size of 6). A 
space at least 0.64 cm. (1/4 inch) high should be provided 
between complex formulae and tables and the 
text. Tables should have the lines and columns of data 
closely spaced to conserve space, consistent with a 
high degree of legibility. 

[43 FR 20463, May 11, 1978; para. (b) removed and 
reserved, para. (c) amended, 61 FR 42790, Aug. 19, 1996, 
effective Sept. 23, 1996; para. (b) added, 65 FR 54604, 
Sept. 8, 2000, effective Nov. 7, 2000; revised, 69 FR 
56481, Sept. 21, 2004, effective Oct. 21, 2004] 

§ 1.59 Expungement of information or copy of 
papers in application file. 

(a)(1) Information in an application will not be 
expunged, except as provided in paragraph (b) of this 
section or § 41.7(a) of this title. 

(2) Information forming part of the original 
disclosure (i.e., written specification including the 
claims, drawings, and any preliminary amendment 
specifically incorporated into an executed oath or declaration 
under §§ 1.63 and 1.175) will not be 
expunged from the application file. 
(b) An applicant may request that the Office 
expunge information, other than what is excluded by 
paragraph (a)(2) of this section, by filing a petition 
under this paragraph. Any petition to expunge information 
from an application must include the fee set 
forth in § 1.17(g) and establish to the satisfaction of 
the Director that the expungement of the information 
is appropriate in which case a notice granting the petition 
for expungement will be provided. 


 

(c) Upon request by an applicant and payment 
of the fee specified in § 1.19(b), the Office will furnish 
copies of an application, unless the application 
has been disposed of (see §§ 1.53(e), (f) and (g)). The 
Office cannot provide or certify copies of an application 
that has been disposed of. 

[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 
49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 
48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 
23123, May 31, 1985, effective Feb. 11, 1985; revised, 60 
FR 20195, Apr. 25, 1995, effective June 8, 1995; revised, 
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; para. 

(b) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; revised, 68 FR 38611, June 30, 2003, 
effective July 30, 2003; para. (a)(1) revised, 69 FR 49959, 
Aug. 12, 2004, effective Sept. 13, 2004; para. (b) revised, 
69 FR 56481, Sept. 21, 2004, effective Nov. 22, 2004] 

§ 1.60 [Reserved] 

[48 FR 2710, Jan. 20, 1983, effective Feb. 27, 1983; 
49 FR 554, Jan. 4, 1984, effective Apr. 1, 1984; 50 FR 
9379, Mar. 7, 1985, effective May 8, 1985; paras. (a), (b) 
and (c), 54 FR 47519, Nov. 15, 1989, effective Jan. 16, 
1990; paras. (b) and (c) revised, para. (d) added, 57 FR 
56446, Nov. 30, 1992, effective Jan. 4, 1993; para. (b) 
revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 
1995; removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997] 

§ 1.61 [Reserved] 

(Editor’s note: Substance is now in § 1.495) 

§ 1.62 [Reserved] 

[47 FR 47244, Oct. 25, 1982, added effective Feb. 27, 
1983; 48 FR 2710, Jan. 20, 1983, effective date Feb. 27, 
1983; paras. (a) and (d), 49 FR 555, Jan. 4, 1984, effective 
Apr. 1, 1984; paras. (a), (c), and (h), 50 FR 9380, Mar. 7, 
1985, effective May 8, 1985; paras. (e) and (j), 54 FR 
47519, Nov. 15, 1989, effective Jan. 16, 1990; paras. (a) 
and (e) revised, 60 FR 20195, Apr. 25, 1995, effective June 
8, 1995; para. (f) revised, 61 FR 42790, Aug. 19, 1996, 

effective Sept. 23, 1996; removed and reserved, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997] 

OATH OR DECLARATION 

§ 1.63 Oath or declaration. 

(a) An oath or declaration filed under 
§ 1.51(b)(2) as a part of a nonprovisional application 
must: 
(1) Be executed, i.e., signed, in accordance 
with either § 1.66 or § 1.68. There is no minimum age 
for a person to be qualified to sign, but the person 
must be competent to sign, i.e., understand the document 
that the person is signing; 
(2) Identify each inventor by full name, 
including the family name, and at least one given 
name without abbreviation together with any other 
given name or initial; 
(3) Identify the country of citizenship of each 
inventor; and 
(4) State that the person making the oath or 
declaration believes the named inventor or inventors 
to be the original and first inventor or inventors of the 
subject matter which is claimed and for which a 
patent is sought. 
(b) In addition to meeting the requirements of 
paragraph (a) of this section, the oath or declaration 
must also: 
(1) Identify the application to which it is 
directed; 
(2) State that the person making the oath or 
declaration has reviewed and understands the contents 
of the application, including the claims, as amended 
by any amendment specifically referred to in the oath 
or declaration; and 
(3) State that the person making the oath or 
declaration acknowledges the duty to disclose to the 
Office all information known to the person to be 
material to patentability as defined in § 1.56. 
(c) Unless such information is supplied on an 
application data sheet in accordance with § 1.76, the 
oath or declaration must also identify: 
(1) The mailing address, and the residence if 
an inventor lives at a location which is different from 
where the inventor customarily receives mail, of each 
inventor; and 
(2) Any foreign application for patent (or 
inventor’s certificate) for which a claim for priority is 


 

made pursuant to § 1.55, and any foreign application 
having a filing date before that of the application on 
which priority is claimed, by specifying the application 
number, country, day, month, and year of its filing. 


(d)(1) A newly executed oath or declaration is 
not required under § 1.51(b)(2) and § 1.53(f) in a continuation 
or divisional application, provided that: 

(i) The prior nonprovisional application 
contained an oath or declaration as prescribed by 
paragraphs (a) through (c) of this section; 
(ii) The continuation or divisional application 
was filed by all or by fewer than all of the inventors 
named in the prior application; 


(iii) The specification and drawings filed in 
the continuation or divisional application contain no 
matter that would have been new matter in the prior 
application; and 

(iv) A copy of the executed oath or declaration 
filed in the prior application, showing the signature 
or an indication thereon that it was signed, is 
submitted for the continuation or divisional application. 
(2) The copy of the executed oath or declaration 
submitted under this paragraph for a continuation 
or divisional application must be accompanied by a 
statement requesting the deletion of the name or 
names of the person or persons who are not inventors 
in the continuation or divisional application. 
(3) Where the executed oath or declaration of 
which a copy is submitted for a continuation or divisional 
application was originally filed in a prior application 
accorded status under § 1.47, the copy of the 
executed oath or declaration for such prior application 
must be accompanied by: 
(i) A copy of the decision granting a petition 
to accord § 1.47 status to the prior application, 
unless all inventors or legal representatives have filed 
an oath or declaration to join in an application 
accorded status under § 1.47 of which the continuation 
or divisional application claims a benefit under 
35 U.S.C. 120, 121, or 365(c); and 
(ii) If one or more inventor(s) or legal representative(
s) who refused to join in the prior application 
or could not be found or reached has 
subsequently joined in the prior application or another 
application of which the continuation or divisional 
application claims a benefit under 35 U.S.C. 120, 121, 


or 365(c), a copy of the subsequently executed oath(s) 
or declaration(s) filed by the inventor or legal representative 
to join in the application. 

(4) Where the power of attorney or correspondence 
address was changed during the prosecution 
of the prior application, the change in power of 
attorney or correspondence address must be identified 
in the continuation or divisional application. Otherwise, 
the Office may not recognize in the continuation 
or divisional application the change of power of attorney 
or correspondence address during the prosecution 
of the prior application. 
(5) A newly executed oath or declaration 
must be filed in a continuation or divisional application 
naming an inventor not named in the prior application. 
(e) A newly executed oath or declaration must 
be filed in any continuation-in-part application, which 
application may name all, more, or fewer than all of 
the inventors named in the prior application. 


[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 
1983; 48 FR 4285, Jan. 31, 1983; paras. (b)(3) and (d), 
57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; para. 

(a) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 
1995; paras. (a) & (d) revised, para. (e) added, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a), (b), 
(c), and (e) revised, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; para. (d)(4) revised, 69 FR 56481, Sept. 21, 
2004, effective Oct. 21, 2004] 

§ 1.64 Person making oath or declaration. 

(a) The oath or declaration (§ 1.63), including 
any supplemental oath or declaration (§ 1.67), must 
be made by all of the actual inventors except as provided 
for in §§ 1.42, 1.43, 1.47, or § 1.67. 
(b) If the person making the oath or declaration 
or any supplemental oath or declaration is not the 
inventor (§§ 1.42, 1.43, 1.47, or § 1.67), the oath or 
declaration shall state the relationship of the person to 
the inventor, and, upon information and belief, the 
facts which the inventor is required to state. If the person 
signing the oath or declaration is the legal representative 
of a deceased inventor, the oath or 
declaration shall also state that the person is a legal 
representative and the citizenship, residence, and 
mailing address of the legal representative. 


 

[48 FR 2711, Jan. 20, 1983, added effective Feb. 27, 
1983; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 
7, 2000] 

§ 1.66 Officers authorized to administer oaths. 

(a) The oath or affirmation may be made before 
any person within the United States authorized by law 
to administer oaths. An oath made in a foreign country 
may be made before any diplomatic or consular 
officer of the United States authorized to administer 
oaths, or before any officer having an official seal and 
authorized to administer oaths in the foreign country 
in which the applicant may be, whose authority shall 
be proved by a certificate of a diplomatic or consular 
officer of the United States, or by an apostille of an 
official designated by a foreign country which, by 
treaty or convention, accords like effect to apostilles 
of designated officials in the United States. The oath 
shall be attested in all cases in this and other countries, 
by the proper official seal of the officer before 
whom the oath or affirmation is made. Such oath or 
affirmation shall be valid as to execution if it complies 
with the laws of the State or country where made. 
When the person before whom the oath or affirmation 
is made in this country is not provided with a seal, his 
official character shall be established by competent 
evidence, as by a certificate from a clerk of a court of 
record or other proper officer having a seal. 
(b) When the oath is taken before an officer in a 
country foreign to the United States, any accompanying 
application papers, except the drawings, must be 
attached together with the oath and a ribbon passed 
one or more times through all the sheets of the application, 
except the drawings, and the ends of said ribbon 
brought together under the seal before the latter is 
affixed and impressed, or each sheet must be 
impressed with the official seal of the officer before 
whom the oath is taken. If the papers as filed are not 
properly ribboned or each sheet impressed with the 
seal, the case will be accepted for examination, but 
before it is allowed, duplicate papers, prepared in 
compliance with the foregoing sentence, must be 
filed. 


[47 FR 41275, Sept. 17, 1982, effective Oct. 1, 1982] 

§ 1.67 Supplemental oath or declaration. 

(a) The Office may require, or inventors and 
applicants may submit, a supplemental oath or declaration 
meeting the requirements of § 1.63 or § 1.162 
to correct any deficiencies or inaccuracies present in 
the earlier filed oath or declaration. 
(1) Deficiencies or inaccuracies relating to 
all the inventors or applicants (§§ 1.42, 1.43, or § 
1.47) may be corrected with a supplemental oath or 
declaration signed by all the inventors or applicants. 
(2) Deficiencies or inaccuracies relating to 
fewer than all of the inventor(s) or applicant(s) (§§ 
1.42, 1.43 or § 1.47) may be corrected with a supplemental 
oath or declaration identifying the entire 
inventive entity but signed only by the inventor(s) or 
applicant(s) to whom the error or deficiency relates. 
(3) Deficiencies or inaccuracies due to the 
failure to meet the requirements of § 1.63(c) (e.g., to 
correct the omission of a mailing address of an inventor) 
in an oath or declaration may be corrected with an 
application data sheet in accordance with § 1.76. 
(4) Submission of a supplemental oath or 
declaration or an application data sheet (§ 1.76), as 
opposed to who must sign the supplemental oath or 
declaration or an application data sheet, is governed 
by § 1.33(a)(2) and paragraph (b) of this section. 
(b) A supplemental oath or declaration meeting 
the requirements of § 1.63 must be filed when a claim 
is presented for matter originally shown or described 
but not substantially embraced in the statement of 
invention or claims originally presented or when an 
oath or declaration submitted in accordance with 
§ 1.53(f) after the filing of the specification and any 
required drawings specifically and improperly refers 
to an amendment which includes new matter. No new 
matter may be introduced into a nonprovisional application 
after its filing date even if a supplemental oath 
or declaration is filed. In proper situations, the oath or 
declaration here required may be made on information 
and belief by an applicant other than the inventor. 


(c) [Reserved] 

[48 FR 2711, Jan. 20, 1983, effective Feb. 27, 1983; 
para. (c) added, 57 FR 2021, Jan. 17, 1992, effective Mar. 
16, 1992; para. (b) revised, 60 FR 20195, Apr. 25, 1995, 
effective June 8, 1995; para. (b) revised, 62 FR 53131, Oct. 
10, 1997, effective Dec. 1, 1997; para. (a) revised and para. 

(c) removed and reserved, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000] 

 

§ 1.68 Declaration in lieu of oath. 

Any document to be filed in the Patent and Trademark 
Office and which is required by any law, rule, or 
other regulation to be under oath may be subscribed to 
by a written declaration. Such declaration may be 
used in lieu of the oath otherwise required, if, and 
only if, the declarant is on the same document, 
warned that willful false statements and the like are 
punishable by fine or imprisonment, or both (18 

U.S.C. 1001) and may jeopardize the validity of the 
application or any patent issuing thereon. The 
declarant must set forth in the body of the declaration 
that all statements made of the declarant’s own 
knowledge are true and that all statements made on 
information and belief are believed to be true. 

[49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985] 

§ 1.69 Foreign language oaths and declarations. 

(a) Whenever an individual making an oath or 
declaration cannot understand English, the oath or 
declaration must be in a language that such individual 
can understand and shall state that such individual 
understands the content of any documents to which 
the oath or declaration relates. 
(b) Unless the text of any oath or declaration in 
a language other than English is in a form provided by 
the Patent and Trademark Office or in accordance 
with PCT Rule 4.17(iv), it must be accompanied by 
an English translation together with a statement that 
the translation is accurate, except that in the case of an 
oath or declaration filed under § 1.63, the translation 
may be filed in the Office no later than two months 
from the date applicant is notified to file the translation. 


[42 FR 5594, Jan. 28, 1977; para. (b), 48 FR 2711, Jan. 
20, 1983, effective Feb. 27, 1983; para. (b) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) 
revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 
2004; para. (b) revised, 70 FR 3880, Jan. 27, 2005, effective 
Dec. 8, 2004] 

§ 1.70 [Reserved] 

(Editor’s note: Substance moved to § 1.497) 

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

SPECIFICATION


§ 1.71 Detailed description and specification of 
the invention. 

(a) The specification must include a written 
description of the invention or discovery and of the 
manner and process of making and using the same, 
and is required to be in such full, clear, concise, and 
exact terms as to enable any person skilled in the art 
or science to which the invention or discovery appertains, 
or with which it is most nearly connected, to 
make and use the same. 
(b) The specification must set forth the precise 
invention for which a patent is solicited, in such manner 
as to distinguish it from other inventions and from 
what is old. It must describe completely a specific 
embodiment of the process, machine, manufacture, 
composition of matter or improvement invented, and 
must explain the mode of operation or principle 
whenever applicable. The best mode contemplated by 
the inventor of carrying out his invention must be set 
forth. 
(c) In the case of an improvement, the specification 
must particularly point out the part or parts of 
the process, machine, manufacture, or composition of 
matter to which the improvement relates, and the 
description should be confined to the specific 
improvement and to such parts as necessarily cooperate 
with it or as may be necessary to a complete 
understanding or description of it. 
(d) A copyright or mask work notice may be 
placed in a design or utility patent application adjacent 
to copyright and mask work material contained 
therein. The notice may appear at any appropriate portion 
of the patent application disclosure. For notices in 
drawings, see § 1.84(s). The content of the notice 
must be limited to only those elements provided for 
by law. For example, “©1983 John Doe”(17 U.S.C. 
401) and “*M* John Doe” (17 U.S.C. 909) would be 
properly limited and, under current statutes, legally 
sufficient notices of copyright and mask work, respectively. 
Inclusion of a copyright or mask work notice 
will be permitted only if the authorization language 
set forth in paragraph (e) of this section is included at 
the beginning (preferably as the first paragraph) of the 
specification. 


(e) The authorization shall read as follows: 

 

A portion of the disclosure of this patent document 
contains material which is subject to (copyright 
or mask work) protection. The (copyright or 
mask work) owner has no objection to the facsimile 
reproduction by anyone of the patent document or 
the patent disclosure, as it appears in the Patent and 
Trademark Office patent file or records, but otherwise 
reserves all (copyright or mask work) rights 
whatsoever. 

(f) The specification must commence on a separate 
sheet. Each sheet including part of the specification 
may not include other parts of the application or 
other information. The claim(s), abstract and 
sequence listing (if any) should not be included on a 
sheet including any other part of the application. 
(g)(1) The specification may disclose or be 
amended to disclose the names of the parties to a joint 
research agreement (35 U.S.C. 103(c)(2)(C)). 


(2) An amendment under paragraph (g)(1) of 
this section must be accompanied by the processing 
fee set forth § 1.17(i) if not filed within one of the following 
time periods: 
(i) Within three months of the filing date 
of a national application; 
(ii) Within three months of the date of 
entry of the national stage as set forth in § 1.491 in an 
international application; 


(iii) Before the mailing of a first Office 
action on the merits; or 

(iv) Before the mailing of a first Office 
action after the filing of a request for continued examination 
under § 1.114. 
(3) If an amendment under paragraph (g)(1) 
of this section is filed after the date the issue fee is 
paid, the patent as issued may not necessarily include 
the names of the parties to the joint research agreement. 
If the patent as issued does not include the 
names of the parties to the joint research agreement, 
the patent must be corrected to include the names of 
the parties to the joint research agreement by a certificate 
of correction under 35 U.S.C. 255 and § 1.323 for 
the amendment to be effective. 


[paras. (d) and (e), 53 FR 47808, Nov. 28, 1988, effective 
Jan. 1, 1989; para. (d), 58 FR 38719, July 20, 1993, 
effective Oct. 1, 1993; para. (f) added, 68 FR 38611, June 
30, 2003, effective July 30, 2003; para. (g) added, 70 FR 
1818, Jan. 11, 2005, effective Dec. 10, 2004; para. (g) 
revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 14, 
2005] 

§ 1.72 Title and abstract. 

(a) The title of the invention may not exceed 
500 characters in length and must be as short and specific 
as possible. Characters that cannot be captured 
and recorded in the Office’s automated information 
systems may not be reflected in the Office’s records in 
such systems or in documents created by the Office. 
Unless the title is supplied in an application data sheet 
(§ 1.76), the title of the invention should appear as a 
heading on the first page of the specification. 
(b) A brief abstract of the technical disclosure 
in the specification must commence on a separate 
sheet, preferably following the claims, under the 
heading “Abstract” or “Abstract of the Disclosure.” 
The sheet or sheets presenting the abstract may not 
include other parts of the application or other material. 
The abstract in an application filed under 35 


U.S.C. 111 may not exceed 150 words in length. The 
purpose of the abstract is to enable the United States 
Patent and Trademark Office and the public generally 
to determine quickly from a cursory inspection the 
nature and gist of the technical disclosure. 

[31 FR 12922, Oct. 4, 1966; 43 FR 20464, May 11, 
1978; para. (b) amended, 61 FR 42790, Aug. 19, 1996, 
effective Sept. 23, 1996; revised, 65 FR 54604, Sept. 8, 
2000, effective Nov. 7, 2000; para. (a) revised, 65 FR 
57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (b) 
revised, 68 FR 38611, June 30, 2003, effective July 30, 
2003] 

§ 1.73 Summary of the invention. 

A brief summary of the invention indicating its 
nature and substance, which may include a statement 
of the object of the invention, should precede the 
detailed description. Such summary should, when set 
forth, be commensurate with the invention as claimed 
and any object recited should be that of the invention 
as claimed. 

§ 1.74 Reference to drawings. 

When there are drawings, there shall be a brief 
description of the several views of the drawings and 
the detailed description of the invention shall refer to 
the different views by specifying the numbers of the 
figures and to the different parts by use of reference 
letters or numerals (preferably the latter). 

 

§ 1.75 Claim(s). 

(a) The specification must conclude with a 
claim particularly pointing out and distinctly claiming 
the subject matter which the applicant regards as his 
invention or discovery. 
(b) More than one claim may be presented provided 
they differ substantially from each other and are 
not unduly multiplied. 
(c) One or more claims may be presented in 
dependent form, referring back to and further limiting 
another claim or claims in the same application. Any 
dependent claim which refers to more than one other 
claim (“multiple dependent claim”) shall refer to such 
other claims in the alternative only. A multiple dependent 
claim shall not serve as a basis for any other multiple 
dependent claim. For fee calculation purposes 
under § 1.16, a multiple dependent claim will be considered 
to be that number of claims to which direct 
reference is made therein. For fee calculation purposes 
also, any claim depending from a multiple 
dependent claim will be considered to be that number 
of claims to which direct reference is made in that 
multiple dependent claim. In addition to the other filing 
fees, any original application which is filed with, 
or is amended to include, multiple dependent claims 
must have paid therein the fee set forth in § 1.16(j). 
Claims in dependent form shall be construed to 
include all the limitations of the claim incorporated by 
reference into the dependent claim. A multiple dependent 
claim shall be construed to incorporate by reference 
all the limitations of each of the particular claims 
in relation to which it is being considered. 
(d)(1) The claim or claims must conform to the 
invention as set forth in the remainder of the specification 
and the terms and phrases used in the claims 
must find clear support or antecedent basis in the 
description so that the meaning of the terms in the 
claims may be ascertainable by reference to the 
description. (See § 1.58(a)). 


(2) See §§ 1.141 to 1.146 as to claiming different 
inventions in one application. 
(e) Where the nature of the case admits, as in 
the case of an improvement, any independent claim 
should contain in the following order: 
(1) A preamble comprising a general description 
of all the elements or steps of the claimed combination 
which are conventional or known, 


(2) A phrase such as “wherein the improvement 
comprises,” and 
(3) Those elements, steps, and/or relationships 
which constitute that portion of the claimed 
combination which the applicant considers as the new 
or improved portion. 
(f) If there are several claims, they shall be 
numbered consecutively in Arabic numerals. 
(g) The least restrictive claim should be presented 
as claim number 1, and all dependent claims 
should be grouped together with the claim or claims 
to which they refer to the extent practicable. 
(h) The claim or claims must commence on a 
separate physical sheet or electronic page. Any sheet 
including a claim or portion of a claim may not contain 
any other parts of the application or other material. 
(i) Where a claim sets forth a plurality of elements 
or steps, each element or step of the claim 
should be separated by a line indentation. 


[31 FR 12922, Oct. 4, 1966; 36 FR 12690, July 3, 
1971; 37 FR 21995, Oct. 18, 1972; 43 FR 4015, Jan. 31, 
1978; para. (c), 47 FR 41276, Sept. 17, 1982, effective Oct. 
1, 1982; para. (g) amended, paras. (h) and (i) added, 61 FR 
42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (h) 
revised, 68 FR 38611, June 30, 2003, effective July 30, 
2003; para. (h) revised, 68 FR 38611, June 30, 2003, effective 
July 30, 2003; para. (c) revised, 70 FR 3880, Jan. 27, 
2005, effective Dec. 8, 2004] 

§ 1.76 Application data sheet. 

(a) Application data sheet. An application data 
sheet is a sheet or sheets, that may be voluntarily submitted 
in either provisional or nonprovisional applications, 
which contains bibliographic data, arranged in a 
format specified by the Office. An application data 
sheet must be titled “Application Data Sheet” and 
must contain all of the section headings listed in paragraph 
(b) of this section, with any appropriate data for 
each section heading. If an application data sheet is 
provided, the application data sheet is part of the provisional 
or nonprovisional application for which it has 
been submitted. 
(b) Bibliographic data. Bibliographic data as 
used in paragraph (a) of this section includes: 
(1) Applicant information. This information 
includes the name, residence, mailing address, and 
citizenship of each applicant (§ 1.41(b)). The name of 


 

each applicant must include the family name, and at 
least one given name without abbreviation together 
with any other given name or initial. If the applicant is 
not an inventor, this information also includes the 
applicant’s authority (§§ 1.42, 1.43, and 1.47) to apply 
for the patent on behalf of the inventor. 

(2) Correspondence information. This information 
includes the correspondence address, which 
may be indicated by reference to a customer number, 
to which correspondence is to be directed (see § 
1.33(a)). 
(3) Application information. This information 
includes the title of the invention, a suggested 
classification, by class and subclass, the Technology 
Center to which the subject matter of the invention is 
assigned, the total number of drawing sheets, a suggested 
drawing figure for publication (in a nonprovisional 
application), any docket number assigned to the 
application, the type of application (e.g., utility, plant, 
design, reissue, provisional), whether the application 
discloses any significant part of the subject matter of 
an application under a secrecy order pursuant to § 5.2 
of this chapter (see § 5.2(c)), and, for plant applications, 
the Latin name of the genus and species of the 
plant claimed, as well as the variety denomination. 
The suggested classification and Technology Center 
information should be supplied for provisional applications 
whether or not claims are present. If claims 
are not present in a provisional application, the suggested 
classification and Technology Center should be 
based upon the disclosure. 
(4) Representative information. This information 
includes the registration number of each practitioner 
having a power of attorney in the application 
(preferably by reference to a customer number). Providing 
this information in the application data sheet 
does not constitute a power of attorney in the application 
(see § 1.32). 
(5) Domestic priority information. This 
information includes the application number, the filing 
date, the status (including patent number if available), 
and relationship of each application for which a 
benefit is claimed under 35 U.S.C. 119(e), 120, 121, 
or 365(c). Providing this information in the application 
data sheet constitutes the specific reference 
required by 35 U.S.C. 119(e) or 120, and § 1.78(a)(2) 
or § 1.78(a)(5), and need not otherwise be made part 
of the specification. 


(6) Foreign priority information. This information 
includes the application number, country, and 
filing date of each foreign application for which priority 
is claimed, as well as any foreign application having 
a filing date before that of the application for 
which priority is claimed. Providing this information 
in the application data sheet constitutes the claim for 
priority as required by 35 U.S.C. 119(b) and § 
1.55(a). 
(7) Assignee information. This information 
includes the name (either person or juristic entity) and 
address of the assignee of the entire right, title, and 
interest in an application. Providing this information 
in the application data sheet does not substitute for 
compliance with any requirement of part 3 of this 
chapter to have an assignment recorded by the Office. 
(c) Supplemental application data sheets. Supplemental 
application data sheets: 
(1) May be subsequently supplied prior to 
payment of the issue fee either to correct or update 
information in a previously submitted application data 
sheet, or an oath or declaration under § 1.63 or § 
1.67, except that inventorship changes are governed 
by § 1.48, correspondence changes are governed by 
§ 1.33(a), and citizenship changes are governed by § 


1.63 or § 1.67; and 

(2) Must be titled “Supplemental Application 
Data Sheet,” include all of the section headings listed 
in paragraph (b) of this section, include all appropriate 
data for each section heading, and must identify the 
information that is being changed, preferably with 
underlining for insertions, and strike-through or 
brackets for text removed. 
(d) Inconsistencies between application data 
sheet and other documents. For inconsistencies 
between information that is supplied by both an application 
data sheet under this section and other documents. 
(1) The latest submitted information will 
govern notwithstanding whether supplied by an application 
data sheet, an amendment to the specification, 
a designation of a correspondence address, or by a § 


1.63 or § 1.67 oath or declaration, except as provided 
by paragraph (d)(3) of this section; 

(2) The information in the application data 
sheet will govern when the inconsistent information is 
supplied at the same time by an amendment to the 
specification, a designation of correspondence 

 

address, or a § 1.63 or § 1.67 oath or declaration, 
except as provided by paragraph (d)(3) of this section; 

(3) The oath or declaration under § 1.63 or § 

1.67 governs inconsistencies with the application data 
sheet in the naming of inventors (§ 1.41 (a)(1)) and 
setting forth their citizenship (35 U.S.C. 115); 

(4) The Office will capture bibliographic 
information from the application data sheet (notwithstanding 
whether an oath or declaration governs the 
information). Thus, the Office shall generally, for 
example, not look to an oath or declaration under § 

1.63 to see if the bibliographic information contained 
therein is consistent with the bibliographic information 
captured from an application data sheet (whether 
the oath or declaration is submitted prior to or subsequent 
to the application data sheet). Captured bibliographic 
information derived from an application data 
sheet containing errors may be corrected if applicant 
submits a request therefor and a supplemental application 
data sheet. 

[Added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; para. (b)(7) added, 65 FR 57024, Sept. 20, 2000, 
effective Nov. 29, 2000; paras. (a), (b)(4), (c)(2) and (d) 
revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 
2004; para. (b)(5) revised, 70 FR 54259, Sept. 14, 2005, 
effective Sept. 14, 2005] 

§ 1.77 Arrangement of application elements. 

(a) The elements of the application, if applicable, 
should appear in the following order: 
(1) Utility application transmittal form. 
(2) Fee transmittal form. 
(3) Application data sheet (see § 1.76). 
(4) Specification. 
(5) Drawings. 
(6) Executed oath or declaration. 




(b) The specification should include the following 
sections in order: 
(1) Title of the invention, which may be 
accompanied by an introductory portion stating the 
name, citizenship, and residence of the applicant 
(unless included in the application data sheet). 
(2) Cross-reference to related applications 
(unless included in the application data sheet). 
(3) Statement regarding federally sponsored 
research or development. 
(4) The names of the parties to a joint 
research agreement. 


(5) Reference to a “Sequence Listing,” a 
table, or a computer program listing appendix submitted 
on a compact disc and an incorporation-by-reference 
of the material on the compact disc (see § 
1.52(e)(5)). The total number of compact discs including 
duplicates and the files on each compact disc shall 
be specified. 
(6) Background of the invention. 
(7) Brief summary of the invention. 




(8) Brief description of the several views of 
the drawing. 
(9) Detailed description of the invention. 
(10) A claim or claims. 
(11) Abstract of the disclosure. 
(12) “Sequence Listing,” if on paper (see §§ 






1.821 through 1.825). 

(c) The text of the specification sectionsdefined in paragraphs (b)(1) through (b)(12) of 
this section, if applicable, should be preceded by a 
section heading in uppercase and without underlining 
or bold type. 

[43 FR 20464, May 11, 1978; 46 FR 2612, Jan. 12, 
1981; paras. (h) and (i), 48 FR 2712, Jan. 20, 1983, effective 
Feb. 27, 1983; revised, 61 FR 42790, Aug. 19, 1996, 
effective Sept. 23, 1996; revised, 65 FR 54604, Sept. 8, 
2000, effective Nov. 7, 2000; paras. (b) and (c) revised, 70 
FR 1818, Jan. 11, 2005, effective Dec. 10, 2004] 

§ 1.78 Claiming benefit of earlier filing date and 
cross-references to other applications. 

(a)(1) A nonprovisional application or international 
application designating the United States of 
America may claim an invention disclosed in one or 
more prior-filed copending nonprovisional applications 
or international applications designating the 
United States of America. In order for an application 
to claim the benefit of a prior-filed copending nonprovisional 
application or international application designating 
the United States of America, each prior-filed 
application must name as an inventor at least one 
inventor named in the later-filed application and disclose 
the named inventor’s invention claimed in at 
least one claim of the later-filed application in the 
manner provided by the first paragraph of 35 U.S.C. 

112. In addition, each prior-filed application must be: 

(i) An international application entitled to 
a filing date in accordance with PCT Article 11 and 
designating the United States of America; or 

 

(ii) Entitled to a filing date as set forth in § 
1.53(b) or § 1.53(d) and have paid therein the basic 
filing fee set forth in § 1.16 within the pendency of the 
application. 
(2)(i) Except for a continued prosecution application 
filed under § 1.53(d), any nonprovisional application 
or international application designating the 
United States of America claiming the benefit of one 
or more prior-filed copending nonprovisional applications 
or international applications designating the 
United States of America must contain or be amended 
to contain a reference to each such prior-filed application, 
identifying it by application number (consisting 
of the series code and serial number) or international 
application number and international filing date and 
indicating the relationship of the applications. Cross 
references to other related applications may be made 
when appropriate (see § 1.14). 


(ii) This reference must be submitted during 
the pendency of the later-filed application. If the 
later-filed application is an application filed under 
35 U.S.C. 111(a), this reference must also be submitted 
within the later of four months from the actual filing 
date of the later-filed application or sixteen 
months from the filing date of the prior-filed application. 
If the later-filed application is a nonprovisional 
application which entered the national stage from an 
international application after compliance with 35 


U.S.C. 371, this reference must also be submitted 
within the later of four months from the date on which 
the national stage commenced under 35 U.S.C. 371 

(b) or (f) in the later-filed international application or 
sixteen months from the filing date of the prior-filed 
application. These time periods are not extendable. 
Except as provided in paragraph (a)(3) of this section, 
the failure to timely submit the reference required by 
35 U.S.C. 120 and paragraph (a)(2)(i) of this section 
is considered a waiver of any benefit under 35 U.S.C. 
120, 121, or 365(c) to such prior-filed application. 
The time periods in this paragraph do not apply if the 
later-filed application is: 
(A) An application for a design patent; 


(B) An application filed under 35 U.S.C. 
111 (a) before November 29, 2000; or 
(C) A nonprovisional application which 
entered the national stage after compliance with 35 


U.S.C. 371 from an international application filed 
under 35 U.S.C. 363 before November 29, 2000. 

(iii) If the later-filed application is a non-
provisional application, the reference required by this 
paragraph must be included in an application data 
sheet (§ 1.76), or the specification must contain or be 
amended to contain such reference in the first sentence(
s) following the title. 

(iv) The request for a continued prosecution 
application under § 1.53(d) is the specific reference 
required by 35 U.S.C. 120 to the prior-filed 
application. The identification of an application by 
application number under this section is the identification 
of every application assigned that application 
number necessary for a specific reference required by 
35 U.S.C. 120 to every such application assigned that 
application number. 
(3) If the reference required by 35 U.S.C. 120 
and paragraph (a)(2) of this section is presented after 
the time period provided by paragraph (a)(2)(ii) of 
this section, the claim under 35 U.S.C. 120, 121, or 
365(c) for the benefit of a prior-filed copending non-
provisional application or international application 
designating the United States of America may be 
accepted if the reference identifying the prior-filed 
application by application number or international 
application number and international filing date was 
unintentionally delayed. A petition to accept an unintentionally 
delayed claim under 35 U.S.C. 120, 121, 
or 365(c) for the benefit of a prior-filed application 
must be accompanied by: 
(i) The reference required by 35 U.S.C. 
120 and paragraph (a)(2) of this section to the prior-
filed application, unless previously submitted; 
(ii) The surcharge set forth in § 1.17(t); 
and 


(iii) A statement that the entire delay 
between the date the claim was due under paragraph 
(a)(2)(ii) of this section and the date the claim was 
filed was unintentional. The Director may require 
additional information where there is a question 
whether the delay was unintentional. 

(4) A nonprovisional application, other than 
for a design patent, or an international application 
designating the United States of America may claim 
an invention disclosed in one or more prior-filed provisional 
applications. In order for an application to 
claim the benefit of one or more prior-filed provisional 
applications, each prior-filed provisional application 
must name as an inventor at least one inventor 

 

named in the later-filed application and disclose the 
named inventor’s invention claimed in at least one 
claim of the later-filed application in the manner provided 
by the first paragraph of 35 U.S.C. 112. In addition, 
each prior-filed provisional application must be 
entitled to a filing date as set forth in § 1.53(c), and 
the basic filing fee set forth in § 1.16(d) must be paid 
within the time period set forth in § 1.53(g). 

(5)(i) Any nonprovisional application or international 
application designating the United States of 
America claiming the benefit of one or more prior-
filed provisional applications must contain or be 
amended to contain a reference to each such prior-
filed provisional application, identifying it by the provisional 
application number (consisting of series code 
and serial number). 

(ii) This reference must be submitted during 
the pendency of the later-filed application. If the 
later-filed application is an application filed under 
35 U.S.C. 111(a), this reference must also be submitted 
within the later of four months from the actual filing 
date of the later-filed application or sixteen 
months from the filing date of the prior-filed provisional 
application. If the later-filed application is a 
nonprovisional application which entered the national 
stage from an international application after compliance 
with 35 U.S.C. 371, this reference must also be 
submitted within the later of four months from the 
date on which the national stage commenced under 
35 U.S.C. 371(b) or (f) in the later-filed international 
application or sixteen months from the filing date of 
the prior-filed provisional application. These time 
periods are not extendable. Except as provided in 
paragraph(a)(6) of this section, the failure to timely 
submit the reference is considered a waiver of any 
benefit under 35 U.S.C. 119(e) to such prior-filed provisional 
application. The time periods in this paragraph 
do not apply if the later-filed application is: 
(A) An application filed under 35 U.S.C. 
111(a) before November 29, 2000; or 
(B) A nonprovisional application which 
entered the national stage after compliance with 35 


U.S.C. 371 from an international application filed 
under 35 U.S.C. 363 before November 29, 2000. 

(iii) If the later-filed application is a non-
provisional application, the reference required by this 
paragraph must be included in an application data 
sheet (§ 1.76), or the specification must contain or be 
amended to contain such reference in the first sentence(
s) following the title. 

(iv) If the prior-filed provisional application 
was filed in a language other than English and 
both an English-language translation of the prior-filed 
provisional application and a statement that the translation 
is accurate were not previously filed in the 
prior-filed provisional application, applicant will be 
notified and given a period of time within which to 
file, in the prior-filed provisional application, the 
translation and the statement. If the notice is mailed in 
a pending nonprovisional application, a timely reply 
to such a notice must include the filing in the nonprovisional 
application of either a confirmation that the 
translation and statement were filed in the provisional 
application, or an amendment or Supplemental Application 
Data Sheet withdrawing the benefit claim, or 
the nonprovisional application will be abandoned. 
The translation and statement may be filed in the provisional 
application, even if the provisional application 
has become abandoned. 
(6) If the reference required by 35 U.S.C. 
119(e) and paragraph (a)(5) of this section is presented 
in a nonprovisional application after the time 
period provided by paragraph (a)(5)(ii) of this section, 
the claim under 35 U.S.C. 119(e) for the benefit of a 
prior filed provisional application may be accepted 
during the pendency of the later-filed application if 
the reference identifying the prior-filed application by 
provisional application number was unintentionally 
delayed. A petition to accept an unintentionally 
delayed claim under 35 U.S.C. 119(e) for the benefit 
of a prior-filed provisional application must be 
accompanied by: 
(i) The reference required by 35 U.S.C. 
119(e) and paragraph (a)(5) of this section to the 
prior-filed provisional application, unless previously 
submitted; 
(ii) The surcharge set forth in § 1.17(t); 
and 


(iii) A statement that the entire delay 
between the date the claim was due under paragraph 
(a)(5)(ii) of this section and the date the claim was 
filed was unintentional. The Director may require 
additional information where there is a question 
whether the delay was unintentional. 

(b) Where two or more applications filed by the 
same applicant contain conflicting claims, elimination 

 

of such claims from all but one application may be 
required in the absence of good and sufficient reason 
for their retention during pendency in more than one 
application. 

(c) If an application or a patent under reexamination 
and at least one other application naming different 
inventors are owned by the same person and 
contain conflicting claims, and there is no statement 
of record indicating that the claimed inventions were 
commonly owned or subject to an obligation of 
assignment to the same person at the time the later 
invention was made, the Office may require the 
assignee to state whether the claimed inventions were 
commonly owned or subject to an obligation of 
assignment to the same person at the time the later 
invention was made, and if not, indicate which named 
inventor is the prior inventor. Even if the claimed 
inventions were commonly owned, or subject to an 
obligation of assignment to the same person, at the 
time the later invention was made, the conflicting 
claims may be rejected under the doctrine of double 
patenting in view of such commonly owned or 
assigned applications or patents under reexamination. 

[36 FR 7312, Apr. 17, 1971; 49 FR 555, Jan. 4, 1984; 
paras. (a), (c) & (d), 50 FR 9380, Mar. 7, 1985, effective 
May 8, 1985; 50 FR 11366, Mar. 21, 1985; para. (a) revised 
58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; paras. 
(a)(1) and (a)(2) revised and paras. (a)(3) and (a)(4) added, 
60 FR 20195, Apr. 25, 1995, effective June 8, 1995; para. 

(c) revised and para. (d) deleted, 61 FR 42790, Aug. 19, 
1996, effective Sept. 23, 1996; para. (a) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(3) 
revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 
2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); 
paras. (a)(2), (a)(4), and (c) revised, 65 FR 54604, Sept. 8, 
2000, effective Sept. 8, 2000; paras. (a)(2), (a)(3), and 
(a)(4) revised and paras. (a)(5) and (a)(6) added, 65 FR 
57024, Sept. 20, 2000, effective Nov. 29, 2000; para. (a) 
revised, 66 FR 67087, Dec. 28, 2001, effective Dec. 28, 
2001; paras. (a)(3)(iii) & (a)(6)(iii) revised, 68 FR 14332, 
Mar. 25, 2003, effective May 1, 2003; para (a)(3) revised, 
68 FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; paras. 
(a)(1), (a)(2)(iii), (a)(5)(iii) and (c) revised, 69 FR 56481, 
Sept. 21, 2004, effective Sept. 21, 2004; para. (a)(4) 
revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; 
para.(a)(1)(iii) removed and para. (a)(1)(ii) revised, 70 FR 
30360, May 26, 2005, effective July 1, 2005; para. 
(a)(5)(iv) revised, 70 FR 56119, Sept. 26, 2005, effective 
Nov. 25, 2005] 

§ 1.79 Reservation clauses not permitted. 

A reservation for a future application of subject 
matter disclosed but not claimed in a pending application 
will not be permitted in the pending application, 
but an application disclosing unclaimed subject matter 
may contain a reference to a later filed application of 
the same applicant or owned by a common assignee 
disclosing and claiming that subject matter. 

THE DRAWINGS 

§ 1.81 Drawings required in patent application. 

(a) The applicant for a patent is required to furnish 
a drawing of his or her invention where necessary 
for the understanding of the subject matter 
sought to be patented; this drawing, or a high quality 
copy thereof, must be filed with the application. Since 
corrections are the responsibility of the applicant, the 
original drawing(s) should be retained by the applicant 
for any necessary future correction. 
(b) Drawings may include illustrations which 
facilitate an understanding of the invention (for example, 
flowsheets in cases of processes, and diagrammatic 
views). 
(c) Whenever the nature of the subject matter 
sought to be patented admits of illustration by a drawing 
without its being necessary for the understanding 
of the subject matter and the applicant has not furnished 
such a drawing, the examiner will require its 
submission within a time period of not less than two 
months from the date of the sending of a notice 
thereof. 
(d) Drawings submitted after the filing date of 
the application may not be used to overcome any 
insufficiency of the specification due to lack of an 
enabling disclosure or otherwise inadequate disclosure 
therein, or to supplement the original disclosure 
thereof for the purpose of interpretation of the scope 
of any claim. 


[43 FR 4015, Jan. 31, 1978; para. (a), 53 FR 47809, 
Nov. 28, 1988, effective Jan. 1, 1989] 

§ 1.83 Content of drawing. 

(a) The drawing in a nonprovisional application 
must show every feature of the invention specified in 
the claims. However, conventional features disclosed 
in the description and claims, where their detailed 

 

illustration is not essential for a proper understanding 
of the invention, should be illustrated in the drawing 
in the form of a graphical drawing symbol or a labeled 
representation (e.g., a labeled rectangular box). In 
addition, tables and sequence listings that are included 
in the specification are, except for applications filed 
under 35 U.S.C. 371, not permitted to be included in 
the drawings. 

(b) When the invention consists of an improvement 
on an old machine the drawing must when possible 
exhibit, in one or more views, the improved 
portion itself, disconnected from the old structure, and 
also in another view, so much only of the old structure 
as will suffice to show the connection of the invention 
therewith. 
(c) Where the drawings in a nonprovisional 
application do not comply with the requirements of 
paragraphs (a) and (b) of this section, the examiner 
shall require such additional illustration within a time 
period of not less than two months from the date of 
the sending of a notice thereof. Such corrections are 
subject to the requirements of § 1.81(d). 


[31 FR 12923, Oct. 4, 1966; 43 FR 4015, Jan. 31, 
1978; paras. (a) and (c) revised, 60 FR 20195, Apr. 25, 
1995, effective June 8, 1995; para. (a) revised, 69 FR 
56481, Sept. 21, 2004, effective Oct. 21, 2004] 

§ 1.84 Standards for drawings. 

(a) Drawings. There are two acceptable categories 
for presenting drawings in utility and design 
patent applications. 
(1) Black ink. Black and white drawings are 
normally required. India ink, or its equivalent that 
secures solid black lines, must be used for drawings; 
or 
(2) Color. On rare occasions, color drawings 
may be necessary as the only practical medium by 
which to disclose the subject matter sought to be patented 
in a utility or design patent application or the 
subject matter of a statutory invention registration. 
The color drawings must be of sufficient quality such 
that all details in the drawings are reproducible in 
black and white in the printed patent. Color drawings 
are not permitted in international applications (see 
PCT Rule 11.13), or in an application, or copy 
thereof, submitted under the Office electronic filing 
system. The Office will accept color drawings in utility 
or design patent applications and statutory inven


tion registrations only after granting a petition filed 
under this paragraph explaining why the color drawings 
are necessary. Any such petition must include the 
following: 

(i) The fee set forth in § 1.17(h); 
(ii) Three (3) sets of color drawings; 


(iii) An amendment to the specification to 
insert (unless the specification contains or has 
been previously amended to contain) the following 
language as the first paragraph of the brief description 
of the drawings: 

The patent or application file contains at least 
one drawing executed in color. Copies of this patent 
or patent application publication with color drawing(
s) will be provided by the Office upon request 
and payment of the necessary fee. 

(b) Photographs.— 

(1) Black and white. Photographs, including 
photocopies of photographs, are not ordinarily permitted 
in utility and design patent applications. The 
Office will accept photographs in utility and design 
patent applications, however, if photographs are the 
only practicable medium for illustrating the claimed 
invention. For example, photographs or photomicrographs 
of: electrophoresis gels, blots (e.g., immunological, 
western, Southern, and northern), autoradiographs, 
cell cultures (stained and unstained), histological 
tissue cross sections (stained and unstained), 
animals, plants, in vivo imaging, thin layer chromatography 
plates, crystalline structures, and, in a design 
patent application, ornamental effects, are acceptable. 
If the subject matter of the application admits of illustration 
by a drawing, the examiner may require a 
drawing in place of the photograph. The photographs 
must be of sufficient quality so that all details in the 
photographs are reproducible in the printed patent. 
(2) Color photographs. Color photographs 
will be accepted in utility and design patent applications 
if the conditions for accepting color drawings 
and black and white photographs have been satisfied. 
See paragraphs (a)(2) and (b)(1) of this section. 
(c) Identification of drawings. Identifying indicia 
should be provided, and if provided, should 
include the title of the invention, inventor’s name, and 
application number, or docket number (if any) if an 
application number has not been assigned to the application. 
If this information is provided, it must be 
placed on the front of each sheet within the top mar-


 

gin. Each drawing sheet submitted after the filing date 
of an application must be identified as either 
“Replacement Sheet” or “New Sheet” pursuant to § 
1.121(d). If a marked-up copy of any amended drawing 
figure including annotations indicating the 
changes made is filed, such marked-up copy must be 
clearly labeled as “Annotated Sheet” pursuant to § 
1.121(d)(1). 

(d) Graphic forms in drawings. Chemical or 
mathematical formulae, tables, and waveforms may 
be submitted as drawings and are subject to the same 
requirements as drawings. Each chemical or mathematical 
formula must be labeled as a separate figure, 
using brackets when necessary, to show that information 
is properly integrated. Each group of waveforms 
must be presented as a single figure, using a common 
vertical axis with time extending along the horizontal 
axis. Each individual waveform discussed in the specification 
must be identified with a separate letter designation 
adjacent to the vertical axis. 
(e) Type of paper. Drawings submitted to the 
Office must be made on paper which is flexible, 
strong, white, smooth, non-shiny, and durable. All 
sheets must be reasonably free from cracks, creases, 
and folds. Only one side of the sheet may be used for 
the drawing. Each sheet must be reasonably free from 
erasures and must be free from alterations, overwritings, 
and interlineations. Photographs must be developed 
on paper meeting the sheet-size requirements of 
paragraph (f) of this section and the margin requirements 
of paragraph (g) of this section. See paragraph 
(b) of this section for other requirements for photographs. 
(f) Size of paper. All drawing sheets in an 
application must be the same size. One of the shorter 
sides of the sheet is regarded as its top. The size of the 
sheets on which drawings are made must be: 
(1) 21.0 cm. by 29.7 cm. (DIN size A4), or 
(2) 21.6 cm. by 27.9 cm. (8 1/2 by 11 inches). 




(g) Margins. The sheets must not contain 
frames around the sight (i.e., the usable surface), but 
should have scan target points (i.e., cross-hairs) 
printed on two cater-corner margin corners. Each 
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), thereby 
leaving a sight no greater than 17.0 cm. by 26.2 cm. 


on 21.0 cm. by 29.7 cm. (DIN size A4) drawing 
sheets, and a sight no greater than 17.6 cm. by 

24.4 cm. (6 15/16 by 9 5/8 inches) on 21.6 cm. by 

27.9 cm. (8 1/2 by 11 inch) drawing sheets. 

(h) Views. The drawing must contain as many 
views as necessary to show the invention. The views 
may be plan, elevation, section, or perspective views. 
Detail views of portions of elements, on a larger scale 
if necessary, may also be used. All views of the drawing 
must be grouped together and arranged on the 
sheet(s) without wasting space, preferably in an 
upright position, clearly separated from one another, 
and must not be included in the sheets containing the 
specifications, claims, or abstract. Views must not be 
connected by projection lines and must not contain 
center lines. Waveforms of electrical signals may be 
connected by dashed lines to show the relative timing 
of the waveforms. 
(1) Exploded views. Exploded views, with 
the separated parts embraced by a bracket, to show the 
relationship or order of assembly of various parts are 
permissible. When an exploded view is shown in a 
figure which is on the same sheet as another figure, 
the exploded view should be placed in brackets. 
(2) Partial views. When necessary, a view of 
a large machine or device in its entirety may be broken 
into partial views on a single sheet, or extended 
over several sheets if there is no loss in facility of 
understanding the view. Partial views drawn on separate 
sheets must always be capable of being linked 
edge to edge so that no partial view contains parts of 
another partial view. A smaller scale view should be 
included showing the whole formed by the partial 
views and indicating the positions of the parts shown. 
When a portion of a view is enlarged for magnification 
purposes, the view and the enlarged view must 
each be labeled as separate views. 
(i) Where views on two or more sheets 
form, in effect, a single complete view, the views on 
the several sheets must be so arranged that the complete 
figure can be assembled without concealing any 
part of any of the views appearing on the various 
sheets. 
(ii) A very long view may be divided into 
several parts placed one above the other on a single 
sheet. However, the relationship between the different 
parts must be clear and unambiguous. 


 

(3) Sectional views. The plane upon which a 
sectional view is taken should be indicated on the 
view from which the section is cut by a broken line. 
The ends of the broken line should be designated by 
Arabic or Roman numerals corresponding to the view 
number of the sectional view, and should have arrows 
to indicate the direction of sight. Hatching must be 
used to indicate section portions of an object, and 
must be made by regularly spaced oblique parallel 
lines spaced sufficiently apart to enable the lines to be 
distinguished without difficulty. Hatching should not 
impede the clear reading of the reference characters 
and lead lines. If it is not possible to place reference 
characters outside the hatched area, the hatching may 
be broken off wherever reference characters are 
inserted. Hatching must be at a substantial angle to the 
surrounding axes or principal lines, preferably 45°. A 
cross section must be set out and drawn to show all of 
the materials as they are shown in the view from 
which the cross section was taken. The parts in cross 
section must show proper material(s) by hatching 
with regularly spaced parallel oblique strokes, the 
space between strokes being chosen on the basis of 
the total area to be hatched. The various parts of a 
cross section of the same item should be hatched in 
the same manner and should accurately and graphically 
indicate the nature of the material(s) that is illustrated 
in cross section. The hatching of juxtaposed 
different elements must be angled in a different way. 
In the case of large areas, hatching may be confined to 
an edging drawn around the entire inside of the outline 
of the area to be hatched. Different types of 
hatching should have different conventional meanings 
as regards the nature of a material seen in cross section. 
(4) Alternate position. A moved position may 
be shown by a broken line superimposed upon a suitable 
view if this can be done without crowding; otherwise, 
a separate view must be used for this purpose. 
(5) Modified forms. Modified forms of construction 
must be shown in separate views. 
(i) Arrangement of views. One view must not 
be placed upon another or within the outline of 
another. All views on the same sheet should stand in 
the same direction and, if possible, stand so that they 
can be read with the sheet held in an upright position. 
If views wider than the width of the sheet are necessary 
for the clearest illustration of the invention, the 


sheet may be turned on its side so that the top of the 
sheet, with the appropriate top margin to be used as 
the heading space, is on the right-hand side. Words 
must appear in a horizontal, left-to-right fashion when 
the page is either upright or turned so that the top 
becomes the right side, except for graphs utilizing 
standard scientific convention to denote the axis of 
abscissas (of X) and the axis of ordinates (of Y). 

(j) Front page view. The drawing must contain 
as many views as necessary to show the invention. 
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. Views 
must not be connected by projection lines and must 
not contain center lines. Applicant may suggest a single 
view (by figure number) for inclusion on the front 
page of the patent application publication and patent. 
(k) Scale. The scale to which a drawing is made 
must be large enough to show the mechanism without 
crowding when the drawing is reduced in size to two-
thirds in reproduction. Indications such as “actual 
size” or “scale 1/2” on the drawings are not permitted 
since these lose their meaning with reproduction in a 
different format. 
(l) Character of lines, numbers, and letters. All 
drawings must be made by a process which will give 
them satisfactory reproduction characteristics. Every 
line, number, and letter must be durable, clean, black 
(except for color drawings), sufficiently dense and 
dark, and uniformly thick and well-defined. The 
weight of all lines and letters must be heavy enough to 
permit adequate reproduction. This requirement 
applies to all lines however fine, to shading, and to 
lines representing cut surfaces in sectional views. 
Lines and strokes of different thicknesses may be used 
in the same drawing where different thicknesses have 
a different meaning. 
(m) Shading. The use of shading in views is 
encouraged if it aids in understanding the invention 
and if it does not reduce legibility. Shading is used to 
indicate the surface or shape of spherical, cylindrical, 
and conical elements of an object. Flat parts may also 
be lightly shaded. Such shading is preferred in the 
case of parts shown in perspective, but not for cross 
sections. See paragraph (h)(3) of this section. Spaced 
lines for shading are preferred. These lines must be 
thin, as few in number as practicable, and they must 
contrast with the rest of the drawings. As a substitute 


 

for shading, heavy lines on the shade side of objects 
can be used except where they superimpose on each 
other or obscure reference characters. Light should 
come from the upper left corner at an angle of 45°. 
Surface delineations should preferably be shown by 
proper shading. Solid black shading areas are not permitted, 
except when used to represent bar graphs or 
color. 

(n) Symbols. Graphical drawing symbols may 
be used for conventional elements when appropriate. 
The elements for which such symbols and labeled 
representations are used must be adequately identified 
in the specification. Known devices should be illustrated 
by symbols which have a universally recognized 
conventional meaning and are generally 
accepted in the art. Other symbols which are not universally 
recognized may be used, subject to approval 
by the Office, if they are not likely to be confused 
with existing conventional symbols, and if they are 
readily identifiable. 
(o) Legends. Suitable descriptive legends may 
be used subject to approval by the Office, or may be 
required by the examiner where necessary for understanding 
of the drawing. They should contain as few 
words as possible. 
(p) Numbers, letters, and reference characters. 


(1) Reference characters (numerals are preferred), 
sheet numbers, and view numbers must be 
plain and legible, and must not be used in association 
with brackets or inverted commas, or enclosed within 
outlines, e.g., encircled. They must be oriented in the 
same direction as the view so as to avoid having to 
rotate the sheet. Reference characters should be 
arranged to follow the profile of the object depicted. 
(2) 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. 
(3) Numbers, letters, and reference characters 
must measure at least.32 cm. (1/8 inch) in height. 
They should not be placed in the drawing so as to 
interfere with its comprehension. Therefore, they 
should not cross or mingle with the lines. They should 
not be placed upon hatched or shaded surfaces. When 
necessary, such as indicating a surface or cross section, 
a reference character may be underlined and a 
blank space may be left in the hatching or shading 
where the character occurs so that it appears distinct. 


(4) The same part of an invention appearing 
in more than one view of the drawing must always be 
designated by the same reference character, and the 
same reference character must never be used to designate 
different parts. 
(5) Reference characters not mentioned in 
the description shall not appear in the drawings. Reference 
characters mentioned in the description must 
appear in the drawings. 
(q) Lead lines. Lead lines are those lines 
between the reference characters and the details 
referred to. Such lines may be straight or curved and 
should be as short as possible. They must originate in 
the immediate proximity of the reference character 
and extend to the feature indicated. Lead lines must 
not cross each other. Lead lines are required for each 
reference character except for those which indicate 
the surface or cross section on which they are placed. 
Such a reference character must be underlined to 
make it clear that a lead line has not been left out by 
mistake. Lead lines must be executed in the same way 
as lines in the drawing. See paragraph (l) of this section. 
(r) Arrows. Arrows may be used at the ends of 
lines, provided that their meaning is clear, as follows: 
(1) On a lead line, a freestanding arrow to 
indicate the entire section towards which it points; 
(2) On a lead line, an arrow touching a line to 
indicate the surface shown by the line looking along 
the direction of the arrow; or 
(3) To show the direction of movement. 


(s) Copyright or Mask Work Notice. A copyright 
or mask work notice may appear in the drawing, 
but must be placed within the sight of the drawing 
immediately below the figure representing the copyright 
or mask work material and be limited to letters 
having a print size of 32 cm. to 64 cm. (1/8 to 1/4 
inches) high. The content of the notice must be limited 
to only those elements provided for by law. For 
example, “©1983 John Doe” (17 U.S.C. 401) and 
“*M* John Doe” (17 U.S.C. 909) would be properly 
limited and, under current statutes, legally sufficient 
notices of copyright and mask work, respectively. 
Inclusion of a copyright or mask work notice will be 
permitted only if the authorization language set forth 
in § 1.71(e) is included at the beginning (preferably as 
the first paragraph) of the specification. 


 

(t) Numbering of sheets of drawings. The 
sheets of drawings should be numbered in consecutive 
Arabic numerals, starting with 1, within the sight 
as defined in paragraph (g) of this section. These 
numbers, if present, must be placed in the middle of 
the top of the sheet, but not in the margin. The numbers 
can be placed on the right-hand side if the drawing 
extends too close to the middle of the top edge of 
the usable surface. The drawing sheet numbering 
must be clear and larger than the numbers used as reference 
characters to avoid confusion. The number of 
each sheet should be shown by two Arabic numerals 
placed on either side of an oblique line, with the first 
being the sheet number and the second being the total 
number of sheets of drawings, with no other marking. 
(u) Numbering of views. 


(1) The different views must be numbered in 
consecutive Arabic numerals, starting with 1, independent 
of the numbering of the sheets and, if possible, 
in the order in which they appear on the drawing 
sheet(s). Partial views intended to form one complete 
view, on one or several sheets, must be identified by 
the same number followed by a capital letter. View 
numbers must be preceded by the abbreviation “FIG.” 
Where only a single view is used in an application to 
illustrate the claimed invention, it must not be numbered 
and the abbreviation “FIG.” must not appear. 
(2) Numbers and letters identifying the views 
must be simple and clear and must not be used in 
association with brackets, circles, or inverted commas. 
The view numbers must be larger than the numbers 
used for reference characters. 
(v) Security markings. Authorized security 
markings may be placed on the drawings provided 
they are outside the sight, preferably centered in the 
top margin. 
(w) Corrections. Any corrections on drawings 
submitted to the Office must be durable and permanent. 
(x) Holes. No holes should be made by applicant 
in the drawing sheets. 
(y) Types of drawings. See § 1.152 for design 
drawings, § 1.165 for plant drawings, and § 
1.173(a)(2) for reissue drawings. 


[24 FR 10332, Dec. 22, 1959; 31 FR 12923, Oct. 4, 
1966; 36 FR 9775, May 28, 1971; 43 FR 20464, May 11, 
1978; 45 FR 73657, Nov. 6,1980; paras. (a), (b), (i), (j), and 

(l) amended, paras. (n), (o), and (p) added, 53 FR 47809, 
Nov. 28, 1988, effective Jan. 1, 1989; revised, 58 FR 
38719, July 20, 1993, effective Oct. 1, 1993; paras. (c), (f), 
(g), and (x) revised, 61 FR 42790, Aug. 19, 1996, effective 
Sept. 23, 1996; paras. (a)(2)(i), (b), (c) & (g) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a), (b), 
(c), (j), (k), (o), and (x) revised, and para. (y) added, 65 FR 
54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a)(2), 
(e), and (j) revised, 65 FR 57024, Sept. 20, 2000, effective 
Nov. 29, 2000; para. (c) revised, 69 FR 56481, Sept. 21, 
2004, effective Sept. 21, 2004; para. (a)(2) revised, 69 FR 
56481, Sept. 21, 2004, effective Nov. 22, 2004; para. (y) 
revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004] 

§ 1.85 Corrections to drawings. 

(a) A utility or plant application will not be 
placed on the files for examination until objections to 
the drawings have been corrected. 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. 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)). If a drawing in 
a design application meets the requirements of 
§ 1.84(e), (f), and (g) and is suitable for reproduction, 
but is not otherwise in compliance with § 1.84, the 
drawing may be admitted for examination. 
(b) The Office will not release drawings for 
purposes of correction. If corrections are necessary, 
new corrected drawings must be submitted within the 
time set by the Office. 
(c) If a corrected drawing is required or if a 
drawing does not comply with § 1.84 at the time an 
application is allowed, the Office may notify the 
applicant and set a three-month period of time from 
the mail date of the notice of allowability within 
which the applicant must file a corrected drawing in 
compliance with § 1.84 to avoid abandonment. This 
time period is not extendable under § 1.136(a) or § 
1.136(b). 


[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; 
53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; 
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective 
Nov. 29, 2000; para. (c) revised, 69 FR 56481, Sept. 
21, 2004, effective Oct. 21, 2004] 

 

§ 1.88 [Reserved] 

[Deleted, 58 FR 38719, July 20, 1993, effective Oct. 1, 
1993] 

MODELS, EXHIBITS, SPECIMENS 

§ 1.91 Models or exhibits not generally admitted 
as part of application or patent. 

(a) A model or exhibit will not be admitted as 
part of the record of an application unless it: 
(1) Substantially conforms to the requirements 
of § 1.52 or § 1.84; 
(2) Is specifically required by the Office; or 


(3) Is filed with a petition under this section 
including: 
(i) The fee set forth in § 1.17(h); and 


(ii) An explanation of why entry of the 
model or exhibit in the file record is necessary to 
demonstrate patentability. 
(b) Notwithstanding the provisions of paragraph 
(a) of this section, a model, working model, or 
other physical exhibit may be required by the Office if 
deemed necessary for any purpose in examination of 
the application. 
(c) Unless the model or exhibit substantially 
conforms to the requirements of § 1.52 or § 1.84 
under paragraph (a)(1) of this section, it must be 
accompanied by photographs that show multiple 
views of the material features of the model or exhibit 
and that substantially conform to the requirements of 
§ 1.84. 


[Revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; para. (a)(3)(i) revised, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000; para. (c) added, 69 FR 56481, Sept. 
21, 2004, effective Oct. 21, 2004] 

§ 1.92 [Reserved] 

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997] 

§ 1.93 Specimens. 

When the invention relates to a composition of matter, 
the applicant may be required to furnish specimens 
of the composition, or of its ingredients or 
intermediates, for the purpose of inspection or experiment. 


§ 1.94 Return of models, exhibits or specimens. 

(a) Models, exhibits, or specimens may be 
returned to the applicant if no longer necessary for the 
conduct of business before the Office. When applicant 
is notified that a model, exhibit, or specimen is no 
longer necessary for the conduct of business before 
the Office and will be returned, applicant must 
arrange for the return of the model, exhibit, or specimen 
at the applicant’s expense. The Office will dispose 
of perishables without notice to applicant unless 
applicant notifies the Office upon submission of the 
model, exhibit or specimen that a return is desired and 
makes arrangements for its return promptly upon notification 
by the Office that the model, exhibit or specimen 
is no longer necessary for the conduct of 
business before the Office. 
(b) Applicant is responsible for retaining the 
actual model, exhibit, or specimen for the enforceable 
life of any patent resulting from the application. The 
provisions of this paragraph do not apply to a model 
or exhibit that substantially conforms to the requirements 
of § 1.52 or § 1.84, where the model or exhibit 
has been described by photographs that substantially 
conform to § 1.84, or where the model, exhibit or 
specimen is perishable. 
(c) Where applicant is notified, pursuant to 
paragraph (a) of this section, of the need to arrange for 
return of a model, exhibit or specimen, applicant must 
arrange for the return within the period set in such 
notice, to avoid disposal of the model, exhibit or specimen 
by the Office. Extensions of time are available 
under § 1.136, except in the case of perishables. Failure 
to establish that the return of the item has been 
arranged for within the period set or failure to have 
the item removed from Office storage within a reasonable 
amount of time notwithstanding any arrangement 
for return, will permit the Office to dispose of the 
model, exhibit or specimen. 


[Revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003; revised, 69 FR 56481, Sept. 21, 2004, effective 
Oct. 21, 2004] 

§ 1.95 Copies of exhibits. 

Copies of models or other physical exhibits will not 
ordinarily be furnished by the Office, and any model 
or exhibit in an application or patent shall not be taken 
from the Office except in the custody of an employee 
of the Office specially authorized by the Director. 

 

[Revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003] 

§ 1.96 Submission of computer program listings. 

(a) General. Descriptions of the operation and 
general content of computer program listings should 
appear in the description portion of the specification. 
A computer program listing for the purpose of this 
section is defined as a printout that lists in appropriate 
sequence the instructions, routines, and other contents 
of a program for a computer. The program listing may 
be either in machine or machine-independent (object 
or source) language which will cause a computer to 
perform a desired procedure or task such as solve a 
problem, regulate the flow of work in a computer, or 
control or monitor events. Computer program listings 
may be submitted in patent applications as set forth in 
paragraphs (b) and (c) of this section. 
(b) Material which will be printed in the patent: 
If the computer program listing is contained in 300 
lines or fewer, with each line of 72 characters or 
fewer, it may be submitted either as drawings or as 
part of the specification. 
(1) Drawings. If the listing is submitted as 
drawings, it must be submitted in the manner and 
complying with the requirements for drawings as provided 
in § 1.84. At least one figure numeral is 
required on each sheet of drawing. 
(2) Specification. 


(i) If the listing is submitted as part of the 
specification, it must be submitted in accordance with 
the provisions of § 1.52. 
(ii) Any listing having more than 60 lines 
of code that is submitted as part of the specification 
must be positioned at the end of the description but 
before the claims. Any amendment must be made by 
way of submission of a substitute sheet. 
(c) As an appendix which will not be printed: 
Any computer program listing may, and any computer 
program listing having over 300 lines (up to 72 characters 
per line) must, be submitted on a compact disc 
in compliance with § 1.52(e). A compact disc containing 
such a computer program listing is to be referred 
to as a “computer program listing appendix.” The 
“computer program listing appendix” will not be part 
of the printed patent. The specification must include a 


reference to the “computer program listing appendix” 
at the location indicated in § 1.77(b)(5). 

(1) Multiple computer program listings for a 
single application may be placed on a single compact 
disc. Multiple compact discs may be submitted for a 
single application if necessary. A separate compact 
disc is required for each application containing a computer 
program listing that must be submitted on a 
“computer program listing appendix.” 
(2) The “computer program listing appendix” 
must be submitted on a compact disc that complies 
with § 1.52(e) and the following specifications (no 
other format shall be allowed): 
(i) Computer Compatibility: IBM PC/XT/ 
AT, or compatibles, or Apple Macintosh; 
(ii) Operating System Compatibility: MSDOS, 
MS-Windows, Unix, or Macintosh; 


(iii) Line Terminator: ASCII Carriage 
Return plus ASCII Line Feed; 

(iv) Control Codes: the data must not be 
dependent on control characters or codes which are 
not defined in the ASCII character set; and 

(v) Compression: uncompressed data. 

[46 FR 2612, Jan. 12, 1981; para. (b)(1), 54 FR 47519, 
Nov. 15, 1989, effective Jan. 16, 1990; revised, 61 FR 
42790, Aug. 19, 1996, effective Sept. 23, 1996; paras. (b) 
and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 
8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 
2000; para. (c) introductory text revised, 70 FR 54259, 
Sept. 14, 2005, effective Sept. 14, 2005] 

INFORMATION DISCLOSURE STATEMENT 

§ 1.97 Filing of information disclosure statement. 
(a) In order for an applicant for a patent or for a 

reissue of a patent to have an information disclosure 
statement in compliance with § 1.98 considered by the 
Office during the pendency of the application, the 
information disclosure statement must satisfy one of 
paragraphs (b), (c), or (d) of this section. 

(b) An information disclosure statement shall 
be considered by the Office if filed by the applicant 
within any one of the following time periods: 
(1) Within three months of the filing date of a 
national application other than a continued prosecution 
application under § 1.53(d); 


 

(2) Within three months of the date of entry 
of the national stage as set forth in § 1.491 in an international 
application; 
(3) Before the mailing of a first Office action 
on the merits; or 
(4) Before the mailing of a first Office action 
after the filing of a request for continued examination 
under § 1.114. 
(c) An information disclosure statement shall 
be considered by the Office if filed after the period 
specified in paragraph (b) of this section, provided 
that the information disclosure statement is filed 
before the mailing date of any of a final action under 
§ 1.113, a notice of allowance under § 1.311, or an 
action that otherwise closes prosecution in the application, 
and it is accompanied by one of: 
(1) The statement specified in paragraph (e) 
of this section; or 
(2) The fee set forth in § 1.17(p). 


(d) An information disclosure statement shall 
be considered by the Office if filed by the applicant 
after the period specified in paragraph (c) of this section, 
provided that the information disclosure statement 
is filed on or before payment of the issue fee and 
is accompanied by: 
(1) The statement specified in paragraph (e) 
of this section; and 
(2) The fee set forth in § 1.17(p). 


(e) A statement under this section must state 
either: 
(1) That each item of information contained 
in the information disclosure statement was first cited 
in any communication from a foreign patent office in 
a counterpart foreign application not more than three 
months prior to the filing of the information disclosure 
statement; or 
(2) That no item of information contained in 
the information disclosure statement was cited in a 
communication from a foreign patent office in a counterpart 
foreign application, and, to the knowledge of 
the person signing the certification after making reasonable 
inquiry, no item of information contained in 
the information disclosure statement was known to 
any individual designated in § 1.56(c) more than three 
months prior to the filing of the information disclosure 
statement. 
(f) No extensions of time for filing an information 
disclosure statement are permitted under § 1.136. 


If a bona fide attempt is made to comply with § 1.98, 
but part of the required content is inadvertently omitted, 
additional time may be given to enable full compliance. 


(g) An information disclosure statement filed in 
accordance with section shall not be construed as a 
representation that a search has been made. 
(h) The filing of an information disclosure 
statement shall not be construed to be an admission 
that the information cited in the statement is, or is 
considered to be, material to patentability as defined 
in § 1.56(b). 
(i) If an information disclosure statement 
does not comply with either this section or § 1.98, it 
will be placed in the file but will not be considered by 
the Office. 


[48 FR 2712, Jan. 20, 1983, effective date Feb. 27, 
1983; 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; 
para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective 
June 8, 1995; paras. (a)- (d) revised, 61 FR 42790, Aug. 19, 
1996, effective Sept. 23, 1996; paras. (c)-(e) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b) 
revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 
2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); 
paras. (a) through (e) and (i) revised, 65 FR 54604, Sept. 8, 
2000, effective Nov. 7, 2000] 

§ 1.98 Content of information disclosure statement. 
(a) Any information disclosure statement filed 

under § 1.97 shall include the items listed in paragraphs 
(a)(1), (a)(2) and (a)(3) of this section. 

(1) A list of all patents, publications, applications, 
or other information submitted for consideration 
by the Office. U.S. patents and U.S. patent 
application publications must be listed in a section 
separately from citations of other documents. Each 
page of the list must include: 
(i) The application number of the application 
in which the information disclosure statement is 
being submitted; 
(ii) A column that provides a space, next to 
each document to be considered, for the examiner’s 
initials; and 


(iii) A heading that clearly indicates that 
the list is an information disclosure statement. 

(2) A legible copy of: 

(i) Each foreign patent; 

 

(ii) Each publication or that portion which 
caused it to be listed, other than U.S. patents and U.S. 
patent application publications unless required by the 
Office; 

(iii) For each cited pending unpublished 

U.S. application, the application specification including 
the claims, and any drawing of the application, or 
that portion of the application which caused it to be 
listed including any claims directed to that portion; 
and 

(iv) All other information or that portion 
which caused it to be listed. 
(3)(i) A concise explanation of the relevance, as 
it is presently understood by the individual designated 
in § 1.56(c) most knowledgeable about the content of 
the information, of each patent, publication, or other 
information listed that is not in the English language. 
The concise explanation may be either separate from 
applicant’s specification or incorporated therein. 


(ii) A copy of the translation if a written 
English-language translation of a non-English-language 
document, or portion thereof, is within the possession, 
custody, or control of, or is readily available 
to any individual designated in § 1.56(c). 
(b)(1) Each U.S. patent listed in an information 
disclosure statement must be identified by inventor, 
patent number, and issue date. 


(2) Each U.S. patent application publication 
listed in an information disclosure statement shall be 
identified by applicant, patent application publication 
number, and publication date. 
(3) Each U.S. application listed in an information 
disclosure statement must be identified by the 
inventor, application number, and filing date. 
(4) Each foreign patent or published foreign 
patent application listed in an information disclosure 
statement must be identified by the country or patent 
office which issued the patent or published the application, 
an appropriate document number, and the publication 
date indicated on the patent or published 
application. 
(5) Each publication listed in an information 
disclosure statement must be identified by publisher, 
author (if any), title, relevant pages of the publication, 
date, and place of publication. 
(c) When the disclosures of two or more patents 
or publications listed in an information disclosure 
statement are substantively cumulative, a copy of one 


of the patents or publications as specified in paragraph 
(a) of this section may be submitted without 
copies of the other patents or publications, provided 
that it is stated that these other patents or publications 
are cumulative. 

(d) A copy of any patent, publication, pending 

U.S. application or other information, as specified in 
paragraph (a) of this section, listed in an information 
disclosure statement is required to be provided, even 
if the patent, publication, pending U.S. application or 
other information was previously submitted to, or 
cited by, the Office in an earlier application, unless: 

(1) The earlier application is properly identified 
in the information disclosure statement and is 
relied on for an earlier effective filing date under 
35 U.S.C. 120; and 
(2) The information disclosure statement 
submitted in the earlier application complies with 
paragraphs (a) through (c) of this section. 


[42 FR 5594, Jan. 28, 1977; para. (a) 48 FR 2712, Jan. 
20, 1983, effective date Feb. 27, 1983; 57 FR 2021, Jan. 17, 
1992, effective Mar. 16, 1992; revised, 65 FR 54604, Sept. 
8, 2000, effective Nov. 7, 2000; paras. (a)(2) and (b) 
revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 
2000; para. (e) added, 68 FR 38611, June 30, 2003, effective 
July 30, 2003; paras. (a) and (c) revised and para. (e) 
removed, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 
2004] 

§ 1.99 Third-party submission in published 
application. 

(a) A submission by a member of the public of 
patents or publications relevant to a pending published 
application may be entered in the application 
file if the submission complies with the requirements 
of this section and the application is still pending 
when the submission and application file are brought 
before the examiner. 
(b) A submission under this section must identify 
the application to which it is directed by application 
number and include: 
(1) The fee set forth in § 1.17(p); 


(2) A list of the patents or publications submitted 
for consideration by the Office, including the 
date of publication of each patent or publication; 
(3) A copy of each listed patent or publication 
in written form or at least the pertinent portions; 
and 


 

(4) An English language translation of all the 
necessary and pertinent parts of any non-English language 
patent or publication in written form relied 
upon. 
(c) The submission under this section must be 
served upon the applicant in accordance with § 1.248. 
(d) A submission under this section shall not 
include any explanation of the patents or publications, 
or any other information. The Office will not enter 
such explanation or information if included in a submission 
under this section. A submission under this 
section is also limited to ten total patents or publications. 
(e) A submission under this section must be 
filed within two months from the date of publication 
of the application (§ 1.215(a)) or prior to the mailing 
of a notice of allowance (§ 1.311), whichever is earlier. 
Any submission under this section not filed 
within this period is permitted only when the patents 
or publications could not have been submitted to the 
Office earlier, and must also be accompanied by the 
processing fee set forth in § 1.17(i). A submission by 
a member of the public to a pending published application 
that does not comply with the requirements of 
this section will not be entered. 
(f) A member of the public may include a self-
addressed postcard with a submission to receive an 
acknowledgment by the Office that the submission 
has been received. A member of the public filing a 
submission under this section will not receive any 
communications from the Office relating to the submission 
other than the return of a self-addressed postcard. 
In the absence of a request by the Office, an 
applicant has no duty to, and need not, reply to a submission 
under this section. 


[48 FR 2712, Jan. 20, 1983; effective Feb. 27, 1983; 
removed and reserved, 57 FR 2021, Jan. 17, 1992, effective 
Mar. 16, 1992; added, 65 FR 57024, Sept. 20, 2000, effective 
Nov. 29, 2000; para. (f) corrected, 65 FR 66502, Nov. 
6, 2000, effective Nov. 29, 2000; paras. (d) and (e) revised, 
68 FR 38611, June 30, 2003, effective July 30, 2003] 

EXAMINATION OF APPLICATIONS 

§ 1.101 [Reserved] 

[29 FR 13470, Sept. 30, 1964; para. (a), 48 FR 2712, 
Jan. 20, 1983, effective Feb. 27, 1983; para. (a), 50 FR 
9381, Mar. 7, 1985, effective May 8, 1985; 52 FR 20046, 
May 28, 1987, effective July 1, 1987; para. (a) revised, 
60 FR 20195, Apr. 25, 1995, effective June 8, 1995; 
removed and reserved, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997] 

§ 1.102 Advancement of examination. 

(a) Applications will not be advanced out of 
turn for examination or for further action except as 
provided by this part, or upon order of the Director to 
expedite the business of the Office, or upon filing of a 
request under paragraph (b) of this section or upon filing 
a petition under paragraphs (c) or (d) of this section 
with a showing which, in the opinion of the 
Director, will justify so advancing it. 
(b) Applications wherein the inventions are 
deemed of peculiar importance to some branch of the 
public service and the head of some department of the 
Government requests immediate action for that reason, 
may be advanced for examination. 
(c) A petition to make an application special 
may be filed without a fee if the basis for the petition 
is: 
(1) The applicant’s age or health; or 
(2) That the invention will materially: 




(i) Enhance the quality of the environment; 
(ii) Contribute to the development or conservation 
of energy resources; or 
(iii) Contribute to countering terrorism. 


(d) A petition to make an application special on 
grounds other than those referred to in paragraph (c) 
of this section must be accompanied by the fee set 
forth in § 1.17(h). 


[24 FR 10332, Dec. 22, 1959; paras. (a), (c), and (d), 
47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; para. 
(d), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 1989; 
para. (d) revised, 60 FR 20195, Apr. 25, 1995, effective 
June 8, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997; para. (d) revised, 65 FR 54604, 
Sept. 8, 2000, effective Nov. 7, 2000; para. (a) revised, 68 
FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (c) 
revised, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 
2004] 

§ 1.103 Suspension of action by the Office. 

(a) Suspension for cause. On request of the 
applicant, the Office may grant a suspension of action 
by the Office under this paragraph for good and suffi-

 

cient cause. The Office will not suspend action if a 
reply by applicant to an Office action is outstanding. 
Any petition for suspension of action under this paragraph 
must specify a period of suspension not exceeding 
six months. Any petition for suspension of action 
under this paragraph must also include: 

(1) A showing of good and sufficient cause 
for suspension of action; and 
(2) The fee set forth in § 1.17(g), unless such 
cause is the fault of the Office. 
(b) Limited suspension of action in a continued 
prosecution application (CPA) filed under § 1.53(d). 
On request of the applicant, the Office may grant a 
suspension of action by the Office under this paragraph 
in a continued prosecution application filed 
under § 1.53(d) for a period not exceeding three 
months. Any request for suspension of action under 
this paragraph must be filed with the request for an 
application filed under § 1.53(d), specify the period of 
suspension, and include the processing fee set forth in 
§ 1.17(i). 
(c) Limited suspension of action after a request 
for continued application (RCE) under § 1.114. On 
request of the applicant, the Office may grant a suspension 
of action by the Office under this paragraph 
after the filing of a request for continued examination 
in compliance with § 1.114 for a period not exceeding 
three months. Any request for suspension of action 
under this paragraph must be filed with the request for 
continued examination under § 1.114, specify the 
period of suspension, and include the processing fee 
set forth in § 1.17(i). 
(d) Deferral of examination. On request of the 
applicant, the Office may grant a deferral of examination 
under the conditions specified in this paragraph 
for a period not extending beyond three years from 
the earliest filing date for which a benefit is claimed 
under title 35, United States Code. A request for 
deferral of examination under this paragraph must 
include the publication fee set forth in § 1.18(d) and 
the processing fee set forth in § 1.17(i). A request for 
deferral of examination under this paragraph will not 
be granted unless: 
(1) The application is an original utility or 
plant application filed under § 1.53(b) or resulting 
from entry of an international application into the 
national stage after compliance with § 1.495; 


(2) The applicant has not filed a nonpublication 
request under § 1.213(a), or has filed a request 
under § 1.213(b) to rescind a previously filed nonpublication 
request; 
(3) The application is in condition for publication 
as provided in § 1.211(c); and 
(4) The Office has not issued either an Office 
action under 35 U.S.C. 132 or a notice of allowance 
under 35 U.S.C. 151. 
(e) Notice of suspension on initiative of the 
Office. The Office will notify applicant if the Office 
suspends action by the Office on an application on its 
own initiative. 
(f) Suspension of action for public safety or 
defense. The Office may suspend action by the Office 
by order of the Director if the following conditions 
are met: 
(1) The application is owned by the United 
States; 
(2) Publication of the invention may be detrimental 
to the public safety or defense; and 
(3) The appropriate department or agency 
requests such suspension. 
(g) Statutory invention registration. The Office 
will suspend action by the Office for the entire pendency 
of an application if the Office has accepted a 
request to publish a statutory invention registration in 
the application, except for purposes relating to patent 
interference proceedings under part 41, subpart D, of 
this title. 


[24 FR 10332, Dec. 22, 11959; 33 FR 5624, Apr. 11, 
1968; paras. (a) and (b), 47 FR 41276, Sept. 17, 1982, 
effective Oct. 1, 1982; para. (d), 49 FR 48416, Dec. 12, 
1984, effective Feb. 11, 1985; para. (d), 50 FR 9381, Mar. 
7, 1985, effective May 8, 1985; para. (a), 54 FR 6893, Feb. 
15, 1989, effective Apr. 17, 1989; para. (a) revised, 60 FR 
20195, Apr. 25, 1995, effective June 8, 1995; para. (a) 
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997; revised, 65 FR 50092, Aug. 16, 2000, effective Aug. 
16, 2000; paras. (d) through (f) redesignated as (e) through 

(g) and para. (d) added, 65 FR 57024, Sept. 20, 2000, effective 
Nov. 29, 2000; para. (d)(1) revised, 67 FR 520, Jan. 4, 
2002, effective Apr. 1, 2002; para. (f) revised, 68 FR 
14332, Mar. 25, 2003, effective May 1, 2003; para. (g) 
revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 
2004; para. (a)(2) revised, 69 FR 56481, Sept. 21, 2004, 
effective Nov. 22, 2004] 

 

§ 1.104 Nature of examination. 

(a) Examiner’s action. 

(1) On taking up an application for examination 
or a patent in a reexamination proceeding, the 
examiner shall make a thorough study thereof and 
shall make a thorough investigation of the available 
prior art relating to the subject matter of the claimed 
invention. The examination shall be complete with 
respect both to compliance of the application or patent 
under reexamination with the applicable statutes and 
rules and to the patentability of the invention as 
claimed, as well as with respect to matters of form, 
unless otherwise indicated. 
(2) The applicant, or in the case of a reexamination 
proceeding, both the patent owner and the 
requester, will be notified of the examiner’s action. 
The reasons for any adverse action or any objection or 
requirement will be stated in an Office action and 
such information or references will be given as may 
be useful in aiding the applicant, or in the case of a 
reexamination proceeding the patent owner, to judge 
the propriety of continuing the prosecution. 
(3) An international-type search will be made 
in all national applications filed on and after June 1, 
1978. 
(4) Any national application may also have 
an international-type search report prepared thereon at 
the time of the national examination on the merits, 
upon specific written request therefor and payment of 
the international-type search report fee set forth in 
§ 1.21(e). The Patent and Trademark Office does not 
require that a formal report of an international-type 
search be prepared in order to obtain a search fee 
refund in a later filed international application. 
(b) Completeness of examiner’s action. The 
examiner’s action will be complete as to all matters, 
except that in appropriate circumstances, such as misjoinder 
of invention, fundamental defects in the application, 
and the like, the action of the examiner may be 
limited to such matters before further action is made. 
However, matters of form need not be raised by the 
examiner until a claim is found allowable. 
(c) Rejection of claims. 


(1) If the invention is not considered patentable, 
or not considered patentable as claimed, the 
claims, or those considered unpatentable will be 
rejected. 


(2) In rejecting claims for want of novelty or 
for obviousness, the examiner must cite the best references 
at his or her command. When a reference is 
complex or shows or describes inventions other than 
that claimed by the applicant, the particular part relied 
on must be designated as nearly as practicable. The 
pertinence of each reference, if not apparent, must be 
clearly explained and each rejected claim specified. 
(3) In rejecting claims the examiner may rely 
upon admissions by the applicant, or the patent owner 
in a reexamination proceeding, as to any matter 
affecting patentability and, insofar as rejections in 
applications are concerned, may also rely upon facts 
within his or her knowledge pursuant to paragraph 
(d)(2) of this section. 
(4) Subject matter which is developed by 
another person which qualifies as prior art only under 
35 U.S.C. 102(e), (f) or (g) may be used as prior art 
under 35 U.S.C. 103 against a claimed invention 
unless the entire rights to the subject matter and the 
claimed invention were commonly owned by the 
same person or subject to an obligation of assignment 
to the same person at the time the claimed invention 
was made. 
(i) Subject matter developed by another 
person and a claimed invention shall be deemed to 
have been commonly owned by the same person or 
subject to an obligation of assignment to the same 
person in any application and in any patent granted on 
or after December 10, 2004, if: 
(A) The claimed invention and the subject 
matter was made by or on behalf of parties to a 
joint research agreement that was in effect on or 
before the date the claimed invention was made; 
(B) The claimed invention was made as 
a result of activities undertaken within the scope of 
the joint research agreement; and 
(C) The application for patent for the 
claimed invention discloses or is amended to disclose 
the names of the parties to the joint research agreement. 
(ii) For purposes of paragraph (c)(4)(i) of 
this section, the term “joint research agreement” 
means a written contract, grant, or cooperative agreement 
entered into by two or more persons or entities 
for the performance of experimental, developmental, 
or research work in the field of the claimed invention. 


 

(iii) To overcome a rejection under 35 

U.S.C. 103(a) based upon subject matter which qualifies 
as prior art under only one or more of 35 U.S.C. 
102(e), (f) or (g) via 35 U.S.C. 103(c)(2), the applicant 
must provide a statement to the effect that the 
prior art and the claimed invention were made by or 
on the behalf of parties to a joint research agreement, 
within the meaning of 35 U.S.C. 103(c)(3) and paragraph 
(c)(4)(ii) of this section, that was in effect on or 
before the date the claimed invention was made, and 
that the claimed invention was made as a result of 
activities undertaken within the scope of the joint 
research agreement. 

(5) The claims in any original application 
naming an inventor will be rejected as being precluded 
by a waiver in a published statutory invention 
registration naming that inventor if the same subject 
matter is claimed in the application and the statutory 
invention registration. The claims in any reissue 
application naming an inventor will be rejected as 
being precluded by a waiver in a published statutory 
invention registration naming that inventor if the reissue 
application seeks to claim subject matter: 
(i) Which was not covered by claims 
issued in the patent prior to the date of publication of 
the statutory invention registration; and 
(ii) Which was the same subject matter 
waived in the statutory invention registration. 
(d) Citation of references. 


(1) If domestic patents are cited by the examiner, 
their numbers and dates, and the names of the 
patentees will be stated. If domestic patent application 
publications are cited by the examiner, their publication 
number, publication date, and the names of the 
applicants will be stated. If foreign published applications 
or patents are cited, their nationality or country, 
numbers and dates, and the names of the patentees 
will be stated, and such other data will be furnished as 
may be necessary to enable the applicant, or in the 
case of a reexamination proceeding, the patent owner, 
to identify the published applications or patents cited. 
In citing foreign published applications or patents, in 
case only a part of the document is involved, the particular 
pages and sheets containing the parts relied 
upon will be identified. If printed publications are 
cited, the author (if any), title, date, pages or plates, 
and place of publication, or place where a copy can be 
found, will be given. 


(2) When a rejection in an application is 
based on facts within the personal knowledge of an 
employee of the Office, the data shall be as specific as 
possible, and the reference must be supported, when 
called for by the applicant, by the affidavit of such 
employee, and such affidavit shall be subject to contradiction 
or explanation by the affidavits of the applicant 
and other persons. 
(e) Reasons for allowance. If the examiner 
believes that the record of the prosecution as a whole 
does not make clear his or her reasons for allowing a 
claim or claims, the examiner may set forth such reasoning. 
The reasons shall be incorporated into an 
Office action rejecting other claims of the application 
or patent under reexamination or be the subject of a 
separate communication to the applicant or patent 
owner. The applicant or patent owner may file a statement 
commenting on the reasons for allowance within 
such time as may be specified by the examiner. Failure 
by the examiner to respond to any statement commenting 
on reasons for allowance does not give rise to 
any implication. 


[43 FR 20465, May 11, 1978; 46 FR 29182, May 29, 
1981; para. (d), 47 FR 41276, Sept. 17, 1982, effective date 
Oct. 1, 1982; para. (e), 50 FR 9381, Mar. 7, 1985, effective 
May 8, 1985; para. (e), 57 FR 29642, July 6, 1992, effective 
Sept. 4, 1992; revised, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997; para. (c)(4) revised, 65 FR 14865, 
Mar. 20, 2000, effective May 29, 2000 (adopted as final, 
65 FR 50092, Aug. 16, 2000); paras. (a)(2) and (e) revised, 
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. 
(a)(5) removed and para. (d)(1) revised, 65 FR 57024, Sept. 
20, 2000, effective Nov. 29, 2000; para. (c)(4) revised, 70 
FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; para. 
(c)(4) revised, 70 FR 54259, Sept. 14, 2005, effective Sept. 
14, 2005] 

§ 1.105 Requirements for information. 

(a)(1) In the course of examining or treating a 
matter in a pending or abandoned application filed 
under 35 U.S.C. 111 or 371 (including a reissue application), 
in a patent, or in a reexamination proceeding, 
the examiner or other Office employee may require 
the submission, from individuals identified under § 
1.56(c), or any assignee, of such information as may 
be reasonably necessary to properly examine or treat 
the matter, for example: 

(i) Commercial databases: The existence 
of any particularly relevant commercial database 

 

known to any of the inventors that could be searched 
for a particular aspect of the invention. 

(ii) Search: Whether a search of the prior 
art was made, and if so, what was searched. 

(iii) Related information: A copy of any 
non-patent literature, published application, or patent 

(U.S. or foreign), by any of the inventors, that relates 
to the claimed invention. 

(iv) Information used to draft application: 
A copy of any non-patent literature, published application, 
or patent (U.S. or foreign) that was used to 
draft the application. 
(v) Information used in invention process: 
A copy of any non-patent literature, published application, 
or patent (U.S. or foreign) that was used in the 
invention process, such as by designing around or 
providing a solution to accomplish an invention 
result. 
(vi) Improvements: Where the claimed 
invention is an improvement, identification of what is 
being improved. 


(vii) In Use: Identification of any use of the 
claimed invention known to any of the inventors at 
the time the application was filed notwithstanding the 
date of the use. 

(viii) Technical information known to applicant. Technical information known to applicant concerning 
the related art, the disclosure, the claimed 
subject matter, other factual information pertinent to 
patentability, or concerning the accuracy of the examiner’s 
stated interpretation of such items. 

(2) Where an assignee has asserted its right 
to prosecute pursuant to § 3.71(a) of this chapter, matters 
such as paragraphs (a)(1)(i), (iii), and (vii) of this 
section may also be applied to such assignee. 
(3) Requirements for factual information 
known to applicant may be presented in any appropriate 
manner, for example: 
(i) A requirement for factual information; 


(ii) Interrogatories in the form of specific 
questions seeking applicant’s factual knowledge; or 


(iii) Stipulations as to facts with which the 
applicant may agree or disagree. 

(4) Any reply to a requirement for information 
pursuant to this section that states either that the 
information required to be submitted is unknown to or 
is not readily available to the party or parties from 
which it was requested may be accepted as a complete 
reply. 

(b) The requirement for information of paragraph 
(a)(1) of this section may be included in an 
Office action, or sent separately. 
(c) A reply, or a failure to reply, to a requirement 
for information under this section will be governed 
by §§ 1.135 and 1.136. 


[Removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec.1, 1997; added, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000; para. (a)(3) revised and paras. 
(a)(1)(viii) and (a)(4) added, 69 FR 56481, Sept. 21, 2004, 
effective Oct. 21, 2004] 

§ 1.106 [Reserved] 

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 
1969; para. (c) added, 47 FR 21752, May 19, 1982, effective 
July 1, 1982; paras. (d) and (e), 50 FR 9381, Mar. 7, 
1985, effective May 8, 1985; removed and reserved, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997] 

§ 1.107 [Reserved] 

[46 FR 29182, May 29, 1981; para. (a) revised, 61 FR 
42790, Aug. 19, 1996, effective Sept. 23, 1996; removed 
and reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997] 

§ 1.108 [Reserved] 

[50 FR 9381, Mar. 7, 1985, effective May 8, 1985; 
removed and reserved, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997] 

§ 1.109 [Reserved] 

[Added 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 
2004; removed and reserved, 70 FR 54259, Sept. 14, 2005, 
effective Sept. 14, 2005] 

§ 1.110 Inventorship and date of invention of the 
subject matter of individual claims. 

When more than one inventor is named in an application 
or patent, the Patent and Trademark Office, 
when necessary for purposes of an Office proceeding, 
may require an applicant, patentee, or owner to identify 
the inventive entity of the subject matter of each 
claim in the application or patent. Where appropriate, 

 

the invention dates of the subject matter of each claim 
and the ownership of the subject matter on the date of 
invention may be required of the applicant, patentee 
or owner. See also §§ 1.78(c) and 1.130. 

[50 FR 9381, Mar. 7, 1985, effective date May 8, 1985; 
revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 
1996] 

ACTION BY APPLICANT AND FURTHER
CONSIDERATION


§ 1.111 Reply by applicant or patent owner to a 
non-final Office action. 

(a)(1) If the Office action after the first examination 
(§ 1.104) is adverse in any respect, the applicant 
or patent owner, if he or she persists in his or her 
application for a patent or reexamination proceeding, 
must reply and request reconsideration or further 
examination, with or without amendment. See §§ 

1.135 and 1.136 for time for reply to avoid abandonment. 


(2) Supplemental replies. (i) A reply that is 
supplemental to a reply that is in compliance with § 
1.111(b) will not be entered as a matter of right except 
as provided in paragraph (a)(2)(ii) of this section. The 
Office may enter a supplemental reply if the supplemental 
reply is clearly limited to: 
(A) Cancellation of a claim(s); 


(B) Adoption of the examiner suggestion(
s); 
(C) Placement of the application in condition 
for allowance; 
(D) Reply to an Office requirement 
made after the first reply was filed; 
(E) Correction of informalities (e.g., 
typographical errors); or 
(F) Simplification of issues for appeal. 


(ii) A supplemental reply will be entered if 
the supplemental reply is filed within the period during 
which action by the Office is suspended under § 
1.103(a) or (c). 
(b) In order to be entitled to reconsideration or 
further examination, the applicant or patent owner 
must reply to the Office action. The reply by the 
applicant or patent owner must be reduced to a writing 
which distinctly and specifically points out the 
supposed errors in the examiner’s action and must 
reply to every ground of objection and rejection in the 


prior Office action. The reply must present arguments 
pointing out the specific distinctions believed to render 
the claims, including any newly presented claims, 
patentable over any applied references. If the reply is 
with respect to an application, a request may be made 
that objections or requirements as to form not necessary 
to further consideration of the claims be held in 
abeyance until allowable subject matter is indicated. 
The applicant’s or patent owner’s reply must appear 
throughout to be a bona fide attempt to advance the 
application or the reexamination proceeding to final 
action. A general allegation that the claims define a 
patentable invention without specifically pointing out 
how the language of the claims patentably distinguishes 
them from the references does not comply 
with the requirements of this section. 

(c) In amending in reply to a rejection of claims 
in an application or patent under reexamination, the 
applicant or patent owner must clearly point out the 
patentable novelty which he or she thinks the claims 
present in view of the state of the art disclosed by the 
references cited or the objections made. The applicant 
or patent owner must also show how the amendments 
avoid such references or objections. 

[46 FR 29182, May 29, 1981; para. (b) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. (a) and 

(c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; para. (a)(2) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; para. (a)(2) revised, 69 FR 56481, 
Sept. 21, 2004, effective Oct. 21, 2004; para. (a)(2)(i) 
revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8. 2004] 

§ 1.112 Reconsideration before final action.

 After reply by applicant or patent owner (§ 1.111 
or § 1.945) to a non-final action and any comments by 
an inter partes reexamination requester (§ 1.947), the 
application or the patent under reexamination will be 
reconsidered and again examined. The applicant, or in 
the case of a reexamination proceeding the patent 
owner and any third party requester, will be notified if 
claims are rejected, objections or requirements made, 
or decisions favorable to patentability are made, in the 
same manner as after the first examination (§ 1.104). 
Applicant or patent owner may reply to such Office 
action in the same manner provided in § 1.111 or § 
1.945, with or without amendment, unless such Office 
action indicates that it is made final (§ 1.113) or an 
appeal (§ 41.31 of this title) has been taken (§ 1.116), 

 

or in an inter partes reexamination, that it is an action 
closing prosecution (§ 1.949) or a right of appeal 
notice (§ 1.953). 

[46 FR 29182, May 29, 1981; revised, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 
54604, Sept. 8, 2000, effective Nov. 7, 2000; revised, 65 
FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 69 
FR 49959, Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.113 Final rejection or action. 

(a) On the second or any subsequent examination 
or consideration by the examiner the rejection or 
other action may be made final, whereupon applicant’s, 
or for ex parte reexaminations filed under § 
1.510, patent owner’s reply is limited to appeal in the 
case of rejection of any claim (§ 41.31 of this title), or 
to amendment as specified in § 1.114 or § 1.116. Petition 
may be taken to the Director in the case of objections 
or requirements not involved in the rejection of 
any claim (§ 1.181). Reply to a final rejection or 
action must comply with § 1.114 or paragraph (c) of 
this section. For final actions in an inter partes reexamination 
filed under § 1.913, see § 1.953. 
(b) In making such final rejection, the examiner 
shall repeat or state all grounds of rejection then considered 
applicable to the claims in the application, 
clearly stating the reasons in support thereof. 
(c) Reply to a final rejection or action must 
include cancellation of, or appeal from the rejection 
of, each rejected claim. If any claim stands allowed, 
the reply to a final rejection or action must comply 
with any requirements or objections as to form. 


[24 FR 10332, Dec. 22, 1959; 46 FR 29182, May 29, 
1981; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; revised, 65 FR 14865, Mar. 20, 2000, effective 
May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 
2000); para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective 
Feb. 5, 2001; para. (a) revised, 68 FR 14332, Mar. 25, 
2003, effective May 1, 2003; para. (a) revised, 69 FR 
49959, Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.114 Request for continued examination. 

(a) If prosecution in an application is closed, an 
applicant may request continued examination of the 
application by filing a submission and the fee set forth 
in § 1.17(e) prior to the earliest of: 

(1) Payment of the issue fee, unless a petition 
under § 1.313 is granted; 
(2) Abandonment of the application; or 


(3) The filing of a notice of appeal to the U.S. 
Court of Appeals for the Federal Circuit under 35 


U.S.C. 141, or the commencement of a civil action 
under 35 U.S.C. 145 or 146, unless the appeal or civil 
action is terminated. 

(b) Prosecution in an application is closed as 
used in this section means that the application is under 
appeal, or that the last Office action is a final action (§ 
1.113), a notice of allowance (§ 1.311), or an action 
that otherwise closes prosecution in the application. 
(c) A submission as used in this section 
includes, but is not limited to, an information disclosure 
statement, an amendment to the written description, 
claims, or drawings, new arguments, or new 
evidence in support of patentability. If reply to an 
Office action under 35 U.S.C. 132 is outstanding, the 
submission must meet the reply requirements of § 
(d) If an applicant timely files a submission 
and fee set forth in § 1.17(e), the Office will withdraw 
the finality of any Office action and the submission 
will be entered and considered. If an applicant files a 
request for continued examination under this section 
after appeal, but prior to a decision on the appeal, it 
will be treated as a request to withdraw the appeal and 
to reopen prosecution of the application before the 
examiner. An appeal brief (§ 41.37 of this title) or a 
reply brief (§ 41.41 of this title), or related papers, 
will not be considered a submission under this section. 
(e) The provisions of this section do not apply 
to: 
(1) A provisional application; 


(2) An application for a utility or plant patent 
filed under 35 U.S.C. 111(a) before June 8, 1995; 
(3) An international application filed under 
35 U.S.C. 363 before June 8, 1995; 
(4) An application for a design patent; or 
(5) A patent under reexamination. 






1.111. 

[Added 65 FR 14865, Mar. 20, 2000, effective May 29, 
2000; revised 65 FR 50092, Aug. 16, 2000; para. (d) 
revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 
2004] 

 

AMENDMENTS 

§ 1.115 Preliminary amendments. 

(a) A preliminary amendment is an amendment 
that is received in the Office (§ 1.6) on or before the 
mail date of the first Office action under § 1.104. The 
patent application publication may include preliminary 
amendments (§ 1.215 (a)). 
(1) A preliminary amendment that is present 
on the filing date of an application is part of the original 
disclosure of the application. 
(2) A preliminary amendment filed after the 
filing date of the application is not part of the original 
disclosure of the application. 
(b) A preliminary amendment in compliance 
with § 1.121 will be entered unless disapproved by the 
Director. 
(1) A preliminary amendment seeking cancellation 
of all the claims without presenting any new 
or substitute claims will be disapproved. 
(2) A preliminary amendment may be disapproved 
if the preliminary amendment unduly interferes 
with the preparation of a first Office action in an 
application. Factors that will be considered in disapproving 
a preliminary amendment include: 
(i) The state of preparation of a first 
Office action as of the date of receipt (§ 1.6) of the 
preliminary amendment by the Office; and 
(ii) The nature of any changes to the specification 
or claims that would result from entry of the 
preliminary amendment. 
(3) A preliminary amendment will not be disapproved 
under (b)(2) of this section if it is filed no 
later than: 
(i) Three months from the filing date of an 
application under § 1.53 (b); 
(ii) The filing date of a continued prosecution 
application under § 1.53 (d); or 


(iii) Three months from the date the 
national stage is entered as set forth in § 1.491 in an 
international application. 

(4) The time periods specified in paragraph 
(b)(3) of this section are not extendable. 

[46 FR 29183, May 29, 1981; removed and reserved, 
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; added, 
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. 
(b)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003; revised, 69 FR 56481, Sept. 21, 2004, effective 
Sept. 21, 2004] 

§ 1.116 Amendments and affidavits or other evidence after final action and prior to 
appeal. 

(a) An amendment after final action must comply 
with § 1.114 or this section. 
(b) After a final rejection or other final action 
(§ 1.113) in an application or in an ex parte reexamination 
filed under § 1.510, or an action closing prosecution 
(§ 1.949) in an inter partes reexamination filed 
under § 1.913, but before or on the same date of filing 
an appeal (§ 41.31 or § 41.61 of this title): 
(1) An amendment may be made canceling 
claims or complying with any requirement of form 
expressly set forth in a previous Office action; 
(2) An amendment presenting rejected 
claims in better form for consideration on appeal may 
be admitted; or 
(3) An amendment touching the merits of the 
application or patent under reexamination may be 
admitted upon a showing of good and sufficient reasons 
why the amendment is necessary and was not 
earlier presented. 
(c) The admission of, or refusal to admit, any 
amendment after a final rejection, a final action, an 
action closing prosecution, or any related proceedings 
will not operate to relieve the application or reexamination 
proceeding from its condition as subject to 
appeal or to save the application from abandonment 
under § 1.135, or the reexamination prosecution from 
termination under § 1.550(d) or § 1.957(b) or limitation 
of further prosecution under § 1.957(c). 


(d)(1)Notwithstanding the provisions of paragraph 
(b) of this section, no amendment other than 
canceling claims, where such cancellation does not 
affect the scope of any other pending claim in the proceeding, 
can be made in an inter partes reexamination 
proceeding after the right of appeal notice under § 

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

(2) Notwithstanding the provisions of 
paragraph (b) of this section, an amendment made 
after a final rejection or other final action (§ 1.113) in 
an ex parte reexamination filed under §1.510, or an 
action closing prosecution (§ 1.949) in an inter partes 
reexamination filed under § 1.913 may not cancel 

 

claims where such cancellation affects the scope of 
any other pending claim in the reexamination proceeding 
except as provided in § 1.981 or as permitted 
by § 41.77(b)(1) of this title. 

(e) An affidavit or other evidence submitted 
after a final rejection or other final action (§ 1.113) in 
an application or in an ex parte reexamination filed 
under § 1.510, or an action closing prosecution (§ 
1.949) in an inter partes reexamination filed under § 

1.913 but before or on the same date of filing an 
appeal (§ 41.31 or § 41.61 of this title), may be admitted 
upon a showing of good and sufficient reasons 
why the affidavit or other evidence is necessary and 
was not earlier presented. 

(f) Notwithstanding the provisions of paragraph 
(e) of this section, no affidavit or other evidence 
can be made in an inter partes reexamination proceeding 
after the right of appeal notice under § 1.953 
except as provided in § 1.981 or as permitted by § 

41.77 (b)(1) of this title. 

(g) After decision on appeal, amendments, 
affidavits and other evidence can only be made as provided 
in §§ 1.198 and 1.981, or to carry into effect a 
recommendation under § 41.50(c) of this title. 

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

§ 1.117 [Reserved] 

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997] 

§ 1.118 [Reserved] 

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

§ 1.119 [Reserved] 

[32 FR 13583, Sept. 28, 1967; removed and reserved, 
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997] 

§ 1.121 Manner of making amendments in applications. 

(a) Amendments in applications, other than 
reissue applications. Amendments in applications, 
other than reissue applications, are made by filing a 
paper, in compliance with § 1.52, directing that specified 
amendments be made. 
(b) Specification. Amendments to the specification, 
other than the claims, computer listings (§ 1.96) 
and sequence listings (§ 1.825), must be made by adding, 
deleting or replacing a paragraph, by replacing a 
section, or by a substitute specification, in the manner 
specified in this section. 
(1) Amendment to delete, replace, or add a 
paragraph. Amendments to the specification, including 
amendment to a section heading or the title of 
the invention which are considered for amendment 
purposes to be an amendment of a paragraph, must be 
made by submitting: 
(i) An instruction, which unambiguously 
identifies the location, to delete one or more paragraphs 
of the specification, replace a paragraph with 
one or more replacement paragraphs, or add one or 
more paragraphs; 
(ii) The full text of any replacement paragraph 
with markings to show all the changes relative 
to the previous version of the paragraph. The text of 
any added subject matter must be shown by underlining 
the added text. The text of any deleted matter must 
be shown by strike-through except that double brackets 
placed before and after the deleted characters may 
be used to show deletion of five or fewer consecutive 
characters. The text of any deleted subject matter 
must be shown by being placed within double brackets 
if strikethrough cannot be easily perceived; 


(iii) The full text of any added paragraphs 
without any underlining; and 

(iv) The text of a paragraph to be deleted 
must not be presented with strike-through or placed 
within double brackets. The instruction to delete may 
identify a paragraph by its paragraph number or 
include a few words from the beginning, and end, of 
the paragraph, if needed for paragraph identification 
purposes. 
(2) Amendment by replacement section. If the 
sections of the specification contain section headings 
as provided in § 1.77(b), § 1.154(b), or § 1.163(c), 


 

amendments to the specification, other than the 
claims, may be made by submitting: 

(i) A reference to the section heading 
along with an instruction, which unambiguously identifies 
the location, to delete that section of the specification 
and to replace such deleted section with a 
replacement section; and; 
(ii) A replacement section with markings 
to show all changes relative to the previous version of 
the section. The text of any added subject matter must 
be shown by underlining the added text. The text of 
any deleted matter must be shown by strike-through 
except that double brackets placed before and after the 
deleted characters may be used to show deletion of 
five or fewer consecutive characters. The text of any 
deleted subject matter must be shown by being placed 
within double brackets if strike-through cannot be 
easily perceived. 
(3) Amendment by substitute specification. 
The specification, other than the claims, may also be 
amended by submitting: 
(i) An instruction to replace the specification; 
and 
(ii) A substitute specification in compliance 
with §§ 1.125(b) and (c). 
(4) Reinstatement of previously deleted paragraph or section. A previously deleted paragraph or 
section may be reinstated only by a subsequent 
amendment adding the previously deleted paragraph 
or section. 
(5) Presentation in subsequent amendment 
document. Once a paragraph or section is amended in 
a first amendment document, the paragraph or section 
shall not be represented in a subsequent amendment 
document unless it is amended again or a substitute 
specification is provided. 
(c) Claims. Amendments to a claim must be 
made by rewriting the entire claim with all changes 
(e.g., additions and deletions) as indicated in this subsection, 
except when the claim is being canceled. 
Each amendment document that includes a change to 
an existing claim, cancellation of an existing claim or 
addition of a new claim, must include a complete listing 
of all claims ever presented, including the text of 
all pending and withdrawn claims, in the application. 
The claim listing, including the text of the claims, in 
the amendment document will serve to replace all 
prior versions of the claims, in the application. In the 


claim listing, the status of every claim must be indicated 
after its claim number by using one of the following 
identifiers in a parenthetical expression: 
(Original), (Currently amended), (Canceled), (Withdrawn), 
(Previously presented), (New), and (Not 
entered). 

(1) Claim listing. All of the claims presented 
in a claim listing shall be presented in ascending 
numerical order. Consecutive claims having the same 
status of “canceled” or “not entered” may be aggregated 
into one statement (e.g., Claims 1–5 (canceled)). 
The claim listing shall commence on a 
separate sheet of the amendment document and the 
sheet(s) that contain the text of any part of the claims 
shall not contain any other part of the amendment. 
(2) When claim text with markings is 
required. All claims being currently amended in 
an amendment paper shall be presented in the claim 
listing, indicate a status of “currently amended,” and 
be submitted with markings to indicate the changes 
that have been made relative to the immediate prior 
version of the claims. The text of any added subject 
matter must be shown by underlining the added text. 
The text of any deleted matter must be shown by 
strike-through except that double brackets placed 
before and after the deleted characters may be used to 
show deletion of five or fewer consecutive characters. 
The text of any deleted subject matter must be shown 
by being placed within double brackets if strike-
through cannot be easily perceived. Only claims having 
the status of “currently amended,” or “withdrawn” 
if also being amended, shall include markings. If a 
withdrawn claim is currently amended, its status in 
the claim listing may be identified as “withdrawn— 
currently amended.” 
(3) When claim text in clean version is 
required. The text of all pending claims not being currently 
amended shall be presented in the claim listing 
in clean version, i.e., without any markings in the presentation 
of text. The presentation of a clean version 
of any claim having the status of “original,” “withdrawn” 
or “previously presented” will constitute an 
assertion that it has not been changed relative to the 
immediate prior version, except to omit markings that 
may have been present in the immediate prior version 
of the claims of the status of “withdrawn” or “previously 
presented.” Any claim added by amendment 


 

must be indicated with the status of “new” and presented 
in clean version, i.e., without any underlining. 

(4) When claim text shall not be presented; 
canceling a claim. 
(i) No claim text shall be presented for 
any claim in the claim listing with the status of “canceled” 
or “not entered.” 
(ii) Cancellation of a claim shall be 
effected by an instruction to cancel a particular claim 
number. Identifying the status of a claim in the claim 
listing as “canceled” will constitute an instruction to 
cancel the claim. 
(5) Reinstatement of previously canceled 
claim. A claim which was previously canceled may be 
reinstated only by adding the claim as a “new” claim 
with a new claim number. 
(d) Drawings: One or more application drawings 
shall be amended in the following manner: Any 
changes to an application drawing must be in compliance 
with § 1.84 and must be submitted on a replacement 
sheet of drawings which shall be an attachment 
to the amendment document and, in the top margin, 
labeled “Replacement Sheet”. Any replacement sheet 
of drawings shall include all of the figures appearing 
on the immediate prior version of the sheet, even if 
only one figure is amended. Any new sheet of drawings 
containing an additional figure must be labeled in 
the top margin as “New Sheet”. All changes to the 
drawings shall be explained, in detail, in either the 
drawing amendment or remarks section of the amendment 
paper. 
(1) A marked-up copy of any amended drawing 
figure, including annotations indicating the 
changes made, may be included. The marked-up copy 
must be clearly labeled as “Annotated Sheet” and 
must be presented in the amendment or remarks section 
that explains the change to the drawings. 
(2) A marked-up copy of any amended drawing 
figure, including annotations indicating the 
changes made, must be provided when required by the 
examiner. 
(e) Disclosure consistency. The disclosure must 
be amended, when required by the Office, to correct 
inaccuracies of description and definition, and to 
secure substantial correspondence between the 
claims, the remainder of the specification, and the 
drawings. 


(f) No new matter. No amendment may introduce 
new matter into the disclosure of an application. 
(g) Exception for examiner’s amendments. 
Changes to the specification, including the claims, of 
an application made by the Office in an examiner’s 
amendment may be made by specific instructions to 
insert or delete subject matter set forth in the examiner’s 
amendment by identifying the precise point in 
the specification or the claim(s) where the insertion or 
deletion is to be made. Compliance with paragraphs 
(b)(1), (b)(2), or (c) of this section is not required. 
(h) Amendment sections. Each section of an 
amendment document (e.g., amendment to the claims, 
amendment to the specification, replacement drawings, 
and remarks) must begin on a separate sheet. 
(i) Amendments in reissue applications. Any 
amendment to the description and claims in reissue 
applications must be made in accordance with § 
(j) Amendments in reexamination proceedings. 
Any proposed amendment to the description and 
claims in patents involved in reexamination proceedings 
must be made in accordance with § 1.530. 
(k) Amendments in provisional applications. 
Amendments in provisional applications are not usually 
made. If an amendment is made to a provisional 
application, however, it must comply with the provisions 
of this section. Any amendments to a provisional 
application shall be placed in the provisional 
application file but may not be entered. 


1.173. 

[32 FR 13583, Sept. 28, 1967; 46 FR 29183, May 29, 
1981; para. (e), 49 FR 555, Jan. 4, 1984, effective Apr. 1, 
1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; para. (i) revised, 65 FR 76756, Dec. 7, 2000, 
effective Feb. 5, 2001; revised, 68 FR 38611, June 30, 
2003, effective July 30, 2003; para. (d) revised, 69 FR 
56481, Sept. 21, 2004, effective Oct. 21, 2004] 

§ 1.122 [Reserved] 

[24 FR 10332, Dec. 22, 1959; para. (b), 49 FR 48416, 
Dec. 12, 1984, effective Feb. 11, 1985; removed and 
reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997] 

§ 1.123 [Reserved] 

 

[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; 
49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; amended, 
58 FR 38719, July 20, 1993, effective Oct. 1, 1993; 
removed and reserved, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997] 

§ 1.124 [Reserved] 

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997] 

§ 1.125 Substitute specification. 

(a) If the number or nature of the amendments 
or the legibility of the application papers renders it 
difficult to consider the application, or to arrange the 
papers for printing or copying, the Office may require 
the entire specification, including the claims, or any 
part thereof, be rewritten. 
(b) Subject to § 1.312, a substitute specification, 
excluding the claims, may be filed at any point 
up to payment of the issue fee if it is accompanied by 
a statement that the substitute specification includes 
no new matter. 
(c) A substitute specification submitted under 
this section must be submitted with markings showing 
all the changes relative to the immediate prior version 
of the specification of record. The text of any added 
subject matter must be shown by underlining the 
added text. The text of any deleted matter must be 
shown by strike-through except that double brackets 
placed before and after the deleted characters may be 
used to show deletion of five or fewer consecutive 
characters. The text of any deleted subject matter 
must be shown by being placed within double brackets 
if strike-through cannot be easily perceived. An 
accompanying clean version (without markings) must 
also be supplied. Numbering the paragraphs of the 
specification of record is not considered a change that 
must be shown pursuant to this paragraph. 
(d) A substitute specification under this section 
is not permitted in a reissue application or in a reexamination 
proceeding. 


[48 FR 2712, Jan. 20, 1983, effective Feb. 27, 1983; 
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997; paras. (b)(2) and (c) revised, 65 FR 54604, Sept. 8, 
2000, effective Nov. 7, 2000; paras. (b) and (c) revised, 68 
FR 38611, June 30, 2003, effective July 30, 2003] 

§ 1.126 Numbering of claims. 

The original numbering of the claims must be preserved 
throughout the prosecution. When claims are 
canceled the remaining claims must not be renumbered. 
When claims are added, they must be numbered 
by the applicant consecutively beginning with 
the number next following the highest numbered 
claim previously presented (whether entered or not). 
When the application is ready for allowance, the 
examiner, if necessary, will renumber the claims consecutively 
in the order in which they appear or in such 
order as may have been requested by applicant. 

[32 FR 13583, Sept. 28, 1967; revised, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997] 

§ 1.127 Petition from refusal to admit amendment. 

From the refusal of the primary examiner to admit 
an amendment, in whole or in part, a petition will lie 
to the Director under § 1.181. 

[Revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003] 

TRANSITIONAL PROVISIONS 

§ 1.129 Transitional procedures for limited 

examination after final rejection and 

restriction practice. 

(a) An applicant in an application, other than 
for reissue or a design patent, that has been pending 
for at least two years as of June 8, 1995, taking into 
account any reference made in such application to any 
earlier filed application under 35 U.S.C. 120, 121 and 
365(c), is entitled to have a first submission entered 
and considered on the merits after final rejection 
under the following circumstances: The Office will 
consider such a submission, if the first submission and 
the fee set forth in § 1.17(r) are filed prior to the filing 
of an appeal brief and prior to abandonment of the 
application. The finality of the final rejection is automatically 
withdrawn upon the timely filing of the submission 
and payment of the fee set forth in § 1.17(r). 
If a subsequent final rejection is made in the application, 
applicant is entitled to have a second submission 
entered and considered on the merits after the subsequent 
final rejection under the following circumstances: 
The Office will consider such a submission, 

 

if the second submission and a second fee set forth in 
§ 1.17(r) are filed prior to the filing of an appeal brief 
and prior to abandonment of the application. The 
finality of the subsequent final rejection is automatically 
withdrawn upon the timely filing of the submission 
and payment of the second fee set forth in 
§ 1.17(r). Any submission filed after a final rejection 
made in an application subsequent to the fee set forth 
in § 1.17(r) having been twice paid will be treated as 
set forth in § 1.116. A submission as used in this paragraph 
includes, but is not limited to, an information 
disclosure statement, an amendment to the written 
description, claims or drawings and a new substantive 
argument or new evidence in support of patentability. 

(b)(1) In an application, other than for reissue or 
a design patent, that has been pending for at least 
three years as of June 8, 1995, taking into account any 
reference made in the application to any earlier filed 
application under 35 U.S.C. 120, 121 and 365(c), no 
requirement for restriction or for the filing of divisional 
applications shall be made or maintained in the 
application after June 8, 1995, except where: 

(i) The requirement was first made in the 
application or any earlier filed application under 
35 U.S.C. 120, 121 and 365(c) prior to April 8, 1995; 
(ii) The examiner has not made a requirement 
for restriction in the present or parent application 
prior to April 8, 1995, due to actions by the 
applicant; or 


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

(2) If the application contains more than one 
independent and distinct invention and a requirement 
for restriction or for the filing of divisional applications 
cannot be made or maintained pursuant to this 
paragraph, applicant will be so notified and given a 
time period to: 
(i) Elect the invention or inventions to be 
searched and examined, if no election has been made 
prior to the notice, and pay the fee set forth in 1.17(s) 
for each independent and distinct invention claimed in 
the application in excess of one which applicant 
elects; 
(ii) Confirm an election made prior to the 
notice and pay the fee set forth in § 1.17(s) for each 
independent and distinct invention claimed in the 
application in addition to the one invention which 
applicant previously elected; or 


(iii) File a petition under this section traversing 
the requirement. If the required petition is 
filed in a timely manner, the original time period for 
electing and paying the fee set forth in § 1.17(s) will 
be deferred and any decision on the petition affirming 
or modifying the requirement will set a new time 
period to elect the invention or inventions to be 
searched and examined and to pay the fee set forth in 
§ 1.17(s) for each independent and distinct invention 
claimed in the application in excess of one which 
applicant elects. 

(3) The additional inventions for which the 
required fee has not been paid will be withdrawn from 
consideration under § 1.142(b). An applicant who 
desires examination of an invention so withdrawn 
from consideration can file a divisional application 
under 35 U.S.C. 121. 
(c) The provisions of this section shall not be 
applicable to any application filed after June 8, 1995. 


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

AFFIDAVITS OVERCOMING REJECTIONS 

§ 1.130 Affidavit or declaration to disqualify 
commonly owned patent or published 
application as prior art. 

(a) When any claim of an application or a 
patent under reexamination is rejected under 
35 U.S.C. 103 on a U.S. patent or U.S. patent application 
publication which is not prior art under 35 U.S.C. 
102(b), and the inventions defined by the claims in the 
application or patent under reexamination and by the 
claims in the patent or published application are not 
identical but are not patentably distinct, and the inventions 
are owned by the same party, the applicant or 
owner of the patent under reexamination may disqualify 
the patent or patent application publication as prior 
art. The patent or patent application publication can 
be disqualified as prior art by submission of: 
(1) A terminal disclaimer in accordance with 
§ 1.321(c); and 
(2) An oath or declaration stating that the 
application or patent under reexamination and patent 
or published application are currently owned by the 
same party, and that the inventor named in the application 
or patent under reexamination is the prior 
inventor under 35 U.S.C. 104. 


 

(b) [Reserved] 

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

§ 1.131 Affidavit or declaration of prior invention. 

(a) When any claim of an application or a 
patent under reexamination is rejected, the inventor of 
the subject matter of the rejected claim, the owner of 
the patent under reexamination, or the party qualified 
under §§ 1.42, 1.43, or 1.47, may submit an appropriate 
oath or declaration to establish invention of 
the subject matter of the rejected claim prior to the 
effective date of the reference or activity on which the 
rejection is based. The effective date of a U.S. patent, 

U.S. patent application publication, or international 
application publication under PCT Article 21(2) is the 
earlier of its publication date or date that it is effective 
as a reference under 35 U.S.C. 102(e). Prior invention 
may not be established under this section in any country 
other than the United States, a NAFTA country, or 
a WTO member country. Prior invention may not be 
established under this section before December 8, 
1993, in a NAFTA country other than the United 
States, or before January 1, 1996, in a WTO member 
country other than a NAFTA country. Prior invention 
may not be established under this section if either: 

(1) The rejection is based upon a U.S. patent 
or U.S. patent application publication of a pending or 
patented application to another or others which claims 
the same patentable invention as defined in § 
41.203(a) of this title, in which case an applicant may 
suggest an interference pursuant to § 41.202(a) of this 
title; or 
(2) The rejection is based upon a statutory 
bar. 
(b) The showing of facts shall be such, in character 
and weight, as to establish reduction to practice 
prior to the effective date of the reference, or conception 
of the invention prior to the effective date of the 
reference coupled with due diligence from prior to 
said date to a subsequent reduction to practice or to 
the filing of the application. Original exhibits of drawings 
or records, or photocopies thereof, must accom


pany and form part of the affidavit or declaration or 
their absence must be satisfactorily explained. 

[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 
1969; para. (a), 48 FR 2713, Jan. 20, 1983, effective Feb. 
27, 1983; para. (a), 50 FR 9381, Mar. 7, 1985, effective 
May 8, 1985; 50 FR 11366, Mar. 21, 1985; 53 FR 23733, 
June 23, 1988, effective Sept. 12, 1988; para. (a)(1) revised 
and para. (a)(2) added, 60 FR 21043, May 1, 1995, effective 
May 31, 1995; para. (a) revised, 61 FR 42790, Aug. 19, 
1996, effective Sept. 23, 1996; heading and para. (a) 
revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 
2000; para. (a) revised, 65 FR 57024, Sept. 20, 2000, effective 
Nov. 29, 2000; para. (a)(1) revised, 69 FR 49959, Aug. 
12, 2004, effective Sept. 13, 2004; para. (b) revised, 69 FR 
56481, Sept. 21, 2004, effective Oct. 21, 2004] 

§ 1.132 Affidavits or declarations traversing 
rejections or objections. 

When any claim of an application or a patent under 
reexamination is rejected or objected to, any evidence 
submitted to traverse the rejection or objection on a 
basis not otherwise provided for must be by way of an 
oath or declaration under this section. 

[48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; 
revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 
1996; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 
8, 2000; revised 65 FR 57024, Sept. 20, 2000, effective 
Nov. 29, 2000] 

INTERVIEWS 

§ 1.133 Interviews. 

(a)(1)Interviews with examiners concerning 
applications and other matters pending before the 
Office must be conducted on Office premises and 
within Office hours, as the respective examiners may 
designate. Interviews will not be permitted at any 
other time or place without the authority of the Director. 


(2) An interview for the discussion of the 
patentability of a pending application will not occur 
before the first Office action, unless the application is 
a continuing or substitute application or the examiner 
determines that such an interview would advance 
prosecution of the application. 
(3) The examiner may require that an interview 
be scheduled in advance. 


 

(b) In every instance where reconsideration is 
requested in view of an interview with an examiner, a 
complete written statement of the reasons presented at 
the interview as warranting favorable action must be 
filed by the applicant. An interview does not remove 
the necessity for reply to Office actions as specified in 
§§ 1.111 and 1.135. 

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

TIME FOR REPLY BY APPLICANT; 

ABANDONMENT OF APPLICATION 

§ 1.134 Time period for reply to an Office action. 

An Office action will notify the applicant of any 
non-statutory or shortened statutory time period set 
for reply to an Office action. Unless the applicant is 
notified in writing that a reply is required in less than 
six months, a maximum period of six months is 
allowed. 

[47 FR 41276, Sept. 17, 1982, effective Oct. 1, 1982; 
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997] 

§ 1.135 Abandonment for failure to reply within 
time period. 

(a) If an applicant of a patent application fails 
to reply within the time period provided under § 1.134 
and § 1.136, the application will become abandoned 
unless an Office action indicates otherwise. 
(b) Prosecution of an application to save it from 
abandonment pursuant to paragraph (a) of this section 
must include such complete and proper reply as the 
condition of the application may require. The admission 
of, or refusal to admit, any amendment after final 
rejection or any amendment not responsive to the last 
action, or any related proceedings, will not operate to 
save the application from abandonment. 
(c) When reply by the applicant is a bona fide 
attempt to advance the application to final action, and 
is substantially a complete reply to the non-final 
Office action, but consideration of some matter or 
compliance with some requirement has been inadvert


ently omitted, applicant may be given a new time 
period for reply under § 1.134 to supply the omission. 

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

§ 1.136 Extensions of time. 

(a)(1) If an applicant is required to reply within 
a nonstatutory or shortened statutory time period, 
applicant may extend the time period for reply up to 
the earlier of the expiration of any maximum period 
set by statute or five months after the time period set 
for reply, if a petition for an extension of time and the 
fee set in § 1.17(a) are filed, unless: 

(i) Applicant is notified otherwise in an 
Office action; 
(ii) The reply is a reply brief submitted 
pursuant to § 41.41 of this title; 


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

(iv) The reply is to a decision by the Board 
of Patent Appeals and Interferences pursuant to § 

1.304 or to § 41.50 or § 41.52 of this title; or 

(v) The application is involved in a contested 
case (§ 41.101(a) of this title). 
(2) The date on which the petition and the fee 
have been filed is the date for purposes of determining 
the period of extension and the corresponding amount 
of the fee. The expiration of the time period is determined 
by the amount of the fee paid. A reply must be 
filed prior to the expiration of the period of extension 
to avoid abandonment of the application (§ 1.135), 
but in no situation may an applicant reply later than 
the maximum time period set by statute, or be granted 
an extension of time under paragraph (b) of this section 
when the provisions of this paragraph are available. 
See § 1.304 for extensions of time to appeal to 
the U.S. Court of Appeals for the Federal Circuit or to 
commence a civil action; § 1.550(c) for extensions of 
time in ex parte reexamination proceedings, § 1.956 
for extensions of time in inter partes reexamination 
proceedings; and §§ 41.4(a) and 41.121(a)(3) of this 
title for extensions of time in contested cases before 
the Board of Patent Appeals and Interferences. 
(3) A written request may be submitted in an 
application that is an authorization to treat any concurrent 
or future reply, requiring a petition for an 


 

extension of time under this paragraph for its timely 
submission, as incorporating a petition for extension 
of time for the appropriate length of time. An authorization 
to charge all required fees, fees under § 1.17, or 
all required extension of time fees will be treated as a 
constructive petition for an extension of time in any 
concurrent or future reply requiring a petition for an 
extension of time under this paragraph for its timely 
submission. Submission of the fee set forth in 
§ 1.17(a) will also be treated as a constructive petition 
for an extension of time in any concurrent reply 
requiring a petition for an extension of time under this 
paragraph for its timely submission. 

(b) When a reply cannot be filed within the time 
period set for such reply and the provisions of paragraph 
(a) of this section are not available, the period 
for reply will be extended only for sufficient cause 
and for a reasonable time specified. Any request for 
an extension of time under this paragraph must be 
filed on or before the day on which such reply is due, 
but the mere filing of such a request will not affect 
any extension under this paragraph. In no situation 
can any extension carry the date on which reply is due 
beyond the maximum time period set by statute. See 
§ 1.304 for extensions of time to appeal to the U.S. 
Court of Appeals for the Federal Circuit or to commence 
a civil action; § 1.550(c) for extensions of time 
in ex parte reexamination proceedings; § 1.956 for 
extensions of time in inter partes reexamination proceedings; 
and §§ 41.4(a) and 41.121(a)(3) of this title 
for extensions of time in contested cases before the 
Board of Patent Appeals and Interferences. Any 
request under this section must be accompanied by 
the petition fee set forth in § 1.17(g). 
(c) If an applicant is notified in a “Notice of 
Allowability” that an application is otherwise in condition 
for allowance, the following time periods are 
not extendable if set in the “Notice of Allowability” 
or in an Office action having a mail date on or after 
the mail date of the “Notice of Allowability”: 
(1) The period for submitting an oath or declaration 
in compliance with § 1.63; 
(2) The period for submitting formal drawings 
set under § 1.85(c); and 
(3) The period for making a deposit set under 
§ 1.809(c). 


[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; 
49 FR 555, Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 
48416, Dec. 12, 1984, effective Feb. 11, 1985; 54 FR 
29551, July 13, 1989, effective Aug. 20, 1989; para. (a) 
revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; 
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997; para. (c) added, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; paras. (a)(2) and (b) revised, 65 FR 76756, 
Dec. 7, 2000, effective Feb. 5, 2001; para. (c) revised, 
66 FR 21090, Apr. 27, 2001, effective May 29, 2001; paras. 
(a)(1), (a)(2), and (b) revised, 69 FR 49959, Aug. 12, 2004, 
effective Sept. 13, 2004; para. (b) revised, 69 FR 56481, 
Sept. 21, 2004, effective Nov. 22, 2004; para. (b) revised, 
70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004] 

§ 1.137 Revival of abandoned application, termi

nated reexamination proceeding, or 

lapsed patent. 

(a) Unavoidable. If the delay in reply by applicant 
or patent owner was unavoidable, a petition 
may be filed pursuant to this paragraph to revive an 
abandoned application, a reexamination proceeding 
terminated under §§ 1.550(d) or 1.957(b) or (c), or a 
lapsed patent. A grantable petition pursuant to this 
paragraph must be accompanied by: 
(1) The reply required to the outstanding 
Office action or notice, unless previously filed; 
(2) The petition fee as set forth in § 1.17(l); 


(3) A showing to the satisfaction of the 
Director that the entire delay in filing the required 
reply from the due date for the reply until the filing of 
a grantable petition pursuant to this paragraph was 
unavoidable; and 
(4) Any terminal disclaimer (and fee as set 
forth in § 1.20(d)) required pursuant to paragraph (d) 
of this section. 
(b) Unintentional. If the delay in reply by applicant 
or patent owner was unintentional, a petition may 
be filed pursuant to this paragraph to revive an abandoned 
application, a reexamination proceeding terminated 
under §§ 1.550(d) or 1.957(b) or (c), or a lapsed 
patent. A grantable petition pursuant to this paragraph 
must be accompanied by: 
(1) The reply required to the outstanding 
Office action or notice, unless previously filed; 
(2) The petition fee as set forth in § 1.17(m); 


(3) A statement that the entire delay in filing 
the required reply from the due date for the reply until 
the filing of a grantable petition pursuant to this paragraph 
was unintentional. The Director may require 


 

additional information where there is a question 
whether the delay was unintentional; and 

(4) Any terminal disclaimer (and fee as set 
forth in § 1.20(d)) required pursuant to paragraph (d) 
of this section. 
(c) Reply. In a nonprovisional application abandoned 
for failure to prosecute, the required reply may 
be met by the filing of a continuing application. In a 
nonprovisional utility or plant application filed on or 
after June 8, 1995, and abandoned for failure to prosecute, 
the required reply may also be met by the filing 
of a request for continued examination in compliance 
with § 1.114. In an application or patent, abandoned 
or lapsed for failure to pay the issue fee or any portion 
thereof, the required reply must include payment of 
the issue fee or any outstanding balance. In an application, 
abandoned for failure to pay the publication 
fee, the required reply must include payment of the 
publication fee. 
(d) Terminal disclaimer. 


(1) Any petition to revive pursuant to this 
section in a design application must be accompanied 
by a terminal disclaimer and fee as set forth in § 


1.321 dedicating to the public a terminal part of the 
term of any patent granted thereon equivalent to the 
period of abandonment of the application. Any petition 
to revive pursuant to this section in either a utility 
or plant application filed before June 8, 1995, must be 
accompanied by a terminal disclaimer and fee as set 
forth in § 1.321 dedicating to the public a terminal 
part of the term of any patent granted thereon equivalent 
to the lesser of: 

(i) The period of abandonment of the 
application; or 
(ii) The period extending beyond twenty 
years from the date on which the application for the 
patent was filed in the United States or, if the application 
contains a specific reference to an earlier filed 
application(s) under 35 U.S.C. 120, 121, or 365(c), 
from the date on which the earliest such application 
was filed. 
(2) Any terminal disclaimer pursuant to paragraph 
(d)(1) of this section must also apply to any 
patent granted on a continuing utility or plant application 
filed before June 8, 1995, or a continuing design 
application, that contains a specific reference under 
35 U.S.C. 120, 121, or 365(c) to the application for 
which revival is sought. 


(3) The provisions of paragraph (d)(1) of this 
section do not apply to applications for which revival 
is sought solely for purposes of copendency with a 
utility or plant application filed on or after June 8, 
1995, to lapsed patents, to reissue applications, or to 
reexamination proceedings. 
(e) Request for reconsideration. Any request 
for reconsideration or review of a decision refusing to 
revive an abandoned application, a terminated reexamination 
proceeding, or lapsed patent upon petition 
filed pursuant to this section, to be considered timely, 
must be filed within two months of the decision refusing 
to revive or within such time as set in the decision. 
Unless a decision indicates otherwise, this time period 
may be extended under: 
(1) The provisions of § 1.136 for an abandoned 
application or lapsed patent; 
(2) The provisions of § 1.550(c) for a terminated 
ex parte reexamination proceeding filed under 
§ 1.510; or 
(3) The provisions of § 1.956 for a terminated 
inter partes reexamination proceeding filed 
under § 1.913. 
(f) Abandonment for failure to notify the Office 
of a foreign filing: A nonprovisional application abandoned 
pursuant to 35 U.S.C. 122(b)(2)(B)(iii) for failure 
to timely notify the Office of the filing of an 
application in a foreign country or under a multinational 
treaty that requires publication of applications 
eighteen months after filing, may be revived only pursuant 
to paragraph (b) of this section. The reply 
requirement of paragraph (c) of this section is met by 
the notification of such filing in a foreign country or 
under a multinational treaty, but the filing of a petition 
under this section will not operate to stay any period 
for reply that may be running against the application. 
(g) Provisional applications: A provisional 
application, abandoned for failure to timely respond 
to an Office requirement, may be revived pursuant to 
this section. Subject to the provisions of 35 U.S.C. 
119(e)(3) and § 1.7(b), a provisional application will 
not be regarded as pending after twelve months from 
its filing date under any circumstances. 


[47 FR 41277, Sept. 17, 1982, effective Oct. 1, 1982; 
para. (b) 48 FR 2713, Jan. 20, 1983, effective Feb. 27, 
1983; paras. (a) - (c), paras. (d) & (e) added, 58 FR 44277, 
Aug. 20,1993, effective Sept. 20, 1993; para. (c) revised, 
60 FR 20195, Apr. 25, 1995, effective June 8, 1995; 

 

revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997; para. (c) revised, 65 FR 54604, Sept. 8, 2000, effective 
Sept. 8, 2000; revised, 65 FR 57024, Sept. 20, 2000, 
effective Nov. 29, 2000; paras. (a)(3) & (b)(3) revised, 68 
FR 14332, Mar. 25, 2003, effective May 1, 2003; para. 
(d)(3) revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 
21, 2004] 

§ 1.138 Express abandonment. 

(a) An application may be expressly abandoned 
by filing a written declaration of abandonment identifying 
the application in the United States Patent and 
Trademark Office. Express abandonment of the application 
may not be recognized by the Office before the 
date of issue or publication unless it is actually 
received by appropriate officials in time to act. 
(b) A written declaration of abandonment must 
be signed by a party authorized under § 1.33(b)(1), 
(b)(3), or (b)(4) to sign a paper in the application, 
except as otherwise provided in this paragraph. A registered 
attorney or agent, not of record, who acts in a 
representative capacity under the provisions of § 
1.34(a) when filing a continuing application, may 
expressly abandon the prior application as of the filing 
date granted to the continuing application. 
(c) An applicant seeking to abandon an application 
to avoid publication of the application (see § 
1.211(a)(1)) must submit a declaration of express 
abandonment by way of a petition under this paragraph 
including the fee set forth in § 1.17(h) in sufficient 
time to permit the appropriate officials to 
recognize the abandonment and remove the application 
from the publication process. Applicants should 
expect that the petition will not be granted and the 
application will be published in regular course unless 
such declaration of express abandonment and petition 
are received by the appropriate officials more than 
four weeks prior to the projected date of publication. 
(d) An applicant seeking to abandon an application 
filed under 35 U.S.C. 111(a) and § 1.53(b) on or 
after December 8, 2004, to obtain a refund of the 
search fee and excess claims fee paid in the application, 
must submit a declaration of express abandonment 
by way of a petition under this paragraph before 
an examination has been made of the application. The 
date indicated on any certificate of mailing or transmission 
under § 1.8 will not be taken into account in 
determining whether a petition under § 1.138(d) was 
filed before an examination has been made of the 


application. If a request for refund of the search fee 
and excess claims fee paid in the application is not 
filed with the declaration of express abandonment 
under this paragraph or within two months from the 
date on which the declaration of express abandonment 
under this paragraph was filed, the Office may retain 
the entire search fee and excess claims fee paid in the 
application. This two-month period is not extendable. 
If a petition and declaration of express abandonment 
under this paragraph are not filed before an examination 
has been made of the application, the Office will 
not refund any part of the search fee and excess 
claims fee paid in the application except as provided 
in § 1.26. 

[47 FR 47244, Oct. 25, 1982, effective Feb. 27, 1983; 
49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; para. (a) revised and para. (c) added, 65 FR 57024, 
Sept. 20, 2000, effective Nov. 29, 2000; para. (c) revised 
and para. (d) added, 71 FR 12284, Mar. 10, 2006, effective 
Mar. 10, 2006] 

§ 1.139 [Reserved] 

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

JOINDER OF INVENTIONS IN ONE 
APPLICATION; RESTRICTION


§ 1.141 Different inventions in one national 
application. 

(a) Two or more independent and distinct 
inventions may not be claimed in one national application, 
except that more than one species of an invention, 
not to exceed a reasonable number, may be 
specifically claimed in different claims in one national 
application, provided the application also includes an 
allowable claim generic to all the claimed species and 
all the claims to species in excess of one are written in 
dependent form (§ 1.75) or otherwise include all the 
limitations of the generic claim. 
(b) Where claims to all three categories, product, 
process of making, and process of use, are 
included in a national application, a three way 
requirement for restriction can only be made where 
the process of making is distinct from the product. If 


 

the process of making and the product are not distinct, 
the process of using may be joined with the claims 
directed to the product and the process of making the 
product even though a showing of distinctness 
between the product and process of using the product 
can be made. 

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

§ 1.142 Requirement for restriction. 

(a) If two or more independent and distinct 
inventions are claimed in a single application, the 
examiner in an Office action will require the applicant 
in the reply to that action to elect an invention to 
which the claims will be restricted, this official action 
being called a requirement for restriction (also known 
as a requirement for division). Such requirement will 
normally be made before any action on the merits; 
however, it may be made at any time before final 
action. 
(b) Claims to the invention or inventions not 
elected, if not canceled, are nevertheless withdrawn 
from further consideration by the examiner by the 
election, subject however to reinstatement in the event 
the requirement for restriction is withdrawn or overruled. 


[Para (a) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997] 

§ 1.143 Reconsideration of requirement. 

If the applicant disagrees with the requirement for 
restriction, he may request reconsideration and withdrawal 
or modification of the requirement, giving the 
reasons therefor. (See § 1.111). In requesting reconsideration 
the applicant must indicate a provisional 
election of one invention for prosecution, which 
invention shall be the one elected in the event the 
requirement becomes final. The requirement for 
restriction will be reconsidered on such a request. If 
the requirement is repeated and made final, the examiner 
will at the same time act on the claims to the 
invention elected. 

§ 1.144 Petition from requirement for restriction. 

After a final requirement for restriction, the applicant, 
in addition to making any reply due on the 
remainder of the action, may petition the Director to 
review the requirement. Petition may be deferred until 
after final action on or allowance of claims to the 
invention elected, but must be filed not later than 
appeal. A petition will not be considered if reconsideration 
of the requirement was not requested (see § 
1.181). 

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

§ 1.145 Subsequent presentation of claims for 
different invention. 

If, after an office action on an application, the 
applicant presents claims directed to an invention distinct 
from and independent of the invention previously 
claimed, the applicant will be required to 
restrict the claims to the invention previously claimed 
if the amendment is entered, subject to reconsideration 
and review as provided in §§ 1.143 and 1.144. 

§ 1.146 Election of species. 

In the first action on an application containing a 
generic claim to a generic invention (genus) and 
claims to more than one patentably distinct species 
embraced thereby, the examiner may require the 
applicant in the reply to that action to elect a species 
of his or her invention to which his or her claim will 
be restricted if no claim to the genus is found to be 
allowable. However, if such application contains 
claims directed to more than a reasonable number of 
species, the examiner may require restriction of the 
claims to not more than a reasonable number of species 
before taking further action in the application. 

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

DESIGN PATENTS 

§ 1.151 Rules applicable. 

The rules relating to applications for patents for 
other inventions or discoveries are also applicable to 
applications for patents for designs except as otherwise 
provided. 

 

§ 1.152 Design drawings.

 The design must be represented by a drawing that 
complies with the requirements of § 1.84 and must 
contain a sufficient number of views to constitute a 
complete disclosure of the appearance of the design. 
Appropriate and adequate surface shading should be 
used to show the character or contour of the surfaces 
represented. Solid black surface shading is not permitted 
except when used to represent the color black as 
well as color contrast. Broken lines may be used to 
show visible environmental structure, but may not be 
used to show hidden planes and surfaces that cannot 
be seen through opaque materials. Alternate positions 
of a design component, illustrated by full and broken 
lines in the same view are not permitted in a design 
drawing. Photographs and ink drawings are not permitted 
to be combined as formal drawings in one 
application. Photographs submitted in lieu of ink 
drawings in design patent applications must not disclose 
environmental structure but must be limited to 
the design claimed for the article. 

[53 FR 47810, Nov. 28, 1988, effective Jan. 1, 1989; 
amended, 58 FR 38719, July 20, 1993, effective Oct. 1, 
1993; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective 
Sept. 8, 2000] 

§ 1.153 Title, description and claim, oath or declaration. 

(a) The title of the design must designate the 
particular article. No description, other than a reference 
to the drawing, is ordinarily required. The claim 
shall be in formal terms to the ornamental design for 
the article (specifying name) as shown, or as shown 
and described. More than one claim is neither 
required nor permitted. 
(b) The oath or declaration required of the 
applicant must comply with § 1.63. 


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

§ 1.154 Arrangement of application elements in a 
design application. 

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

(1) Design application transmittal form. 
(2) Fee transmittal form. 
(3) Application data sheet (see § 1.76). 
(4) Specification. 
(5) Drawings or photographs. 


(6) Executed oath or declaration (see § 
1.153(b)). 
(b) The specification should include the following 
sections in order: 
(1) Preamble, stating the name of the applicant, 
title of the design, and a brief description of the 
nature and intended use of the article in which the 
design is embodied. 
(2) Cross-reference to related applications 
(unless included in the application data sheet). 
(3) Statement regarding federally sponsored 
research or development. 
(4) Description of the figure or figures of the 
drawing. 
(5) Feature description. 
(6) A single claim. 




(c) The text of the specification sections 
defined in paragraph (b) of this section, if applicable, 
should be preceded by a section heading in uppercase 
letters without underlining or bold type. 


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

§ 1.155 Expedited examination of design applications. 

(a) The applicant may request that the Office 
expedite the examination of a design application. To 
qualify for expedited examination: 
(1) The application must include drawings in 
compliance with § 1.84; 
(2) The applicant must have conducted a pre-
examination search; and 
(3) The applicant must file a request for 
expedited examination including: 
(i) The fee set forth in § 1.17(k); and 


(ii) A statement that a preexamination 
search was conducted. The statement must also indicate 
the field of search and include an information 
disclosure statement in compliance with § 1.98. 


 

(b) The Office will not examine an application 
that is not in condition for examination (e.g., missing 
basic filing fee) even if the applicant files a request 
for expedited examination under this section. 

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

PLANT PATENTS 

§ 1.161 Rules applicable. 

The rules relating to applications for patent for 
other inventions or discoveries are also applicable to 
applications for patents for plants except as otherwise 
provided. 

§ 1.162 Applicant, oath or declaration. 

The applicant for a plant patent must be the person 
who has invented or discovered and asexually reproduced 
the new and distinct variety of plant for which a 
patent is sought (or as provided in §§ 1.42, 1.43, and 
1.47). The oath or declaration required of the applicant, 
in addition to the averments required by § 1.63, 
must state that he or she has asexually reproduced the 
plant. Where the plant is a newly found plant the oath 
or declaration must also state that it was found in a 
cultivated area. 

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

§ 1.163 Specification and arrangement of application elements in a plant application. 

(a) The specification must contain as full and 
complete a disclosure as possible of the plant and the 
characteristics thereof that distinguish the same over 
related known varieties, and its antecedents, and must 
particularly point out where and in what manner the 
variety of plant has been asexually reproduced. For a 
newly found plant, the specification must particularly 
point out the location and character of the area where 
the plant was discovered. 
(b) The elements of the plant application, if 
applicable, should appear in the following order: 
(1) Plant application transmittal form. 
(2) Fee transmittal form. 






(3) Application data sheet (see § 1.76). 
(4) Specification. 
(5) Drawings (in duplicate). 
(6) Executed oath or declaration (§ 1.162). 


(c) The specification should include the following 
sections in order: 
(1) Title of the invention, which may include 
an introductory portion stating the name, citizenship, 
and residence of the applicant. 
(2) Cross-reference to related applications 
(unless included in the application data sheet). 
(3) Statement regarding federally sponsored 
research or development. 
(4) Latin name of the genus and species of 
the plant claimed. 
(5) Variety denomination. 
(6) Background of the invention. 
(7) Brief summary of the invention. 
(8) Brief description of the drawing. 
(9) Detailed botanical description. 
(10) A single claim. 
(11) Abstract of the disclosure. 




(d) The text of the specification or sections 
defined in paragraph (c) of this section, if applicable, 
should be preceded by a section heading in upper 
case, without underlining or bold type. 


[24 FR 10332, Dec. 22, 1959; para. (b), 48 FR 2713, 
Jan. 20, 1983, effective Feb. 27, 1983; paras. (c) and (d) 
added, 61 FR 42790, Aug. 19, 1996, effective Sept. 23, 
1996; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000] 

§ 1.164 Claim. 

The claim shall be in formal terms to the new and 
distinct variety of the specified plant as described and 
illustrated, and may also recite the principal distinguishing 
characteristics. More than one claim is not 
permitted. 

§ 1.165 Plant Drawings. 

(a) Plant patent drawings should be artistically 
and competently executed and must comply with the 
requirements of § 1.84. View numbers and reference 
characters need not be employed unless required by 
the examiner. The drawing must disclose all the distinctive 
characteristics of the plant capable of visual 
representation. 

 

(b) The drawings may be in color. The drawing 
must be in color if color is a distinguishing characteristic 
of the new variety. Two copies of color drawings 
or photographs must be submitted. 

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

§ 1.166 Specimens. 

The applicant may be required to furnish specimens 
of the plant, or its flower or fruit, in a quantity and at a 
time in its stage of growth as may be designated, for 
study and inspection. Such specimens, properly 
packed, must be forwarded in conformity with 
instructions furnished to the applicant. When it is not 
possible to forward such specimens, plants must be 
made available for official inspection where grown. 

§ 1.167 Examination. 

Applications may be submitted by the Patent and 
Trademark Office to the Department of Agriculture 
for study and report. 

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

REISSUES 

§ 1.171 Application for reissue. 

An application for reissue must contain the same 
parts required for an application for an original patent, 
complying with all the rules relating thereto except as 
otherwise provided, and in addition, must comply 
with the requirements of the rules relating to reissue 
applications. 

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

§ 1.172 Applicants, assignees. 

(a) A reissue oath must be signed and sworn to 
or declaration made by the inventor or inventors 
except as otherwise provided (see §§ 1.42, 1.43, 
1.47), and must be accompanied by the written consent 
of all assignees, if any, owning an undivided 
interest in the patent, but a reissue oath may be made 
and sworn to or declaration made by the assignee of 
the entire interest if the application does not seek to 
enlarge the scope of the claims of the original patent. 
All assignees consenting to the reissue must establish 
their ownership interest in the patent by filing in the 
reissue application a submission in accordance with 
the provisions of § 3.73(b) of this chapter. 
(b) A reissue will be granted to the original patentee, 
his legal representatives or assigns as the interest 
may appear. 


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

§ 1.173 Reissue specification, drawings, and 
amendments. 

(a) Contents of a reissue application. An application 
for reissue must contain the entire specification, 
including the claims, and the drawings of 
the patent. No new matter shall be introduced into 
the application. No reissue patent shall be granted 
enlarging the scope of the claims of the original patent 
unless applied for within two years from the grant of 
the original patent, pursuant to 35 U.S.C. 251. 
(1) Specification, including claims. The 
entire specification, including the claims, of the patent 
for which reissue is requested must be furnished in the 
form of a copy of the printed patent, in double column 
format, each page on only one side of a single sheet of 
paper. If an amendment of the reissue application is to 
be included, it must be made pursuant to paragraph 
(b) of this section. The formal requirements for papers 
making up the reissue application other than those set 
forth in this section are set out in § 1.52. Additionally, 
a copy of any disclaimer (§ 1.321), certificate of correction 
(§§ 1.322 through 1.324), or reexamination 
certificate (§ 1.570) issued in the patent must be 
included. (See also § 1.178). 
(2) Drawings. Applicant must submit a clean 
copy of each drawing sheet of the printed patent at 
the time the reissue application is filed. If such copy 


 

complies with § 1.84, no further drawings will be 
required. Where a drawing of the reissue application 
is to include any changes relative to the patent being 
reissued, the changes to the drawing must be made in 
accordance with paragraph (b)(3) of this section. The 
Office will not transfer the drawings from the patent 
file to the reissue application. 

(b) Making amendments in a reissue application. An amendment in a reissue application is made 
either by physically incorporating the changes into the 
specification when the application is filed, or by a 
separate amendment paper. If amendment is made by 
incorporation, markings pursuant to paragraph (d) of 
this section must be used. If amendment is made by an 
amendment paper, the paper must direct that specified 
changes be made, as follows: 
(1) Specification other than the claims. 
Changes to the specification, other than to the claims, 
must be made by submission of the entire text of an 
added or rewritten paragraph, including markings pursuant 
to paragraph (d) of this section, except that an 
entire paragraph may be deleted by a statement deleting 
the paragraph without presentation of the text of 
the paragraph. The precise point in the specification 
must be identified where any added or rewritten paragraph 
is located. This paragraph applies whether the 
amendment is submitted on paper or compact disc 
(see §§ 1.52(e)(1) and 1.821(c), but not for discs submitted 
under § 1.821(e)). 
(2) Claims. An amendment paper must 
include the entire text of each claim being changed by 
such amendment paper and of each claim being added 
by such amendment paper. For any claim changed by 
the amendment paper, a parenthetical expression 
“amended,” “twice amended,” etc., should follow the 
claim number. Each changed patent claim and each 
added claim must include markings pursuant to paragraph 
(d) of this section, except that a patent claim or 
added claim should be canceled by a statement canceling 
the claim without presentation of the text of the 
claim. 
(3) Drawings. One or more patent drawings 
shall be amended in the following manner: Any 
changes to a patent drawing must be submitted as a 
replacement sheet of drawings which shall be an 
attachment to the amendment document. Any replacement 
sheet of drawings must be in compliance with § 


1.84 and shall include all of the figures appearing on 
the original version of the sheet, even if only one figure 
is amended. Amended figures must be identified 
as “Amended,” and any added figure must be identified 
as “New.” In the event that a figure is canceled, 
the figure must be surrounded by brackets and identified 
as “Canceled.” All changes to the drawing(s) 
shall be explained, in detail, beginning on a separate 
sheet accompanying the papers including the amendment 
to the drawings. 

(i) A marked-up copy of any amended 
drawing figure, including annotations indicating the 
changes made, may be included. The marked-up copy 
must be clearly labeled as “Annotated Marked-up 
Drawings” and must be presented in the amendment 
or remarks section that explains the change to the 
drawings. 
(ii) A marked-up copy of any amended 
drawing figure, including annotations indicating the 
changes made, must be provided when required by the 
examiner. 
(c) Status of claims and support for claim 
changes. Whenever there is an amendment to the 
claims pursuant to paragraph (b) of this section, there 
must also be supplied, on pages separate from 
the pages containing the changes, the status (i.e., 
pending or canceled), as of the date of the amendment, 
of all patent claims and of all added claims, and 
an explanation of the support in the disclosure of the 
patent for the changes made to the claims. 
(d) Changes shown by markings. Any changes 
relative to the patent being reissued which are made to 
the specification, including the claims, upon filing, or 
by an amendment paper in the reissue application, 
must include the following markings: 
(1) The matter to be omitted by reissue must 
be enclosed in brackets; and 
(2) The matter to be added by reissue must be 
underlined, except for amendments submitted on 
compact discs (§§ 1.96 and 1.821(c)). Matter added 
by reissue on compact discs must be preceded with 
“<U>” and end with “</U>” to properly identify the 
material being added. 
(e) Numbering of patent claims preserved. 
Patent claims may not be renumbered. The numbering 
of any claim added in the reissue application must follow 
the number of the highest numbered patent claim. 
(f) Amendment of disclosure may be required. 
The disclosure must be amended, when required by 


 

the Office, to correct inaccuracies of description and 
definition, and to secure substantial correspondence 
between the claims, the remainder of the specification, 
and the drawings. 

(g) Amendments made relative to the patent. All 
amendments must be made relative to the patent specification, 
including the claims, and drawings, which 
are in effect as of the date of filing of the reissue 
application. 

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

§ 1.174 [Reserved] 

[24 FR 10332, Dec. 22, 1959; para. (a), 48 FR 2713, 
Jan. 20, 1983, effective Feb. 27, 1983; removed and 
reserved, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000] 

§ 1.175 Reissue oath or declaration. 

(a) The reissue oath or declaration in addition 
to complying with the requirements of § 1.63, must 
also state that: 
(1) The applicant believes the original patent 
to be wholly or partly inoperative or invalid by reason 
of a defective specification or drawing, or by reason 
of the patentee claiming more or less than the patentee 
had the right to claim in the patent, stating at least one 
error being relied upon as the basis for reissue; and 
(2) All errors being corrected in the reissue 
application up to the time of filing of the oath or declaration 
under this paragraph arose without any deceptive 
intention on the part of the applicant. 
(b)(1) For any error corrected, which is not covered 
by the oath or declaration submitted under paragraph 
(a) of this section, applicant must submit a 
supplemental oath or declaration stating that every 
such error arose without any deceptive intention on 
the part of the applicant. Any supplemental oath or 
declaration required by this paragraph must be submitted 
before allowance and may be submitted: 


(i) With any amendment prior to allowance; 
or 
(ii) In order to overcome a rejection under 
35 U.S.C. 251 made by the examiner where it is indicated 
that the submission of a supplemental oath or 


declaration as required by this paragraph will overcome 
the rejection. 

(2) For any error sought to be corrected after 
allowance, a supplemental oath or declaration must 
accompany the requested correction stating that the 
error(s) to be corrected arose without any deceptive 
intention on the part of the applicant. 
(c) Having once stated an error upon which the 
reissue is based, as set forth in paragraph (a)(1), 
unless all errors previously stated in the oath or declaration 
are no longer being corrected, a subsequent 
oath or declaration under paragraph (b) of this section 
need not specifically identify any other error or errors 
being corrected. 
(d) The oath or declaration required by paragraph 
(a) of this section may be submitted under the 
provisions of § 1.53(f). 
(e) The filing of any continuing reissue application 
which does not replace its parent reissue application 
must include an oath or declaration which, 
pursuant to paragraph (a)(1) of this section, identifies 
at least one error in the original patent which has not 
been corrected by the parent reissue application or an 
earlier reissue application. All other requirements 
relating to oaths or declarations must also be met. 


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

(e) added, 69 FR 56481, Sept. 21, 2004, effective Oct. 21, 
2004] 

§ 1.176 Examination of reissue. 

(a) A reissue application will be examined in 
the same manner as a non-reissue, non-provisional 
application, and will be subject to all the requirements 
of the rules related to non-reissue applications. Applications 
for reissue will be acted on by the examiner in 
advance of other applications. 
(b) Restriction between subject matter of the 
original patent claims and previously unclaimed subject 
matter may be required (restriction involving only 
subject matter of the original patent claims will not be 
required). If restriction is required, the subject matter 
of the original patent claims will be held to be constructively 
elected unless a disclaimer of all the patent 


 

claims is filed in the reissue application, which disclaimer 
cannot be withdrawn by applicant. 

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

§ 1.177 Issuance of multiple reissue patents. 

(a) The Office may reissue a patent as multiple 
reissue patents. If applicant files more than one application 
for the reissue of a single patent, each such 
application must contain or be amended to contain in 
the first sentence of the specification a notice stating 
that more than one reissue application has been filed 
and identifying each of the reissue applications by 
relationship, application number and filing date. The 
Office may correct by certificate of correction under 
§ 1.322 any reissue patent resulting from an application 
to which this paragraph applies that does not contain 
the required notice. 
(b) If applicant files more than one application 
for the reissue of a single patent, each claim of the 
patent being reissued must be presented in each of the 
reissue applications as an amended, unamended, or 
canceled (shown in brackets) claim, with each such 
claim bearing the same number as in the patent being 
reissued. The same claim of the patent being reissued 
may not be presented in its original unamended form 
for examination in more than one of such multiple 
reissue applications. The numbering of any added 
claims in any of the multiple reissue applications must 
follow the number of the highest numbered original 
patent claim. 
(c) If any one of the several reissue applications 
by itself fails to correct an error in the original patent 
as required by 35 U.S.C. 251 but is otherwise in condition 
for allowance, the Office may suspend action 
in the allowable application until all issues are 
resolved as to at least one of the remaining reissue 
applications. The Office may also merge two or more 
of the multiple reissue applications into a single reissue 
application. No reissue application containing 
only unamended patent claims and not correcting an 
error in the original patent will be passed to issue by 
itself. 


[47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 
1982; revised, 54 FR 6893, Feb. 15, 1989, 54 FR 9432, 
March 7, 1989, effective Apr. 17, 1989; revised, 60 FR 
20195, Apr. 25, 1995, effective June 8, 1995; revised, 
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000] 

§ 1.178 Original patent; continuing duty of applicant. 

(a) The application for reissue of a patent shall 
constitute an offer to surrender that patent, and the 
surrender shall take effect upon reissue of the patent. 
Until a reissue application is granted, the original 
patent shall remain in effect. 
(b) In any reissue application before the Office, 
the applicant must call to the attention of the Office 
any prior or concurrent proceedings in which the 
patent (for which reissue is requested) is or was 
involved, such as interferences, reissues, reexaminations, 
or litigations and the results of such proceedings 
(see also § 1.173(a)(1)). 


[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 
1969; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 
7, 2000; para. (a) revised, 69 FR 56481, Sept. 21, 2004, 
effective Sept. 21, 2004] 

§ 1.179 [Reserved]

 [Removed and reserved, 69 FR 56481, Sept. 21, 2004, 
effective Oct. 21, 2004] 

PETITIONS AND ACTION BY THE 
DIRECTOR


§ 1.181 Petition to the Director. 

(a) Petition may be taken to the Director: 

(1) From any action or requirement of any 
examiner in the ex parte prosecution of an application, 
or in ex parte or inter partes prosecution of a 
reexamination proceeding which is not subject to 
appeal to the Board of Patent Appeals and Interferences 
or to the court; 
(2) In cases in which a statute or the rules 
specify that the matter is to be determined directly by 
or reviewed by the Director; and 
(3) To invoke the supervisory authority of the 
Director in appropriate circumstances. For petitions 
involving action of the Board of Patent Appeals and 
Interferences, see § 41.3 of this title. 
(b) Any such petition must contain a statement 
of the facts involved and the point or points 
to be reviewed and the action requested. Briefs or 


 

memoranda, if any, in support thereof should accompany 
or be embodied in the petition; and where facts 
are to be proven, the proof in the form of affidavits or 
declarations (and exhibits, if any) must accompany 
the petition. 

(c) When a petition is taken from an action or 
requirement of an examiner in the ex parte prosecution 
of an application, or in the ex parte or inter partes 
prosecution of a reexamination proceeding, it may be 
required that there have been a proper request for 
reconsideration (§ 1.111) and a repeated action by the 
examiner. The examiner may be directed by the 
Director to furnish a written statement, within a specified 
time, setting forth the reasons for his or her decision 
upon the matters averred in the petition, 
supplying a copy to the petitioner. 
(d) Where a fee is required for a petition to the 
Director the appropriate section of this part will so 
indicate. If any required fee does not accompany the 
petition, the petition will be dismissed. 
(e) Oral hearing will not be granted except 
when considered necessary by the Director. 
(f) The mere filing of a petition will not stay 
any period for reply that may be running against the 
application, nor act as a stay of other proceedings. 
Any petition under this part not filed within two 
months of the mailing date of the action or notice 
from which relief is requested may be dismissed as 
untimely, except as otherwise provided. This two-
month period is not extendable. 
(g) The Director may delegate to appropriate 
Patent and Trademark Office officials the determination 
of petitions. 


[24 FR 10332, Dec. 22, 1959; 34 FR 18857, Nov. 26, 
1969; paras. (d) and (g), 47 FR 41278, Sept. 17, 1982, 
effective Oct. 1, 1982; para. (a), 49 FR 48416, Dec. 12, 
1984, effective Feb. 11, 1985; para. (f) revised, 65 FR 
54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (a) and 

(c) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; paras. (a), (a)(2)-(3), (c)-(e) & (g) revised, 68 FR 
14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(3) 
revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 
2004] 

§ 1.182 Questions not specifically provided for. 

All situations not specifically provided for in the 
regulations of this part will be decided in accordance 
with the merits of each situation by or under the 
authority of the Director, subject to such other 
requirements as may be imposed, and such decision 
will be communicated to the interested parties in writing. 
Any petition seeking a decision under this section 
must be accompanied by the petition fee set forth in 
§ 1.17(f). 

[47 FR 41278, Sept. 17, 1982, effective date Oct. 1, 
1982; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004, effective 
Nov. 22, 2004] 

§ 1.183 Suspension of rules. 

In an extraordinary situation, when justice requires, 
any requirement of the regulations in this part 
which is not a requirement of the statutes may be suspended 
or waived by the Director or the Director’s 
designee, sua sponte, or on petition of the interested 
party, subject to such other requirements as may be 
imposed. Any petition under this section must be 
accompanied by the petition fee set forth in § 1.17(f). 

[47 FR 41278, Sept. 17, 1982, effective Oct. 1, 1982; 
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 
2003; revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 
22, 2004] 

§ 1.184 [Reserved] 

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997] 

APPEAL TO THE BOARD OF PATENT 
APPEALS AND INTERFERENCES 

§ 1.191 Appeal to Board of Patent Appeals and 
Interferences. 

Appeals to the Board of Patent Appeals and Interferences 
under 35 U.S.C. 134(a) and (b) are conducted 
according to part 41 of this title. 

[46 FR 29183, May 29, 1981; para. (a), 47 FR 41278, 
Sept. 17, 1982, effective Oct. 1, 1982; para. (d), 49 FR 555, 
Jan. 4, 1984, effective Apr. 1, 1984; 49 FR 48416, Dec. 12, 
1984, effective Feb. 11, 1985; paras. (b) and (d) amended, 
para. (e) added, 54 FR 29553, July 13, 1989, effective Aug. 
20, 1989; para. (d) revised, 58 FR 54504, Oct. 22, 1993, 
effective Jan. 3, 1994; paras. (a) and (b) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) 
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; 

 

para. (e) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; para. (a) revised, 68 FR 70996, Dec. 22, 
2003, effective Jan. 21, 2004; revised, 69 FR 49959, Aug. 
12, 2004, effective Sept. 13, 2004] 

§ 1.192 [Reserved] 

[36 FR 5850, Mar. 30, 1971; para. (a), 47 FR 41278, 
Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 49 FR 556, 
Jan. 4, 1984, effective Apr. 1, 1984; 53 FR 23734, June 23, 
1988, effective Sept. 12, 1988; para. (a), (c), and (d) 
revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; 
paras. (a)-(c) revised, 60 FR 14488, Mar 17, 1995, effective 
Apr. 21, 1995; para. (a) revised, 62 FR 53131, Oct. 10, 
1997, effective Dec. 1, 1997; removed and reserved, 69 FR 
49959, Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.193 [Reserved] 

[24 FR 10332, Dec. 22, 1959; 34 FR 18858, Nov.26, 
1969; para. (c), 47 FR 21752, May 19, 1982, added effective 
July 1, 1982; para. (b), 50 FR 9382, Mar. 7, 1985, 
effective May 8, 1985; 53 FR 23735, June 23, 1988, effective 
Sept. 12, 1988; para. (c) deleted, 57 FR 2021, Jan. 17, 
1992, effective Mar. 16, 1992; para. (b) revised, 58 FR 
54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (b)(1) 
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; removed and reserved, 69 FR 
49959, Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.194 [Reserved] 

[42 FR 5595, Jan. 28, 1977; paras. (b) & (c), 47 FR 
41278, Sept. 17, 1982, effective Oct. 1, 1982; para. (a), 
49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. 

(b) revised 53 FR 23735, June 23, 1988, effective Sept. 12, 
1988; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective 
Jan. 3, 1994; revised, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997; removed and reserved, 69 FR 
49959, Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.195 [Reserved] 

[34 FR 18858, Nov. 26, 1969; removed and reserved, 
69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.196 [Reserved] 

[24 FR 10332, Dec. 12, 1959; 49 FR 29183, May 29, 
1981; 49 FR 48416, Dec. 12, 1984, effective Feb. 12, 1985; 
para. (b) revised, 53 FR 23735, June 23, 1988, effective 
Sept. 12, 1988; paras. (a), (b) & (d) amended, paras. (e) 
& (f) added, 54 FR 29552, July 13, 1989, effective Aug. 20, 
1989; para. (f) revised, 58 FR 54504, Oct. 22, 1993, effective 
Jan. 3, 1994; paras. (b) & (d) revised, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997; removed and 
reserved, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 
2004] 

§ 1.197 Return of jurisdiction from the Board of 

Patent Appeals and Interferences; termi

nation of proceedings. 

(a) Return of jurisdiction from the Board of 
Patent Appeals and Interferences. Jurisdiction over an 
application or patent under ex parte reexamination 
proceeding passes to the examiner after a decision by 
the Board of Patent Appeals and Interferences upon 
transmittal of the file to the examiner, subject to 
appellant’s right of appeal or other review, for such 
further action by appellant or by the examiner, as the 
condition of the application or patent under ex parte 
reexamination proceeding may require, to carry into 
effect the decision of the Board of Patent Appeals and 
Interferences. 
(b) Termination of proceedings. 


(1) Proceedings on an application are considered 
terminated by the dismissal of an appeal or the 
failure to timely file an appeal to the court or a civil 
action (§ 1.304) except: 
(i) Where claims stand allowed in an 
application; or 
(ii) Where the nature of the decision 
requires further action by the examiner. 
(2) The date of termination of proceedings on 
an application is the date on which the appeal is dismissed 
or the date on which the time for appeal to the 


U.S. Court of Appeals for the Federal Circuit or 
review by civil action (§ 1.304) expires in the absence 
of further appeal or review. If an appeal to the U.S. 
Court of Appeals for the Federal Circuit or a civil 
action has been filed, proceedings on an application 
are considered terminated when the appeal or civil 
action is terminated. A civil action is terminated when 
the time to appeal the judgment expires. An appeal to 
the U.S. Court of Appeals for the Federal Circuit, 
whether from a decision of the Board or a judgment in 
a civil action, is terminated when the mandate is 
issued by the Court. 

 

[46 FR 29184, May 29, 1981; para. (a), 47 FR 41278, 
Sept. 17, 1982, effective Oct. 1, 1982; 49 FR 556, Jan. 4, 
1984, effective Apr. 1, 1984; paras. (a) and (b), 49 FR 
48416, Dec. 12, 1984, effective Feb. 11, 1985; paras. (b) 
and (c), 54 FR 29552, July 13, 1989, effective Aug. 20, 
1989; para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective 
Jan. 3, 1994; paras. (a) & (b) revised, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997; para. (c) revised, 68 
FR 70996, Dec. 22, 2003, effective Jan. 21, 2004; revised, 
69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.198 Reopening after a final decision of the 

Board of Patent Appeals and Interfer

ences.

 When a decision by the Board of Patent Appeals 
and Interferences on appeal has become final for judicial 
review, prosecution of the proceeding before the 
primary examiner will not be reopened or reconsidered 
by the primary examiner except under the provisions 
of § 1.114 or § 41.50 of this title without the 
written authority of the Director, and then only for the 
consideration of matters not already adjudicated, sufficient 
cause being shown. 

[49 FR 48416, Dec. 12, 1984, effective date Feb. 11, 
1985; revised, 65 FR 14865, Mar. 20, 2000, effective May 
29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); 
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 
2003; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

PUBLICATION OF APPLICATIONS 

§ 1.211 Publication of applications. 

(a) Each U.S. national application for patent 
filed in the Office under 35 U.S.C. 111(a) and 
each international application in compliance with 
35 U.S.C. 371 will 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, unless: 
(1) The application is recognized by the 
Office as no longer pending; 
(2) The application is national security classified 
(see § 5.2(c)), subject to a secrecy order under 
35 U.S.C. 181, or under national security review; 
(3) The application has issued as a patent in 
sufficient time to be removed from the publication 
process; or 


(4) The application was filed with a nonpublication 
request in compliance with § 1.213(a). 
(b) Provisional applications under 35 U.S.C. 
111(b) shall not be published, and design applications 
under 35 U.S.C. chapter 16 and reissue applications 
under 35 U.S.C. chapter 25 shall not be published 
under this section. 
(c) An application filed under 35 U.S.C. 111(a) 
will not be published until it includes the basic filing 
fee (§ 1.16(a) or 1.16(c)), any English translation 
required by § 1.52(d), and an executed oath or declaration 
under § 1.63. The Office may delay publishing 
any application until it includes any application size 
fee required by the Office under § 1.16(s) or § 
1.492(j), a specification having papers in compliance 
with § 1.52 and an abstract (§ 1.72(b)), drawings in 
compliance with § 1.84, and a sequence listing in 
compliance with §§ 1.821 through 1.825 (if applicable), 
and until any petition under § 1.47 is granted. 
(d) The Office may refuse to publish an application, 
or to include a portion of an application in the 
patent application publication (§ 1.215), if publication 
of the application or portion thereof would violate 
Federal or state law, or if the application or portion 
thereof contains offensive or disparaging material. 
(e) The publication fee set forth in § 1.18(d) 
must be paid in each application published under this 
section before the patent will be granted. If an application 
is subject to publication under this section, the 
sum specified in the notice of allowance under § 1.311 
will also include the publication fee which must be 
paid within three months from the date of mailing of 
the notice of allowance to avoid abandonment of the 
application. This three-month period is not extendable. 
If the application is not published under this section, 
the publication fee (if paid) will be refunded. 


 [Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000; para. (c) revised, 70 FR 3880, Jan. 27, 2005, 
effective Dec. 8, 2004] 

§ 1.213 Nonpublication request. 

(a) If the invention disclosed in an application 
has not been and will not be the subject of an application 
filed in another country, or under a multilateral 
international agreement, that requires publication of 
applications eighteen months after filing, the application 
will not be published under 35 U.S.C. 122(b) and 
§ 1.211 provided: 

 

(1) A request (nonpublication request) is submitted 
with the application upon filing; 
(2) The request states in a conspicuous manner 
that the application is not to be published under 
35 U.S.C. 122(b); 
(3) The request contains a certification that 
the invention disclosed in the application has not been 
and will not be the subject of an application filed in 
another country, or under a multilateral international 
agreement, that requires publication at eighteen 
months after filing; and 
(4) The request is signed in compliance with 
§ 1.33(b). 
(b) The applicant may rescind a nonpublication 
request at any time. A request to rescind a nonpublication 
request under paragraph (a) of this section must: 
(1) Identify the application to which it is 
directed; 
(2) State in a conspicuous manner that the 
request that the application is not to be published 
under 35 U.S.C. 122(b) is rescinded; and 
(3) Be signed in compliance with § 1.33(b). 


(c) If an applicant who has submitted a nonpublication 
request under paragraph (a) of this section 
subsequently files an application directed to the 
invention disclosed in the application in which the 
nonpublication request was submitted in another 
country, or under a multilateral international agreement, 
that requires publication of applications eighteen 
months after filing, the applicant must notify the 
Office of such filing within forty-five days after the 
date of the filing of such foreign or international 
application. The failure to timely notify the Office of 
the filing of such foreign or international application 
shall result in abandonment of the application in 
which the nonpublication request was submitted 
(35 U.S.C. 122(b)(2)(B)(iii)). 


[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000] 

§ 1.215 Patent application publication. 

(a) The publication of an application under 35 

U.S.C. 122(b) shall include a patent application publication. 
The date of publication shall be indicated on 
the patent application publication. The patent application 
publication will be based upon the specification 
and drawings deposited on the filing date of the application, 
as well as the executed oath or declaration submitted 
to complete the application. The patent 
application publication may also be based upon 
amendments to the specification (other than the 
abstract or the claims) that are reflected in a substitute 
specification under § 1.125(b), amendments to the 
abstract under § 1.121(b), amendments to the claims 
that are reflected in a complete claim listing under § 
1.121(c), and amendments to the drawings under § 
1.121(d), provided that such substitute specification 
or amendment is submitted in sufficient time to be 
entered into the Office file wrapper of the application 
before technical preparations for publication of the 
application have begun. Technical preparations for 
publication of an application generally begin four 
months prior to the projected date of publication. The 
patent application publication of an application that 
has entered the national stage under 35 U.S.C. 371 
may also include amendments made during the international 
stage. See paragraph (c) of this section for 
publication of an application based upon a copy of the 
application submitted via the Office electronic filing 
system. 

(b) If applicant wants the patent application 
publication to include assignee information, the applicant 
must include the assignee information on the 
application transmittal sheet or the application data 
sheet (§ 1.76). Assignee information may not be 
included on the patent application publication unless 
this information is provided on the application transmittal 
sheet or application data sheet included with 
the application on filing. Providing this information 
on the application transmittal sheet or the application 
data sheet does not substitute for compliance with any 
requirement of part 3 of this chapter to have an 
assignment recorded by the Office. 
(c) At applicant’s option, the patent application 
publication will be based upon the copy of the application 
(specification, drawings, and oath or declaration) 
as amended, provided that applicant supplies 
such a copy in compliance with the Office electronic 
filing system requirements within one month of the 
mailing date of the first Office communication that 
includes a confirmation number for the application, or 
fourteen months of the earliest filing date for which a 
benefit is sought under title 35, United States Code, 
whichever is later. 


 

(d) If the copy of the application submitted pursuant 
to paragraph (c) of this section does not comply 
with the Office electronic filing system requirements, 
the Office will publish the application as provided in 
paragraph (a) of this section. If, however, the Office 
has not started the publication process, the Office may 
use an untimely filed copy of the application supplied 
by the applicant under paragraph (c) of this section in 
creating the patent application publication.

 [Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000; paras. (a) and (c) revised, 69 FR 56481, Sept. 21, 
2004, effective Oct. 21, 2004] 

§ 1.217 Publication of a redacted copy of an 
application. 

(a) 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 for publication, eliminating any part or 
description of the invention that is not also contained 
in any of the corresponding applications filed in a foreign 
country. The Office will publish the application 
as provided in § 1.215(a) unless the applicant files a 
redacted copy of the application in compliance with 
this section within sixteen months after the earliest filing 
date for which a benefit is sought under title 
35, United States Code. 
(b) The redacted copy of the application must 
be submitted in compliance with the Office electronic 
filing system requirements. The title of the invention 
in the redacted copy of the application must correspond 
to the title of the application at the time the 
redacted copy of the application is submitted to the 
Office. If the redacted copy of the application does 
not comply with the Office electronic filing system 
requirements, the Office will publish the application 
as provided in § 1.215(a). 
(c) The applicant must also concurrently submit 
in paper (§ 1.52(a)) to be filed in the application: 
(1) A certified copy of each foreign-filed 
application that corresponds to the application for 
which a redacted copy is submitted; 


(2) A translation of each such foreign-filed 
application that is in a language other than English, 
and a statement that the translation is accurate; 
(3) A marked-up copy of the application 
showing the redactions in brackets; and 
(4) A certification that the redacted copy of 
the application eliminates only the part or description 
of the invention that is not contained in any application 
filed in a foreign country, directly or through a 
multilateral international agreement, that corresponds 
to the application filed in the Office. 
(d) The Office will provide a copy of the complete 
file wrapper and contents of an application for 
which a redacted copy was submitted under this section 
to any person upon written request pursuant to § 
1.14(c)(2), unless applicant complies with the requirements 
of paragraphs (d)(1), (d)(2), and (d)(3) of this 
section. 
(1) Applicant must accompany the submission 
required by paragraph (c) of this section with the 
following: 
(i) A copy of any Office correspondence 
previously received by applicant including any 
desired redactions, and a second copy of all Office 
correspondence previously received by applicant 
showing the redacted material in brackets; and 
(ii) A copy of each submission previously 
filed by the applicant including any desired redactions, 
and a second copy of each submission previously 
filed by the applicant showing the redacted 
material in brackets. 
(2) In addition to providing the submission 
required by paragraphs (c) and (d)(1) of this section, 
applicant must: 
(i) Within one month of the date of mailing 
of any correspondence from the Office, file a copy 
of such Office correspondence including any desired 
redactions, and a second copy of such Office correspondence 
showing the redacted material in brackets; 
and 
(ii) With each submission by the applicant, 
include a copy of such submission including any 
desired redactions, and a second copy of such submission 
showing the redacted material in brackets. 
(3) Each submission under paragraph (d)(1) 
or (d)(2) of this paragraph must also be accompanied 
by the processing fee set forth in § 1.17(i) and a certification 
that the redactions are limited to the elimina-


 

tion of material that is relevant only to the part or 
description of the invention that was not contained in 
the redacted copy of the application submitted for 
publication. 

(e) The provisions of § 1.8 do not apply to the 
time periods set forth in this section. 

 [Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000] 

§ 1.219 Early publication.

 Applications that will be published under § 1.211 
may be published earlier than as set forth in § 
1.211(a) at the request of the applicant. Any request 
for early publication must be accompanied by the 
publication fee set forth in § 1.18(d). If the applicant 
does not submit a copy of the application in compliance 
with the Office electronic filing system requirements 
pursuant to § 1.215(c), the Office will publish 
the application as provided in § 1.215(a). No consideration 
will be given to requests for publication on a 
certain date, and such requests will be treated as a 
request for publication as soon as possible. 

[Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000] 

§ 1.221 Voluntary publication or republication of 
patent application publication. 

(a) Any request for publication of an application 
filed before, but pending on, November 29, 2000, 
and any request for republication of an application 
previously published under § 1.211, must include a 
copy of the application in compliance with the Office 
electronic filing system requirements and be accompanied 
by the publication fee set forth in § 1.18(d) and 
the processing fee set forth in § 1.17(i). If the request 
does not comply with the requirements of this paragraph 
or the copy of the application does not comply 
with the Office electronic filing system requirements, 
the Office will not publish the application and will 
refund the publication fee. 
(b) The Office will grant a request for a corrected 
or revised patent application publication other 
than as provided in paragraph (a) of this section only 
when the Office makes a material mistake which is 
apparent from Office records. Any request for a corrected 
or revised patent application publication other 
than as provided in paragraph (a) of this section must 


be filed within two months from the date of the patent 
application publication. This period is not extendable.

 [Added, 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000] 

MISCELLANEOUS PROVISIONS 

§ 1.248 Service of papers; manner of service; 
proof of service in cases other than interferences. 

(a) Service of papers must be on the attorney or 
agent of the party if there be such or on the party if 
there is no attorney or agent, and may be made in any 
of the following ways: 
(1) By delivering a copy of the paper to the 
person served; 
(2) By leaving a copy at the usual place of 
business of the person served with someone in his 
employment; 
(3) When the person served has no usual 
place of business, by leaving a copy at the person’s 
residence, with some person of suitable age and discretion 
who resides there; 
(4) Transmission by first class mail. When 
service is by mail the date of mailing will be regarded 
as the date of service; 
(5) Whenever it shall be satisfactorily shown 
to the Director that none of the above modes of 
obtaining or serving the paper is practicable, service 
may be by notice published in the Official Gazette. 
(b) Papers filed in the Patent and Trademark 
Office which are required to be served shall contain 
proof of service. Proof of service may appear on or be 
affixed to papers filed. Proof of service shall include 
the date and manner of service. In the case of personal 
service, proof of service shall also include the name of 
any person served, certified by the person who made 
service. Proof of service may be made by: 
(1) An acknowledgement of service by or on 
behalf of the person served or 
(2) A statement signed by the attorney or 
agent containing the information required by this section. 
(c) See § 41.106(e) of this title for service of 
papers in contested cases before the Board of Patent 
Appeals and Interferences. 


 

[46 FR 29184, May 29, 1981; 49 FR 48416, Dec. 12, 
1984, effective Feb. 11, 1985; para. (a)(5) revised, 68 FR 
14332, Mar. 25, 2003, effective May 1, 2003; para. (c) 
revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 
2004; para. (c) revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004; para. (c) revised, 69 FR 5 8260, Sept. 
30, 2004, effective Sept. 30, 2004] 

§ 1.251 Unlocatable file. 

(a) In the event that the Office cannot locate the 
file of an application, patent, or other patent-related 
proceeding after a reasonable search, the Office will 
notify the applicant or patentee and set a time period 
within which the applicant or patentee must comply 
with the notice in accordance with one of paragraphs 
(a)(1), (a)(2), or (a)(3) of this section. 
(1) Applicant or patentee may comply with a 
notice under this section by providing: 
(i) A copy of the applicant’s or patentee’s 
record (if any) of all of the correspondence between 
the Office and the applicant or patentee for such application, 
patent, or other proceeding (except for U.S. 
patent documents); 


(ii) A list of such correspondence; and 

(iii) A statement that the copy is a complete 
and accurate copy of the applicant’s or patentee’s 
record of all of the correspondence between the Office 
and the applicant or patentee for such application, 
patent, or other proceeding (except for U.S. patent 
documents), and whether applicant or patentee is 
aware of any correspondence between the Office and 
the applicant or patentee for such application, patent, 
or other proceeding that is not among applicant’s or 
patentee’s records. 

(2) Applicant or patentee may comply with a 
notice under this section by: 
(i) Producing the applicant’s or patentee’s 
record (if any) of all of the correspondence between 
the Office and the applicant or patentee for such application, 
patent, or other proceeding for the Office to 
copy (except for U.S. patent documents); and 
(ii) Providing a statement that the papers 
produced by applicant or patentee are applicant’s or 
patentee’s complete record of all of the correspondence 
between the Office and the applicant or patentee 
for such application, patent, or other proceeding 
(except for U.S. patent documents), and whether 
applicant or patentee is aware of any correspondence 
between the Office and the applicant or patentee for 


such application, patent, or other proceeding that is 
not among applicant’s or patentee’s records. 

(3) If applicant or patentee does not possess 
any record of the correspondence between the Office 
and the applicant or patentee for such application, 
patent, or other proceeding, applicant or patentee must 
comply with a notice under this section by providing a 
statement that applicant or patentee does not possess 
any record of the correspondence between the Office 
and the applicant or patentee for such application, 
patent, or other proceeding. 
(b) With regard to a pending application, failure 
to comply with one of paragraphs (a)(1), (a)(2), or 
(a)(3) of this section within the time period set in the 
notice will result in abandonment of the application. 


[Added, 65 FR 69446, Nov. 17, 2000, effective Nov. 
17, 2000] 

PROTESTS AND PUBLIC USE 
PROCEEDINGS


§ 1.291 Protests by the public against pending 
applications. 

(a) A protest may be filed by a member of the 
public against a pending application, and it will be 
matched with the application file if it adequately identifies 
the patent application. A protest submitted 
within the time frame of paragraph (b) of this section, 
which is not matched in a timely manner to permit 
review by the examiner during prosecution, due to 
inadequate identification, may not be entered and may 
be returned to the protestor where practical, or, if 
return is not practical, discarded. 
(b) The protest will be entered into the record of 
the application if, in addition to complying with paragraph 
(c) of this section, the protest has been served 
upon the applicant in accordance with § 1.248, or 
filed with the Office in duplicate in the event service 
is not possible; and, except for paragraph (b)(1) of this 
section, the protest was filed prior to the date the 
application was published under § 1.211, or a notice 
of allowance under § 1.311 was mailed, whichever 
occurs first: 
(1) If a protest is accompanied by the written 
consent of the applicant, the protest will be considered 
if the protest is matched with the application in time 
to permit review during prosecution. 


 

(2) A statement must accompany a protest 
that it is the first protest submitted in the application 
by the real party in interest who is submitting the protest; 
or the protest must comply with paragraph (c)(5) 
of this section. This section does not apply to the first 
protest filed in an application. 
(c) In addition to compliance with paragraphs 


(a) and (b) of this section, a protest must include. 
(1) A listing of the patents, publication, or 
other information relied upon; 
(2) A concise explanation of the relevance of 
each item listed pursuant to paragraph (c)(1) of this 
section; 
(3) A copy of each listed patent, publication, 
or other item of information in written form, or at 
least the pertinent portions thereof; 
(4) An English language translation of all the 
necessary and pertinent parts of any non-English language 
patent, publication, or other item of information 
relied upon; and 
(5) If it is a second or subsequent protest by 
the same party in interest, an explanation as to why 
the issue(s) raised in the second or subsequent protest 
are significantly different than those raised earlier and 
why the significantly different issue(s) were not presented 
earlier, and a processing fee under § 1.17(i) 
must be submitted. 
(d) A member of the public filing a protest in an 
application under this section will not receive any 
communication from the Office relating to the protest, 
other than the return of a self-addressed postcard 
which the member of the public may include with the 
protest in order to receive an acknowledgement by the 
Office that the protest has been received. The limited 
involvement of the member of the public filing a protest 
pursuant to this section ends with the filing of the 
protest, and no further submission on behalf of the 
protestor will be considered, unless the submission is 
made pursuant to paragraph (c)(5) of this section. 
(e) Where a protest raising inequitable conduct 
issues satisfies the provisions of this section for entry, 
it will be entered into the application file, generally 
without comment on the inequitable conduct issues 
raised in it. 
(f) In the absence of a request by the Office, an 
applicant has no duty to, and need not, reply to a protest. 


(g) Protests that fail to comply with paragraphs 

(b) or (c) of this section may not be entered, and if not 
entered, will be returned to the protestor, or discarded, 
at the option of the Office. 

[47 FR 21752, May 19, 1982, effective July 1, 1982; 
paras. (a) and (c), 57 FR 2021, Jan. 17, 1992, effective Mar. 
16, 1992; paras. (a) and (b) revised, 61 FR 42790, Aug. 19, 
1996, effective Sept. 23, 1996; para. (c) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(1) 
revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 
2000; revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 
22, 2004] 

§ 1.292 Public use proceedings. 

(a) When a petition for the institution of public 
use proceedings, supported by affidavits or declarations 
is found, on reference to the examiner, to make a 
prima facie showing that the invention claimed in an 
application believed to be on file had been in public 
use or on sale more than one year before the filing of 
the application, a hearing may be had before the 
Director to determine whether a public use proceeding 
should be instituted. If instituted, the Director may 
designate an appropriate official to conduct the public 
use proceeding, including the setting of times for taking 
testimony, which shall be taken as provided by 
part 41, subpart D, of this title. The petitioner will be 
heard in the proceedings but after decision therein 
will not be heard further in the prosecution of the 
application for patent. 
(b) The petition and accompanying papers, or a 
notice that such a petition has been filed, shall be 
entered in the application file if: 
(1) The petition is accompanied by the fee set 
forth in § 1.17(j); 
(2) The petition is served on the applicant in 
accordance with § 1.248, or filed with the Office in 
duplicate in the event service is not possible; and 
(3) The petition is submitted prior to the date 
the application was published or the mailing of a 
notice of allowance under § 1.311, whichever occurs 
first. 
(c) A petition for institution of public use proceedings 
shall not be filed by a party to an interference 
as to an application involved in the interference. 
Public use and on sale issues in an interference shall 
be raised by a motion under § 41.121(a)(1) of this 
title. 


 

[42 FR 5595, Jan. 28, 1977; para. (a), 47 FR 41279, 
Sept. 17, 1982; paras. (a) and (c), 49 FR 48416, Dec. 12, 
1984, effective Feb. 12, 1985; paras. (a) and (b) revised, 
61 FR 42790, Aug. 19, 1996, effective Sept. 23, 1996; para. 
(b)(3) revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; paras. (a) and (c) revised, 69 FR 
49959, Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.293 Statutory invention registration. 

(a) An applicant for an original patent may 
request, at any time during the pendency of applicant’s 
pending complete application, that the specification 
and drawings be published as a statutory 
invention registration. Any such request must be 
signed by (1) the applicant and any assignee of record 
or (2) an attorney or agent of record in the application. 
(b) Any request for publication of a statutory 
invention registration must include the following 
parts: 
(1) A waiver of the applicant’s right to 
receive a patent on the invention claimed effective 
upon the date of publication of the statutory invention 
registration; 
(2) The required fee for filing a request for 
publication of a statutory invention registration as 
provided for in § 1.17(n) or (o); 
(3) A statement that, in the opinion of the 
requester, the application to which the request is 
directed meets the requirements of 35 U.S.C. 112; and 
(4) A statement that, in the opinion of the 
requester, the application to which the request is 
directed complies with the formal requirements of this 
part for printing as a patent. 
(c) A waiver filed with a request for a statutory 
invention registration will be effective, upon publication 
of the statutory invention registration, to waive 
the inventor’s right to receive a patent on the invention 
claimed in the statutory invention registration, in 
any application for an original patent which is pending 
on, or filed after, the date of publication of the 
statutory invention registration. A waiver filed with a 
request for a statutory invention registration will not 
affect the rights of any other inventor even if the subject 
matter of the statutory invention registration and 
an application of another inventor are commonly 
owned. A waiver filed with a request for a statutory 
invention registration will not affect any rights in a 


patent to the inventor which issued prior to the date of 
publication of the statutory invention registration 
unless a reissue application is filed seeking to enlarge 
the scope of the claims of the patent. See also 
§ 1.104(c)(5). 

[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; 
para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997] 

§ 1.294 Examination of request for publication of 
a statutory invention registration and 
patent application to which the request is 
directed. 

(a) Any request for a statutory invention registration 
will be examined to determine if the requirements 
of § 1.293 have been met. The application to 
which the request is directed will be examined to 
determine (1) if the subject matter of the application is 
appropriate for publication, (2) if the requirements for 
publication are met, and (3) if the requirements of 
35 U.S.C. 112 and § 1.293 of this part are met. 
(b) Applicant will be notified of the results of 
the examination set forth in paragraph (a) of this section. 
If the requirements of § 1.293 and this section 
are not met by the request filed, the notification to 
applicant will set a period of time within which 
to comply with the requirements in order to avoid 
abandonment of the application. If the application 
does not meet the requirements of 35 U.S.C. 112, the 
notification to applicant will include a rejection under 
the appropriate provisions of 35 U.S.C. 112. The periods 
for reply established pursuant to this section are 
subject to the extension of time provisions of § 1.136. 
After reply by the applicant, the application will again 
be considered for publication of a statutory invention 
registration. If the requirements of § 1.293 and this 
section are not timely met, the refusal to publish will 
be made final. If the requirements of 35 U.S.C. 112 
are not met, the rejection pursuant to 35 U.S.C. 112 
will be made final. 
(c) If the examination pursuant to this section 
results in approval of the request for a statutory invention 
registration the applicant will be notified of the 
intent to publish a statutory invention registration. 


[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; 
para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997] 

 

§ 1.295 Review of decision finally refusing to 
publish a statutory invention registration. 

(a) Any requester who is dissatisfied with the 
final refusal to publish a statutory invention registration 
for reasons other than compliance with 35 U.S.C. 
112 may obtain review of the refusal to publish the 
statutory invention registration by filing a petition to 
the Director accompanied by the fee set forth in § 
1.17(g) within one month or such other time as is set 
in the decision refusing publication. Any such petition 
should comply with the requirements of § 1.181(b). 
The petition may include a request that the petition 
fee be refunded if the final refusal to publish a statutory 
invention registration for reasons other than compliance 
with 35 U.S.C. 112 is determined to result 
from an error by the Patent and Trademark Office. 
(b) Any requester who is dissatisfied with a 
decision finally rejecting claims pursuant to 35 U.S.C. 
112 may obtain review of the decision by filing an 
appeal to the Board of Patent Appeals and Interferences 
pursuant to § 41.31 of this title. If the decision 
rejecting claims pursuant to 35 U.S.C. 112 is reversed, 
the request for a statutory invention registration will 
be approved and the registration published if all of the 
other provisions of § 1.293 and this section are met. 


[50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; para. (b) revised, 69 FR 49959, Aug. 12, 
2004, effective Sept. 13, 2004; para. (a) revised, 69 FR 
56481, Sept. 21, 2004, effective Nov. 22, 2004] 

§ 1.296 Withdrawal of request for publication of 
statutory invention registration. 

A request for a statutory invention registration, 
which has been filed, may be withdrawn prior to the 
date of the notice of the intent to publish a statutory 
invention registration issued pursuant to § 1.294(c) by 
filing a request to withdraw the request for publication 
of a statutory invention registration. The request 
to withdraw may also include a request for a refund of 
any amount paid in excess of the application filing fee 
and a handling fee of $130.00 which will be retained. 
Any request to withdraw the request for publication of 
a statutory invention registration filed on or after the 
date of the notice of intent to publish issued pursuant 
to § 1.294(c) must be in the form of a petition accompanied 
by the fee set forth in § 1.17(g). 

[50 FR 9382, Mar. 7, 1985, effective date May 8, 1985; 
revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 
1989; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; 
revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 
2004] 

§ 1.297 Publication of statutory invention registration. 

(a) If the request for a statutory invention registration 
is approved the statutory invention registration 
will be published. The statutory invention registration 
will be mailed to the requester at the correspondence 
address as provided for in § 1.33(a). A notice of the 
publication of each statutory invention registration 
will be published in the Official Gazette. 
(b) Each statutory invention registration published 
will include a statement relating to the 
attributes of a statutory invention registration. The 
statement will read as follows: 


A statutory invention registration is not a 
patent. It has the defensive attributes of a patent 
but does not have the enforceable attributes of a 
patent. No article or advertisement or the like may 
use the term patent, or any term suggestive of a 
patent, when referring to a statutory invention registration. 
For more specific information on the rights 
associated with a statutory invention registration see 
35 U.S.C. 157. 

[50 FR 9382, Mar. 7, 1985, effective May 8, 1985; 
50 FR 31826, Aug. 6, 1985, effective Oct. 5, 1985] 

REVIEW OF PATENT AND TRADEMARK 
OFFICE DECISIONS BY COURT


§ 1.301 Appeal to U.S. Court of Appeals for the 
Federal Circuit.

 Any applicant, or any owner of a patent involved 
in any ex parte reexamination proceeding filed under 
§ 1.510, dissatisfied with the decision of the Board of 
Patent Appeals and Interferences, and any party to an 
interference dissatisfied with the decision of the 
Board of Patent Appeals and Interferences, may 
appeal to the U.S. Court of Appeals for the Federal 
Circuit. The appellant must take the following steps in 
such an appeal: In the U. S. Patent and Trademark 
Office, file a written notice of appeal directed to the 
Director (§§ 1.302 and 1.304); and in the Court, file a 
copy of the notice of appeal and pay the fee for appeal 

 

as provided by the rules of the Court. For appeals by 
patent owners and third party requesters in inter 
partes reexamination proceedings filed under § 1.913, 
§ 1.983 is controlling. 

[47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 
49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; 50 FR 
9383, Mar. 7, 1985, effective May 8, 1985; 54 FR 29552, 
July 13, 1989, effective Aug. 20, 1989; revised, 65 FR 
76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 68 FR 
14332, Mar. 25, 2003, effective May 1, 2003; revised, 68 
FR 70996, Dec. 22, 2003, effective Jan. 21, 2004] 

§ 1.302 Notice of appeal. 

(a) When an appeal is taken to the U.S. Court of 
Appeals for the Federal Circuit, the appellant shall 
give notice thereof to the Director within the time 
specified in § 1.304. 
(b) In interferences, the notice must be served 
as provided in § 41.106(e) of this title. 
(c) In ex parte reexamination proceedings, the 
notice must be served as provided in § 1.550(f). 
(d) In inter partes reexamination proceedings, 
the notice must be served as provided in § 1.903. 
(e) Notices of appeal directed to the Director 
shall be mailed to or served by hand on the General 
Counsel as provided in § 104.2. 


[24 FR 10332, Dec. 22, 1959; para. (a), 47 FR 47381, 
Oct. 26, 1982, effective Oct. 26, 1982; 49 FR 48416, Dec. 
12, 1984, effective Feb. 11, 1985; 50 FR 9383, Mar. 7, 
1985, effective May 8, 1985; para. (c) added, 53 FR 16414, 
May 8, 1988; paras. (a) & (c) revised, 68 FR 14332, Mar. 
25, 2003, effective May 1, 2003; revised, 68 FR 70996, 
Dec. 22, 2003, effective Jan. 21, 2004; para. (b) revised, 69 
FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. 

(b) revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 
30, 2004] 

§ 1.303 Civil action under 35 U.S.C. 145, 146, 

306. 

(a) Any applicant, or any owner of a patent 
involved in an ex parte reexamination proceeding 
filed before November 29, 1999, dissatisfied with the 
decision of the Board of Patent Appeals and Interferences, 
and any party to an interference dissatisfied 
with the decision of the Board of Patent Appeals and 
Interferences may, instead of appealing to the U.S. 
Court of Appeals for the Federal Circuit (§ 1.301), 

have remedy by civil action under 35 U.S.C. 145 or 
146, as appropriate. Such civil action must be commenced 
within the time specified in § 1.304. 

(b) If an applicant in an ex parte case, or an 
owner of a patent involved in an ex parte reexamination 
proceeding filed before November 29, 1999, has 
taken an appeal to the U.S. Court of Appeals for the 
Federal Circuit, he or she thereby waives his or her 
right to proceed under 35 U.S.C. 145. 
(c) A notice of election under 35 U.S.C. 141 to 
have all further proceedings on review conducted as 
provided in 35 U.S.C. 146 must be filed with the 
Office of the Solicitor and served as provided in § 
41.106(e) of this title. 
(d) For an ex parte reexamination proceeding 
filed on or after November 29, 1999, and for any inter 
partes reexamination proceeding, no remedy by civil 
action under 35 U.S.C. 145 is available. 


[47 FR 47381, Oct. 26, 1982, effective Oct. 26, 1982; 
49 FR 48416, Dec. 12, 1984, effective Feb. 11, 1985; para. 
(c), 54 FR 29553, July 13, 1989, effective Aug. 20, 1989; 
para. (a) revised, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; paras. (a) and (b) revised and para. (d) added, 
65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; para. (c) 
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 
2003; paras. (a), (b), & (d) revised, 68 FR 70996, Dec. 22, 
2003, effective Jan. 21, 2004; para. (c) revised, 69 FR 
49959, Aug. 12, 2004, effective Sept. 13, 2004; para. (c) 
revised, 69 FR 58260, Sept. 30, 2004, effective Sept. 30, 
2004] 

§ 1.304 Time for appeal or civil action. 

(a)(1)The time for filing the notice of appeal to 
the U.S. Court of Appeals for the Federal Circuit (§ 
1.302) or for commencing a civil action (§ 1.303) is 
two months from the date of the decision of the Board 
of Patent Appeals and Interferences. If a request for 
rehearing or reconsideration of the decision is filed 
within the time period provided under § 41.52(a), 
§ 41.79(a), or § 41.127(d) of this title, the time for filing 
an appeal or commencing a civil action shall 
expire two months after action on the request. In contested 
cases before the Board of Patent Appeals and 
Interferences, the time for filing a cross-appeal or 
cross-action expires: 

(i) Fourteen days after service of the 
notice of appeal or the summons and complaint; or 

 

(ii) Two months after the date of decision 
of the Board of Patent Appeals and Interferences, 
whichever is later. 
(2) The time periods set forth in this section 
are not subject to the provisions of § 1.136, § 1.550 
(c), or § 1.956, or of § 41.4 of this title. 
(3) The Director may extend the time for filing 
an appeal or commencing a civil action: 
(i) For good cause shown if requested in 
writing before the expiration of the period for filing 
an appeal or commencing a civil action, or 
(ii) Upon written request after the expiration 
of the period for filing an appeal or commencing 
a civil action upon a showing that the failure to act 
was the result of excusable neglect. 
(b) The times specified in this section in days 
are calendar days. The time specified herein in 
months are calendar months except that one day shall 
be added to any two-month period which includes 
February 28. If the last day of the time specified for 
appeal or commencing a civil action falls on a Saturday, 
Sunday or Federal holiday in the District of 
Columbia, the time is extended to the next day which 
is neither a Saturday, Sunday nor a Federal holiday. 
(c) If a defeated party to an interference has 
taken an appeal to the U.S. Court of Appeals for the 
Federal Circuit and an adverse party has filed notice 
under 35 U.S.C. 141 electing to have all further proceedings 
conducted under 35 U.S.C. 146 (§ 1.303(c)), 
the time for filing a civil action thereafter is specified 
in 35 U.S.C. 141. The time for filing a cross-action 
expires 14 days after service of the summons and 
complaint. 


[41 FR 758, Jan. 5, 1976; para. (a) and (c), 47 FR 
47382, Oct. 26, 1982; para. (a), 49 FR 556, Jan. 4, 1984, 
effective Apr. 1, 1984; para. (a) 49 FR Dec. 12, 1984, effective 
Feb. 11, 1985; para. (a), 50 FR 9383, Mar. 7, 1985, 
effective May 8, 1985; 54 FR 29553, July 13, 1989, effective 
Aug. 20, 1989; paras. (a) and (c) revised 58 FR 54494, 
Oct. 22, 1993, effective Nov. 22, 1993; para. (a)(1) revised, 
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; paras. 
(a)(1) and (a)(2) revised, 65 FR 76756, Dec. 7, 2000, effective 
Feb. 5, 2001; para. (a)(3) revised, 68 FR 14332, Mar. 
25, 2003, effective May 1, 2003; para. (a)(1) revised, 68 FR 
70996, Dec. 22, 2003, effective Jan. 21, 2004; paras. (a)(1) 
and (a)(2) revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004] 

ALLOWANCE AND ISSUE OF PATENT 

§ 1.311 Notice of Allowance. 

(a) If, on examination, it appears that the applicant 
is entitled to a patent under the law, a notice of 
allowance will be sent to the applicant at the correspondence 
address indicated in § 1.33. The notice of 
allowance shall specify a sum constituting the issue 
fee which must be paid within three months from the 
date of mailing of the notice of allowance to avoid 
abandonment of the application. The sum specified in 
the notice of allowance may also include the publication 
fee, in which case the issue fee and publication 
fee (§ 1.211(e)) must both be paid within three months 
from the date of mailing of the notice of allowance to 
avoid abandonment of the application. This three-
month period is not extendable. 
(b) An authorization to charge the issue fee or 
other post-allowance fees set forth in § 1.18 to a 
deposit account may be filed in an individual application 
only after mailing of the notice of allowance. The 
submission of either of the following after the mailing 
of a notice of allowance will operate as a request to 
charge the correct issue fee or any publication fee due 
to any deposit account identified in a previously filed 
authorization to charge such fees: 


(1) An incorrect issue fee or publication fee; 
or 
(2) A fee transmittal form (or letter) for pay


ment of issue fee or publication fee. 

[47 FR 41279, Sept. 17, 1982, effective Oct. 1, 1982; 
para. (b) revised, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; revised, 65 FR 57024, Sept. 20, 2000, effective 
Nov. 29, 2000; para. (a) revised, 66 FR 67087, Dec. 28, 
2001, effective Dec. 28, 2001; para. (b) revised, 69 FR 
56481, Sept. 21, 2004, effective Sept. 21, 2004] 

§ 1.312 Amendments after allowance.

 No amendment may be made as a matter of right 
in an application after the mailing of the notice of 
allowance. Any amendment filed pursuant to this section 
must be filed before or with the payment of the 
issue fee, and may be entered on the recommendation 
of the primary examiner, approved by the Director, 
without withdrawing the application from issue. 

[Para. (b) revised, 58 FR 54504, Oct. 22, 1993, effective 
Jan. 3, 1994; para. (b) revised, 60 FR 20195, Apr. 25, 
1995, effective June 8, 1995; para. (b) revised, 62 FR 

 

53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 
FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted 
as final, 65 FR 50092, Aug. 16, 2000); revised, 68 FR 
14332, Mar. 25, 2003, effective May 1, 2003] 

§ 1.313 Withdrawal from issue. 

(a) Applications may be withdrawn from issue 
for further action at the initiative of the Office or upon 
petition by the applicant. To request that the Office 
withdraw an application from issue, applicant must 
file a petition under this section including the fee set 
forth in § 1.17(h) and a showing of good and sufficient 
reasons why withdrawal of the application from 
issue is necessary. A petition under this section is not 
required if a request for continued examination under 
§ 1.114 is filed prior to payment of the issue fee. If the 
Office withdraws the application from issue, the 
Office will issue a new notice of allowance if the 
Office again allows the application. 
(b) Once the issue fee has been paid, the Office 
will not withdraw the application from issue at its 
own initiative for any reason except: 
(1) A mistake on the part of the Office; 


(2) A violation of § 1.56 or illegality in the 
application; 
(3) Unpatentability of one or more claims; or 
(4) For interference. 




(c) Once the issue fee has been paid, the application 
will not be withdrawn from issue upon petition 
by the applicant for any reason except: 
(1) Unpatentability of one of more claims, 
which petition must be accompanied by an unequivocal 
statement that one or more claims are unpatentable, 
an amendment to such claim or claims, and an 
explanation as to how the amendment causes such 
claim or claims to be patentable; 
(2) Consideration of a request for continued 
examination in compliance with § 1.114; or 
(3) Express abandonment of the application. 
Such express abandonment may be in favor of a continuing 
application. 
(d) A petition under this section will not be 
effective to withdraw the application from issue 
unless it is actually received and granted by the appropriate 
officials before the date of issue. Withdrawal of 
an application from issue after payment of the issue 
fee may not be effective to avoid publication of application 
information. 


[47 FR 41280, Sept. 17, 1982, effective Oct. 1, 1982; 
para. (a), 54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 
1989, effective Apr. 17, 1989; para. (b), 57 FR 2021, Jan. 
17, 1992, effective Mar. 16, 1992; para. (a) revised, 60 FR 
20195, Apr. 25, 1995, effective June 8, 1995; revised, 
65 FR 14865, Mar. 20, 2000, effective May 29, 2000 
(paras. (b), (c)(1), (c)(3) and (d) adopted as final, 65 FR 
50092, Aug. 16, 2000); paras. (a) and c(2) revised, 65 FR 
50092, Aug. 16, 2000, effective Aug. 16, 2000)] 

§ 1.314 Issuance of patent.

 If applicant timely pays the issue fee, the Office 
will issue the patent in regular course unless the application 
is withdrawn from issue (§ 1.313) or the Office 
defers issuance of the patent. To request that the 
Office defer issuance of a patent, applicant must file a 
petition under this section including the fee set forth 
in § 1.17(h) and a showing of good and sufficient reasons 
why it is necessary to defer issuance of the 
patent. 

[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 
1982; revised, 54 FR 6893, Feb. 15, 1989, effective Apr. 
17, 1989; revised, 60 FR 20195, Apr. 25, 1995, effective 
June 8, 1995; revised, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000] 

§ 1.315 Delivery of patent. 

The patent will be delivered or mailed upon issuance 
to the correspondence address of record. See 
§1.33(a). 

[Revised, 61 FR 42790, Aug. 19, 1996, effective Sept. 
23, 1996] 

§ 1.316 Application abandoned for failure to pay 
issue fee. 

If the issue fee is not paid within three months from 
the date of the notice of allowance, the application 
will be regarded as abandoned. Such an abandoned 
application will not be considered as pending before 
the Patent and Trademark Office. 

[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 
1982; paras. (b)-(d) amended, paras. (e) and (f) added, 
58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; para. 

(d) revised, 60 FR 20195, Apr. 25, 1995, effective June 8, 
1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997] 

 

§ 1.317 Lapsed patents; delayed payment of balance of issue fee. 

If the issue fee paid is the amount specified in the 
notice of allowance, but a higher amount is required at 
the time the issue fee is paid, any remaining balance 
of the issue fee is to be paid within three months from 
the date of notice thereof and, if not paid, the patent 
will lapse at the termination of the three-month 
period. 

[47 FR 41280, Sept. 17, 1982, effective date Oct. 1, 
1982; paras. (a)-(d) amended, paras. (e) & (f) added, 58 FR 
44277, Aug. 20, 1993, effective Sept. 20, 1993; para. (d) 
amended, 60 FR 20195, Apr. 25, 1995, effective June 8, 
1995; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997] 

§ 1.318 [Reserved] 

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

DISCLAIMER 

§ 1.321 Statutory disclaimers, including terminal 
disclaimers. 

(a) A patentee owning the whole or any sectional 
interest in a patent may disclaim any complete 
claim or claims in a patent. In like manner any patentee 
may disclaim or dedicate to the public the entire 
term, or any terminal part of the term, of the patent 
granted. Such disclaimer is binding upon the grantee 
and its successors or assigns. A notice of the disclaimer 
is published in the Official Gazette and 
attached to the printed copies of the specification. The 
disclaimer, to be recorded in the Patent and Trademark 
Office, must: 
(1) Be signed by the patentee, or an attorney 
or agent of record; 
(2) Identify the patent and complete claim or 
claims, or term being disclaimed. A disclaimer which 
is not a disclaimer of a complete claim or claims, or 
term will be refused recordation; 
(3) State the present extent of patentee’s 
ownership interest in the patent; and 
(4) Be accompanied by the fee set forth in 
§ 1.20(d). 
(b) An applicant or assignee may disclaim or 
dedicate to the public the entire term, or any terminal 


part of the term, of a patent to be granted. Such terminal 
disclaimer is binding upon the grantee and its successors 
or assigns. The terminal disclaimer, to be 
recorded in the Patent and Trademark Office, must: 

(1) Be signed: 

(i) By the applicant, or 

(ii) If there is an assignee of record of an 
undivided part interest, by the applicant and such 
assignee, or 

(iii) If there is an assignee of record of the 
entire interest, by such assignee, or 

(iv) By an attorney or agent of record; 

(2) Specify the portion of the term of the 
patent being disclaimed; 
(3) State the present extent of applicant’s or 
assignee’s ownership interest in the patent to be 
granted; and 
(4) Be accompanied by the fee set forth in 
§1.20(d). 
(c) A terminal disclaimer, when filed to obviate 
judicially created double patenting in a patent application 
or in a reexamination proceeding except as provided 
for in paragraph (d) of this section, must: 
(1) Comply with the provisions of paragraphs 
(b)(2) through (b)(4) of this section; 
(2) Be signed in accordance with paragraph 
(b)(1) of this section if filed in a patent application or 
in accordance with paragraph (a)(1) of this section if 
filed in a reexamination proceeding; and 
(3) Include a provision that any patent 
granted on that application or any patent subject to the 
reexamination proceeding shall be enforceable only 
for and during such period that said patent is commonly 
owned with the application or patent which 
formed the basis for the judicially created double patenting. 
(d) A terminal disclaimer, when filed in a patent 
application or in a reexamination proceeding to obviate 
double patenting based upon a patent or application 
that is not commonly owned but was disqualified 
under 35 U.S.C. 103(c) as resulting from activities 
undertaken within the scope of a joint research agreement, 
must: 
(1) Comply with the provisions of paragraphs 
(b)(2) through (b)(4) of this section; 
(2) Be signed in accordance with paragraph 
(b)(1) of this section if filed in a patent application or 


 

be signed in accordance with paragraph (a)(1) of this 
section if filed in a reexamination proceeding; 

(3) Include a provision waiving the right to 
separately enforce any patent granted on that application 
or any patent subject to the reexamination proceeding 
and the patent or any patent granted on the 
application which formed the basis for the double patenting, 
and that any patent granted on that application 
or any patent subject to the reexamination proceeding 
shall be enforceable only for and during such period 
that said patent and the patent, or any patent granted 
on the application, which formed the basis for the 
double patenting are not separately enforced. 

[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; 
revised, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 1994; 
para. (c) revised, 61 FR 42790, Aug. 19, 1996, effective 
Sept. 23, 1996; para (d) added, 70 FR 1818, Jan. 11, 2005, 
effective Dec. 10, 2004; paras. (c) and (d) revised, 70 FR 
54259, Sept. 14, 2005, effective Sept. 14, 2005] 

CORRECTION OF ERRORS IN PATENT 

§ 1.322 Certificate of correction of Office mistake. 

(a)(1) The Director may issue a certificate of 
correction pursuant to 35 U.S.C. 254 to correct a mistake 
in a patent, incurred through the fault of the 
Office, which mistake is clearly disclosed in the 
records of the Office: 

(i) At the request of the patentee or the 
patentee’ s assignee; 
(ii) Acting sua sponte for mistakes that the 
Office discovers; or 


(iii) Acting on information about a mistake 
supplied by a third party. 

(2)(i) There is no obligation on the Office to act 
on or respond to a submission of information or 
request to issue a certificate of correction by a third 
party under paragraph (a)(1)(iii) of this section. 

(ii) Papers submitted by a third party under 
this section will not be made of record in the file that 
they relate to nor be retained by the Office. 
(3) If the request relates to a patent involved 
in an interference, the request must comply with the 
requirements of this section and be accompanied by a 
motion under § 41.121(a)(2) or § 41.121(a)(3) of this 
title. 


(4) The Office will not issue a certificate of 
correction under this section without first notifying 
the patentee (including any assignee of record) at the 
correspondence address of record as specified in § 
1.33(a) and affording the patentee or an assignee an 
opportunity to be heard. 
(b) If the nature of the mistake on the part of the 
Office is such that a certificate of correction is 
deemed inappropriate in form, the Director may issue 
a corrected patent in lieu thereof as a more appropriate 
form for certificate of correction, without expense 
to the patentee. 


[24 FR 10332, Dec. 22, 1959; 34 FR 5550, Mar. 22, 
1969; para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 
11, 1985; para. (a) revised, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000; paras. (a)(1) & (b) revised, 68 FR 
14332, Mar. 25, 2003, effective May 1, 2003; para. (a)(3) 
revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 
2004] 

§ 1.323 Certificate of correction of applicant’s 
mistake.

 The Office may issue a certificate of correction 
under the conditions specified in 35 U.S.C. 255 at the 
request of the patentee or the patentee’s assignee, 
upon payment of the fee set forth in § 1.20(a). If the 
request relates to a patent involved in an interference, 
the request must comply with the requirements of this 
section and be accompanied by a motion under § 
41.121(a)(2) or § 41.121(a)(3) of this title. 

[34 FR 5550, Mar. 22, 1969; 49 FR 48416, Dec. 12, 
1984, effective Feb. 11, 1985; revised, 65 FR 54604, Sept. 
8, 2000, effective Nov. 7, 2000; revised, 69 FR 49959, Aug. 
12, 2004, effective Sept. 13, 2004] 

§ 1.324 Correction of inventorship in patent, pursuant to 35 U.S.C. 256. 

(a) Whenever through error a person is named 
in an issued patent as the inventor, or through error an 
inventor is not named in an issued patent and such 
error arose without any deceptive intention on his or 
her part, the Director, pursuant to 35 U.S.C. 256, may, 
on application of all the parties and assignees, or on 
order of a court before which such matter is called in 
question, issue a certificate naming only the actual 
inventor or inventors. A petition to correct inventor-
ship of a patent involved in an interference must com-

 

ply with the requirements of this section and must be 
accompanied by a motion under § 41.121(a)(2) or § 
41.121(a)(3) of this title. 

(b) Any request to correct inventorship of a 
patent pursuant to paragraph (a) of this section must 
be accompanied by: 
(1) Where one or more persons are being 
added, a statement from each person who is being 
added as an inventor that the inventorship error 
occurred without any deceptive intention on his or her 
part; 
(2) A statement from the current named 
inventors who have not submitted a statement under 
paragraph (b)(1) of this section either agreeing to the 
change of inventorship or stating that they have no 
disagreement in regard to the requested change; 
(3) A statement from all assignees of the parties 
submitting a statement under paragraphs (b)(1) 
and (b)(2) of this section agreeing to the change of 
inventorship in the patent, which statement must comply 
with the requirements of § 3.73(b) of this chapter; 
and 
(4) The fee set forth in § 1.20(b). 


(c) For correction of inventorship in an application, 
see §§ 1.48 and 1.497. 
(d) In a contested case before the Board of 
Patent Appeals and Interferences under part 41, subpart 
D, of this title, a request for correction of a patent 
must be in the form of a motion under § 41.121(a)(2) 
or § 41.121(a)(3) of this title. 


[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; 
48 FR 2713, Jan. 20, 1983, effective Feb. 27, 1983; 49 FR 
48416, Dec. 12, 1984, 50 FR 23123, May 31, 1985, effective 
Feb. 11, 1985; revised, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997; heading and para. (b)(1) revised, 65 
FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; para. (c) 
added, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; 
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; paras. (a) and (c) revised and para. (d) added, 
69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004; para. 

(a) and para. (b) introductory text revised, 69 FR 56481, 
Sept. 21, 2004, effective Oct. 21, 2004; para. (a) revised, 70 
FR 3880, Jan. 27, 2005, effective Dec. 8, 2004] 

§ 1.325 Other mistakes not corrected. 

Mistakes other than those provided for in §§ 1.322, 
1.323, 1.324, and not affording legal grounds for reissue 
or for reexamination, will not be corrected after 
the date of the patent. 

[48 FR 2714, Jan. 20, 1983, effective date Feb. 27, 
1983] 

ARBITRATION AWARDS 

§ 1.331 [Reserved] 

[24 FR 10332, Dec. 22, 1959; 43 FR 20465, May 11, 
1978; 47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, 
July 6, 1992, effective Sept. 4, 1992] 

§ 1.332 [Reserved] 

[47 FR 41281, Sept. 17, 1982; deleted, 57 FR 29642, 
July 6, 1992, effective Sept. 4, 1992] 

§ 1.333 [Reserved] 

[Deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 
1992] 

§ 1.334 [Reserved] 

[47 FR 41281, Sept. 17, 1982, effective Oct. 1, 1982; 
para. (c), 54 FR 6893, Feb. 15, 1989, effective Apr. 17, 
1989; deleted, 57 FR 29642, July 6, 1992, effective Sept. 4, 
1992] 

§ 1.335 Filing of notice of arbitration awards. 

(a) Written notice of any award by an arbitrator 
pursuant to 35 U.S.C. 294 must be filed in the Patent 
and Trademark Office by the patentee or the patentee’s 
assignee or licensee. If the award involves more 
than one patent a separate notice must be filed for 
placement in the file of each patent. The notice must 
set forth the patent number, the names of the inventor 
and patent owner, and the names and addresses of the 
parties to the arbitration. The notice must also include 
a copy of the award. 
(b) If an award by an arbitrator pursuant to 
35 U.S.C. 294 is modified by a court, the party 
requesting the modification must file in the Patent and 
Trademark Office, a notice of the modification for 
placement in the file of each patent to which the mod-


 

ification applies. The notice must set forth the patent 
number, the names of the inventor and patent owner, 
and the names and addresses of the parties to the arbitration. 
The notice must also include a copy of the 
court’s order modifying the award. 

(c) Any award by an arbitrator pursuant to 
35 U.S.C. 294 shall be unenforceable until any 
notices required by paragraph (a) or (b) of this section 
are filed in the Patent and Trademark Office. If any 
required notice is not filed by the party designated in 
paragraph (a) or (b) of this section, any party to the 
arbitration proceeding may file such a notice. 

[48 FR 2718, Jan. 20, 1983, effective Feb. 8, 1983] 

AMENDMENT OF RULES 

§ 1.351 Amendments to rules will be published. 

All amendments to the regulations in this part will 
be published in the Official Gazette and in the Federal 
Register. 

§ 1.352 [Reserved] 

[Para. (a) amended, 58 FR 54504, Oct. 22, 1993, effective 
Jan. 3, 1994; removed and reserved, 62 FR 53131, Oct. 
10, 1997, effective Dec. 1, 1997] 

MAINTENANCE FEES 

§ 1.362 Time for payment of maintenance fees. 

(a) Maintenance fees as set forth in §§ 1.20(e) 
through (g) are required to be paid in all patents based 
on applications filed on or after December 12, 1980, 
except as noted in paragraph (b) of this section, to 
maintain a patent in force beyond 4, 8 and 12 years 
after the date of grant. 
(b) Maintenance fees are not required for any 
plant patents or for any design patents. Maintenance 
fees are not required for a reissue patent if the patent 
being reissued did not require maintenance fees. 
(c) The application filing dates for purposes of 
payment of maintenance fees are as follows: 
(1) For an application not claiming benefit of 
an earlier application, the actual United States filing 
date of the application. 


(2) For an application claiming benefit of an 
earlier foreign application under 35 U.S.C. 119, the 
United States filing date of the application. 
(3) For a continuing (continuation, division, 
continuation-in-part) application claiming the benefit 
of a prior patent application under 35 U.S.C. 120, the 
actual United States filing date of the continuing 
application. 
(4) For a reissue application, including a continuing 
reissue application claiming the benefit of a 
reissue application under 35 U.S.C. 120, the United 
States filing date of the original non-reissue application 
on which the patent reissued is based. 
(5) For an international application which 
has entered the United States as a Designated Office 
under 35 U.S.C. 371, the international filing date 
granted under Article 11(1) of the Patent Cooperation 
Treaty which is considered to be the United States filing 
date under 35 U.S.C. 363. 
(d) Maintenance fees may be paid in patents 
without surcharge during the periods extending 
respectively from: 
(1) 3 years through 3 years and 6 months 
after grant for the first maintenance fee, 
(2) 7 years through 7 years and 6 months 
after grant for the second maintenance fee, and 
(3) 11 years through 11 years and 6 months 
after grant for the third maintenance fee. 
(e) Maintenance fees may be paid with the surcharge 
set forth in § 1.20(h) during the respective 
grace periods after: 
(1) 3 years and 6 months and through the day 
of the 4th anniversary of the grant for the first maintenance 
fee. 
(2) 7 years and 6 months and through the day 
of the 8th anniversary of the grant for the second 
maintenance fee, and 
(3) 11 years and 6 months and through the 
day of the 12th anniversary of the grant for the third 
maintenance fee. 
(f) If the last day for paying a maintenance fee 
without surcharge set forth in paragraph (d) of this 
section, or the last day for paying a maintenance fee 
with surcharge set forth in paragraph (e) of this section, 
falls on a Saturday, Sunday, or a federal holiday 
within the District of Columbia, the maintenance fee 
and any necessary surcharge may be paid under paragraph 
(d) or paragraph (e) respectively on the next 


 

succeeding day which is not a Saturday, Sunday, or 
Federal holiday. 

(g) Unless the maintenance fee and any applicable 
surcharge is paid within the time periods set forth 
in paragraphs (d), (e) or (f) of this section, the patent 
will expire as of the end of the grace period set forth 
in paragraph (e) of this section. A patent which 
expires for the failure to pay the maintenance fee will 
expire at the end of the same date (anniversary date) 
the patent was granted in the 4th, 8th, or 12th year 
after grant. 
(h) The periods specified in §§1.362(d) and (e) 
with respect to a reissue application, including a continuing 
reissue application thereof, are counted from 
the date of grant of the original non-reissue application 
on which the reissued patent is based. 


[49 FR 34724, Aug. 31, 1984, added effective Nov. 1, 
1984; paras. (a) and (e), 56 FR 65142, Dec. 13, 1991, effective 
Dec. 16, 1991; paras. (c)(4) and (e) revised and para. 

(h) added, 58 FR 54504, Oct. 22, 1993, effective Jan. 3, 
1994] 

§ 1.363 Fee address for maintenance fee purposes. 

(a) All notices, receipts, refunds, and other 
communications relating to payment or refund of 
maintenance fees will be directed to the correspondence 
address used during prosecution of the application 
as indicated in § 1.33(a) unless: 
(1) A fee address for purposes of payment of 
maintenance fees is set forth when submitting the 
issue fee, or 
(2) A change in the correspondence address 
for all purposes is filed after payment of the issue fee, 
or 
(3) A fee address or a change in the “fee 
address” is filed for purposes of receiving notices, 
receipts and other correspondence relating to the payment 
of maintenance fees after the payment of the 
issue fee, in which instance, the latest such address 
will be used. 
(b) An assignment of a patent application or 
patent does not result in a change of the “correspondence 
address” or “fee address” for maintenance fee 
purposes. 
(c) A fee address must be an address associated 
with a Customer Number. 


[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 
1984; para. (c) added, 69 FR 29865, May 26, 2004, effective 
June 25, 2004] 

§ 1.366 Submission of maintenance fees. 

(a) The patentee may pay maintenance fees and 
any necessary surcharges, or any person or organization 
may pay maintenance fees and any necessary surcharges 
on behalf of a patentee. Authorization by the 
patentee need not be filed in the Patent and Trademark 
Office to pay maintenance fees and any necessary surcharges 
on behalf of the patentee. 
(b) A maintenance fee and any necessary surcharge 
submitted for a patent must be submitted in the 
amount due on the date the maintenance fee and any 
necessary surcharge are paid. A maintenance fee or 
surcharge may be paid in the manner set forth in 
§ 1.23 or by an authorization to charge a deposit 
account established pursuant to § 1.25. Payment of a 
maintenance fee and any necessary surcharge or the 
authorization to charge a deposit account must be submitted 
within the periods set forth in § 1.362(d), (e), 
or (f). Any payment or authorization of maintenance 
fees and surcharges filed at any other time will not be 
accepted and will not serve as a payment of the maintenance 
fee except insofar as a delayed payment of the 
maintenance fee is accepted by the Director in an 
expired patent pursuant to a petition filed under 
§ 1.378. Any authorization to charge a deposit 
account must authorize the immediate charging of the 
maintenance fee and any necessary surcharge to the 
deposit account. Payment of less than the required 
amount, payment in a manner other than that set forth 
§ 1.23, or in the filing of an authorization to charge a 
deposit account having insufficient funds will not 
constitute payment of a maintenance fee or surcharge 
on a patent. The procedures set forth in § 1.8 or § 1.10 
may be utilized in paying maintenance fees and any 
necessary surcharges. 
(c) In submitting maintenance fees and any 
necessary surcharges, identification of the patents for 
which maintenance fees are being paid must include 
the patent number, and the application number of the 
United States application for the patent on which the 
maintenance fee is being paid. If the payment includes 
identification of only the patent number (i.e., does not 
identify the application number of the United States 
application for the patent on which the maintenance 


 

fee is being paid), the Office may apply the payment 
to the patent identified by patent number in the payment 
or may return the payment. 

(d) Payment of maintenance fees and any surcharges 
should identify the fee being paid for each 
patent as to whether it is the 3 1/2-, 7 1/2-, or 11 1/2year 
fee, whether small entity status is being changed 
or claimed, the amount of the maintenance fee and 
any surcharge being paid, and any assigned customer 
number. If the maintenance fee and any necessary surcharge 
is being paid on a reissue patent, the payment 
must identify the reissue patent by reissue patent 
number and reissue application number as required by 
paragraph (c) of this section and should also include 
the original patent number. 
(e) Maintenance fee payments and surcharge 
payments relating thereto must be submitted separate 
from any other payments for fees or charges, whether 
submitted in the manner set forth in § 1.23 or by an 
authorization to charge a deposit account. If maintenance 
fee and surcharge payments for more than one 
patent are submitted together, they should be submitted 
on as few sheets as possible with the patent numbers 
listed in increasing patent number order. If the 
payment submitted is insufficient to cover the maintenance 
fees and surcharges for all the listed patents, the 
payment will be applied in the order the patents are 
listed, beginning at the top of the listing. 
(f) Notification of any change in status resulting 
in loss of entitlement to small entity status must be 
filed in a patent prior to paying, or at the time of paying, 
the earliest maintenance fee due after the date on 
which status as a small entity is no longer appropriate. 
See § 1.27(g). 
(g) Maintenance fees and surcharges relating 
thereto will not be refunded except in accordance with 
§§1.26 and 1.28(a). 


[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 
1984; para. (b) amended, 58 FR 54494, Oct. 22, 1993, 
effective Nov. 22, 1993; paras. (b) - (d) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c) 
revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 8, 
2000; para. (f) revised, 65 FR 78958, Dec. 18, 2000; para. 

(b) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 
2003] 

§ 1.377 Review of decision refusing to accept and 
record payment of a maintenance fee 
filed prior to expiration of patent. 

(a) Any patentee who is dissatisfied with the 
refusal of the Patent and Trademark Office to accept 
and record a maintenance fee which was filed prior to 
the expiration of the patent may petition the Director 
to accept and record the maintenance fee. 
(b) Any petition under this section must be filed 
within two months of the action complained of, or 
within such other time as may be set in the action 
complained of, and must be accompanied by the fee 
set forth in § 1.17(g). The petition may include a 
request that the petition fee be refunded if the refusal 
to accept and record the maintenance fee is determined 
to result from an error by the Patent and Trademark 
Office. 
(c) Any petition filed under this section must 
comply with the requirements of § 1.181(b) and must 
be signed by an attorney or agent registered to practice 
before the Patent and Trademark Office, or by the 
patentee, the assignee, or other party in interest. 


[49 FR 34725, Aug. 31, 1984, added effective Nov. 1, 
1984; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; para. (a) revised, 68 FR 14332, Mar. 25, 
2003, effective May 1, 2003; para. (b) revised, 69 FR 
56481, Sept. 21, 2004, effective Nov. 22, 2004] 

§ 1.378 Acceptance of delayed payment of maintenance fee in expired patent to reinstate 
patent. 

(a) The Director may accept the payment of any 
maintenance fee due on a patent after expiration of the 
patent if, upon petition, the delay in payment of the 
maintenance fee is shown to the satisfaction of the 
Director to have been unavoidable (paragraph (b) of 
this section) or unintentional (paragraph (c) of this 
section) and if the surcharge required by § 1.20(i) is 
paid as a condition of accepting payment of the maintenance 
fee. If the Director accepts payment of the 
maintenance fee upon petition, the patent shall be 
considered as not having expired, but will be subject 
to the conditions set forth in 35 U.S.C. 41(c)(2). 
(b) Any petition to accept an unavoidably 
delayed payment of a maintenance fee filed under 
paragraph (a) of this section must include: 
(1) The required maintenance fee set forth in 
§ 1.20 (e) through (g); 


 

(2) The surcharge set forth in § 1.20(i)(1); 
and 
(3) A showing that the delay was unavoidable 
since reasonable care was taken to ensure that the 
maintenance fee would be paid timely and that the 
petition was filed promptly after the patentee was 
notified of, or otherwise became aware of, the expiration 
of the patent. The showing must enumerate the 
steps taken to ensure timely payment of the maintenance 
fee, the date and the manner in which patentee 
became aware of the expiration of the patent, and the 
steps taken to file the petition promptly. 
(c) Any petition to accept an unintentionally 
delayed payment of a maintenance fee filed under 
paragraph (a) of this section must be filed within 
twenty-four months after the six-month grace period 
provided in § 1.362(e) and must include: 
(1) The required maintenance fee set forth in 
§ 1.20 (e) through (g); 
(2) The surcharge set forth in § 1.20(i)(2); 
and 
(3) A statement that the delay in payment of 
the maintenance fee was unintentional. 
(d) Any petition under this section must be 
signed by an attorney or agent registered to practice 
before the Patent and Trademark Office, or by the patentee, 
the assignee, or other party in interest. 
(e) Reconsideration of a decision refusing to 
accept a maintenance fee upon petition filed pursuant 
to paragraph (a) of this section may be obtained by filing 
a petition for reconsideration within two months 
of, or such other time as set in the decision refusing to 
accept the delayed payment of the maintenance fee. 
Any such petition for reconsideration must be accompanied 
by the petition fee set forth in § 1.17(f). After 
the decision on the petition for reconsideration, no 
further reconsideration or review of the matter will be 
undertaken by the Director. If the delayed payment of 
the maintenance fee is not accepted, the maintenance 
fee and the surcharge set forth in § 1.20(i) will be 
refunded following the decision on the petition for 
reconsideration, or after the expiration of the time for 
filing such a petition for reconsideration, if none is 
filed. Any petition fee under this section will not be 
refunded unless the refusal to accept and record the 
maintenance fee is determined to result from an error 
by the Patent and Trademark Office. 


[49 FR 34726, Aug. 31, 1984, added effective Nov. 1, 
1984; para. (a), 50 FR 9383, Mar.7, 1985, effective May 8, 
1985; paras. (b) and (c), 53 FR 47810, Nov. 28, 1988, 
effective Jan. 1, 1989; paras. (a) - (c) and (e), 56 FR 65142, 
Dec. 13, 1991, effective Dec. 16, 1991; paras. (a) - (c) and 
(e), 58 FR 44277, Aug. 20, 1993, effective Sept. 20, 1993; 
para. (d) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; paras. (a) & (e) revised, 68 FR 14332, Mar. 
25, 2003, effective May 1, 2003; para. (e) revised, 69 FR 
56536, Sept. 21, 2004, effective Nov. 22, 2004] 

Subpart C — International Processing 
Provisions 

GENERAL INFORMATION 

§ 1.401 Definitions of terms under the Patent 
Cooperation Treaty. 

(a) The abbreviation PCT and the term Treaty 
mean the Patent Cooperation Treaty. 
(b) International Bureau means the World 
Intellectual Property Organization located in Geneva, 
Switzerland. 
(c) Administrative Instructions means that body 
of instructions for operating under the Patent Cooperation 
Treaty referred to in PCT Rule 89. 
(d) Request, when capitalized, means that element 
of the international application described in PCT 
Rules 3 and 4. 
(e) International application, as used in this 
subchapter is defined in § 1.9(b). 
(f) Priority date for the purpose of computing 
time limits under the Patent Cooperation Treaty is 
defined in PCT Art. 2(xi). Note also § 1.465. 
(g) Demand, when capitalized, means that document 
filed with the International Preliminary Examining 
Authority which requests an international 
preliminary examination. 
(h) Annexes means amendments made to the 
claims, description or the drawings before the International 
Preliminary Examining Authority. 
(i) Other terms and expressions in this subpart 
C not defined in this section are to be taken in the 
sense indicated in PCT Art. 2 and 35 U.S.C. 351. 


[43 FR 20466, May 11, 1978; 52 FR 20047, May 28, 
1987] 

 

§ 1.412 The United States Receiving Office. 

(a) The United States Patent and Trademark 
Office is a Receiving Office only for applicants who 
are residents or nationals of the United States of 
America. 
(b) The Patent and Trademark Office, when acting 
as a Receiving Office, will be identified by the full 
title “United States Receiving Office” or by the abbreviation 
“RO/US.” 
(c) The major functions of the Receiving Office 
include: 
(1) According of international filing dates to 
international applications meeting the requirements of 
PCT Art. 11(1) and PCT Rule 20; 
(2) Assuring that international applications 
meet the standards for format and content of PCT Art. 
14(1), PCT Rule 9, 26, 29.1, 37, 38, 91, and portions 
of PCT Rules 3 through 11; 
(3) Collecting and, when required, transmitting 
fees due for processing international applications 
(PCT Rule 14, 15, 16); 
(4) Transmitting the record and search copies 
to the International Bureau and International Searching 
Authority, respectively (PCT Rules 22 and 23); 
and 
(5) Determining compliance with applicable 
requirements of part 5 of this chapter. 
(6) Reviewing and, unless prescriptions concerning 
national security prevent the application from 
being so transmitted (PCT Rule 19.4), transmitting 
the international application to the International 
Bureau for processing in its capacity as a Receiving 
Office: 
(i) Where the United States Receiving 
Office is not the competent Receiving Office under 
PCT Rule 19.1 or 19.2 and § 1.421(a); or 
(ii) Where the international application is 
not in English but is in a language accepted under 
PCT Rule 12.1(a) by the International Bureau as a 
Receiving Office; or 


(iii) Where there is agreement and authorization 
in accordance with PCT Rule 19.4(a)(iii). 

[Para. (c)(6) added, 60 FR 21438, May 2, 1995, effective 
June 1, 1995; para. (c)(6) revised, 63 FR 29614, June 
1, 1998, effective July 1, 1998 (adopted as final, 63 FR 
66040, Dec. 1, 1998)] 

§ 1.413 The United States International Searching Authority. 

(a) Pursuant to appointment by the Assembly, 
the United States Patent and Trademark Office will 
act as an International Searching Authority for international 
applications filed in the United States 
Receiving Office and in other Receiving Offices as 
may be agreed upon by the Director, in accordance 
with the agreement between the Patent and Trademark 
Office and the International Bureau (PCT Art. 
16(3)(b)). 
(b) The Patent and Trademark Office, when acting 
as an International Searching Authority, will be 
identified by the full title “United States International 
Searching Authority” or by the abbreviation “ISA/ 
US.” 
(c) The major functions of the International 
Searching Authority include: 
(1) Approving or establishing the title and 
abstract; 
(2) Considering the matter of unity of invention; 
(3) Conducting international and international-
type searches and preparing international and 
international-type search reports (PCT Art. 15, 17 and 
18, and PCT Rules 25, 33 to 45 and 47), and issuing 
declarations that no international search report will be 
established (PCT Article 17(2)(a)); 
(4) Preparing written opinions of the International 
Searching Authority in accordance with PCT 
Rule 43bis (when necessary); and 
(5) Transmitting the international search 
report and the written opinion of the International 
Searching Authority to the applicant and the International 
Bureau. 


[Para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; paras. (a) & (c) revised, 68 FR 58991, 
Oct. 20, 2003, effective Jan. 1, 2004] 

§ 1.414 The United States Patent and Trademark 
Office as a Designated Office or Elected 
Office. 

(a) The United States Patent and Trademark 
Office will act as a Designated Office or Elected 
Office for international applications in which the 
United States of America has been designated or 
elected as a State in which patent protection is 
desired. 

 

(b) The United States Patent and Trademark 
Office, when acting as a Designated Office or Elected 
Office during international processing will be identified 
by the full title “United States Designated Office” 
or by the abbreviation “DO/US” or by the full title 
“United States Elected Office” or by the abbreviation 
“EO/US.” 
(c) The major functions of the United States 
Designated Office or Elected Office in respect to 
international applications in which the United States 
of America has been designated or elected, include: 
(1) Receiving various notifications throughout 
the international stage and 
(2) Accepting for national stage examination 
international applications which satisfy the requirements 
of 35 U.S.C. 371. 


[52 FR 20047, May 28, 1987, effective July 1, 1987] 

§ 1.415 The International Bureau. 

(a) The International Bureau is the World Intellectual 
Property Organization located at Geneva, 
Switzerland. It is the international intergovernmental 
organization which acts as the coordinating body 
under the Treaty and the Regulations (PCT Art. 2 

(xix) and 35 U.S.C. 351(h)). 

(b) The major functions of the International 
Bureau include: 
(1) Publishing of international applications 
and the International Gazette; 
(2) Transmitting copies of international 
applications to Designated Offices; 


(3) Storing and maintaining record copies; 
and 
(4) Transmitting information to authorities 

pertinent to the processing of specific international 
applications. 

§ 1.416 The United States International Preliminary Examining Authority. 

(a) Pursuant to appointment by the Assembly, 
the United States Patent and Trademark Office will 
act as an International Preliminary Examining 
Authority for international applications filed in the 
United States Receiving Office and in other Receiving 
Offices as may be agreed upon by the Director, in 
accordance with agreement between the Patent and 
Trademark Office and the International Bureau. 

(b) The United States Patent and Trademark 
Office, when acting as an International Preliminary 
Examining Authority, will be identified by the full 
title “United States International Preliminary Examining 
Authority” or by the abbreviation “IPEA/US.” 
(c) The major functions of the International 
Preliminary Examining Authority include: 
(1) Receiving and checking for defects in the 
Demand; 
(2) Forwarding Demands in accordance with 
PCT Rule 59.3; 
(3) Collecting the handling fee for the International 
Bureau and the preliminary examination fee 
for the United States International Preliminary Examining 
Authority; 
(4) Informing applicant of receipt of the 
Demand; 
(5) Considering the matter of unity of invention; 
(6) Providing an international preliminary 
examination report which is a non-binding opinion on 
the questions of whether the claimed invention 
appears: to be novel, to involve an inventive step (to 
be nonobvious), and to be industrially applicable; and 
(7) Transmitting the international preliminary 
examination report to applicant and the International 
Bureau. 


[Added 52 FR 20047, May 28, 1987; para. (c) revised, 
63 FR 29614, June 1, 1998, effective July 1998 (adopted as 
final, 63 FR 66040, Dec. 1, 1998); para. (a) revised, 68 FR 
14332, Mar. 25, 2003, effective May 1, 2003] 

§ 1.417 Submission of translation of international 
publication.

 The submission of an English language translation 
of the publication of an international application pursuant 
to 35 U.S.C. 154(d)(4) must clearly identify the 
international application to which it pertains (§ 1.5(a)) 
and be clearly identified as a submission pursuant to 
35 U.S.C. 154(d)(4). Otherwise, the submission will 
be treated as a filing under 35 U.S.C. 111(a). Such 
submissions should be marked “Mail Stop PCT.” 

[Added 65 FR 57024, Sept. 20, 2000, effective Nov. 
29, 2000; revised 67 FR 520, Jan. 4, 2002, effective Apr. 1, 
2002; revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003; revised, 68 FR 70996, Dec. 22, 2003, effective 
Jan. 21, 2004] 

 

§ 1.419 Display of currently valid control number under the Paperwork Reduction Act. 

(a) Pursuant to the Paperwork Reduction Act of 
1995 (44 U.S.C. 3501 et seq.), the collection of information 
in this subpart has been reviewed and 
approved by the Office of Management and Budget 
under control number 0651-0021. 
(b) 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 Office 
of Management and Budget control number. This section 
constitutes the display required by 44 U.S.C. 
3512(a) and 5 CFR 1320.5(b)(2)(i) for the collection 
of information under Office of Management and 
Budget control number 0651-0021 (see 5 CFR 
1320.5(b)(2)(ii)(D)). 


[Added, 63 FR 29614, June 1, 1998, effective July 1, 
1998 (adopted as final, 63 FR 66040, Dec. 1, 1998)] 

WHO MAY FILE AN INTERNATIONAL 
APPLICATION 

§ 1.421 Applicant for international application. 

(a) Only residents or nationals of the United 
States of America may file international applications 
in the United States Receiving Office. If an international 
application does not include an applicant who is 
indicated as being a resident or national of the United 
States of America, and at least one applicant: 
(1) Has indicated a residence or nationality in 
a PCT Contracting State, or 
(2) Has no residence or nationality indicated, 
applicant will be so notified and, if the international 
application includes a fee amount equivalent to that 
required by § 1.445(a)(4), the international application 
will be forwarded for processing to the International 
Bureau acting as a Receiving Office (see also § 
1.412(c)(6)). 
(b) Although the United States Receiving 
Office will accept international applications filed by 
any resident or national of the United States of America 
for international processing, for the purposes of 
the designation of the United States, an international 
application must be filed, and will be accepted by the 


Patent and Trademark Office for the national stage 
only if filed, by the inventor or as provided in §§ 

1.422 or 1.423. Joint inventors must jointly apply for 
an international application. 

(c) For the purposes of designations other than 
the United States, international applications may be 
filed by the assignee or owner. 
(d) A registered attorney or agent of the applicant 
may sign the international application Request 
and file the international application for the applicant. 
A separate power of attorney from each applicant may 
be required. 
(e) Any indication of different applicants for 
the purpose of different Designated Offices must be 
shown on the Request portion of the international 
application. 
(f) Requests for changes in the indications concerning 
the applicant, agent, or common representative 
of an international application shall be made in 
accordance with PCT Rule 92bis and may be required 
to be signed by all applicants. 
(g) Requests for withdrawals of the international 
application, designations, priority claims, the 
Demand, or elections shall be made in accordance 
with PCT Rule 90bis and must be signed by all applicants. 
A separate power of attorney from the applicants 
will be required for the purposes of any request 
for a withdrawal in accordance with PCT Rule 90bis 
which is not signed by all applicants. The submission 
of a separate power of attorney may be excused upon 
the request of another applicant where one or more 
inventors cannot be found or reached after diligent 
effort. Such a request must be accompanied by a statement 
explaining to the satisfaction of the Director the 
lack of the signature concerned: 


[Paras. (f) and (g), 53 FR 47810, Nov. 28, 1988, effective 
Jan. 1, 1989; para. (a) amended, 60 FR 21438, May 2, 
1995, effective June 1, 1995; paras. (b)-(g) revised, 68 FR 
58991, Oct. 20, 2003, effective Jan. 1, 2004; para. (a)(2) 
revised, 68 FR 67805, Dec. 4, 2003, effective Jan. 1, 2004] 

§ 1.422 When the inventor is dead. 

In case of the death of the inventor, the legal representative 
(executor, administrator, etc.) of the 
deceased inventor may file an international application 
which designates the United States of America. 

 

§ 1.423 When the inventor is insane or legally 
incapacitated. 

In case an inventor is insane or otherwise legally 
incapacitated, the legal representative (guardian, conservator, 
etc.) of such inventor may file an international 
application which designates the United States 
of America. 

§ 1.424 [Reserved] 

[Removed and reserved, 68 FR 58991, Oct. 20, 2003, 
effective Jan. 1, 2004] 

§ 1.425 [Reserved] 

[Removed and reserved, 68 FR 58991, Oct. 20, 2003, 
effective Jan. 1, 2004] 

THE INTERNATIONAL APPLICATION 

§ 1.431 International application requirements. 

(a) An international application shall contain, 
as specified in the Treaty and the Regulations, a 
Request, a description, one or more claims, an 
abstract, and one or more drawings (where required). 
(PCT Art. 3(2) and Section 207 of the Administrative 
Instructions.) 
(b) An international filing date will be accorded 
by the United States Receiving Office, at the time of 
receipt of the international application, provided that: 
(1) At least one applicant is a United States 
resident or national and the papers filed at the time of 
receipt of the international application so indicate 
(35 U.S.C. 361(a), PCT Art. 11(1)(i)). 
(2) The international application is in the 
English language (35 U.S.C. 361(c), PCT Art. 
11(1)(ii)). 
(3) The international application contains at 
least the following elements (PCT Art. 11(1)(iii)): 
(i) An indication that it is intended as an 
international application (PCT Rule 4.2); 
(ii) The designation of at least one Contracting 
State of the International Patent Cooperation 
Union (§ 1.432); 


(iii) The name of the applicant, as prescribed 
(note §§ 1.421-1.423); 

(iv) A part which on the face of it appears 
to be a description; and 
(v) A part which on the face of it appears 
to be a claim. 
(c) Payment of the international filing fee (PCT 
Rule 15.2) and the transmittal and search fees (§ 
1.445) may be made in full at the time the international 
application papers required by paragraph (b) of 
this section are deposited or within one month thereafter. 
The international filing, transmittal, and search 
fee payable is the international filing, transmittal, and 
search fee in effect on the receipt date of the international 
application. 
(1) If the international filing, transmittal and 
search fees are not paid within one month from the 
date of receipt of the international application and 
prior to the sending of a notice of deficiency which 
imposes a late payment fee, applicant will be notified 
and given one month within which to pay the deficient 
fees plus the late payment fee. Subject to paragraph 
(c)(2) of this section, the late payment fee will 
be equal to the greater of: 
(i) Fifty percent of the amount of the deficient 
fees; or 
(ii) An amount equal to the transmittal fee. 


(2) The late payment fee shall not exceed an 
amount equal to fifty percent of the international filing 
fee not taking into account any fee for each sheet 
of the international application in excess of thirty 
sheets (PCT Rule 16bis). 
(3) The one-month time limit set pursuant to 
paragraph (c) of this section to pay deficient fees may 
not be extended. 
(d) If the payment needed to cover the transmittal 
fee, the international filing fee, the search fee, 
and the late payment fee pursuant to paragraph (c) of 
this section is not timely made in accordance with 
PCT Rule 16bis.1(e), the Receiving Office will 
declare the international application withdrawn under 
PCT Article 14(3)(a). 


[43 FR 20486, May 11, 1978; paras. (b), (c), (d) and 
(e), 50 FR 9383, Mar. 7, 1985, effective May 8, 1985; para. 

(d) amended, 52 FR 20047, May 28, 1987; paras. (b)(1), 
(b)(3)(ii), (c) and (d) amended, para. (e) deleted, 58 FR 
4335, Jan. 14, 1993, effective May 1, 1993; paras. (c) and 
(d) revised, 63 FR 29614, June 1, 1998, effective July 1, 


 

1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); paras. 
(b)(3), (c) & (d) revised, 68 FR 58991, Oct. 20, 2003, effective 
Jan. 1, 2004; para. (c)(2) corrected, 68 FR 67805, Dec. 
4, 2003] 

§ 1.432 Designation of States by filing an international application. 

The filing of an international application request 
shall constitute: 

(a) The designation of all Contracting States 
that are bound by the Treaty on the international filing 
date; 
(b) An indication that the international application 
is, in respect of each designated State to which 
PCT Article 43 or 44 applies, for the grant of every 
kind of protection which is available by way of the 
designation of that State; and. 
(c) An indication that the international application 
is, in respect of each designated State to which 
PCT Article 45(1) applies, for the grant of a regional 
patent and also, unless PCT Article 45(2) applies, a 
national patent. 


[43 FR 20486, May 11, 1978; para. (b) amended 52 FR 
20047, May 28, 1987; paras. (a), (b) amended and para. (c) 
added, 58 FR 4335, Jan. 14, 1993, effective May 1, 1993; 
paras. (b) and (c) revised, para. (d) added, 63 FR 29614, 
June 1, 1998, effective July 1, 1998 (adopted as final, 
63 FR 66040, Dec. 1, 1998); revised, 68 FR 58991, Oct. 20, 
2003, effective Jan. 1, 2004] 

§ 1.433 Physical requirements of international 
application. 

(a) The international application and each of 
the documents that may be referred to in the check list 
of the Request (PCT Rule 3.3(a)(ii)) shall be filed in 
one copy only. 
(b) All sheets of the international application 
must be on A4 size paper (21.0 x 29.7 cm.). 
(c) Other physical requirements for international 
applications are set forth in PCT Rule 11 and 
sections 201-207 of the Administrative Instructions. 


§ 1.434 The request. 

(a) The request shall be made on a standardized 
form (PCT Rules 3 and 4). Copies of printed Request 
forms are available from the United States Patent and 
Trademark Office. Letters requesting printed forms 
should be marked “Mail Stop PCT.” 

(b) The Check List portion of the Request form 
should indicate each document accompanying the 
international application on filing. 
(c) All information, for example, addresses, 
names of States and dates, shall be indicated in the 
Request as required by PCT Rule 4 and Administrative 
Instructions 110 and 201. 
(d) For the purposes of the designation of the 
United States of America, an international application 
shall include: 
(1) The name of the inventor; and 


(2) A reference to any prior-filed national 
application or international application designating 
the United States of America, if the benefit of the filing 
date for the prior-filed application is to be 
claimed. 
(e) An international application may also 
include in the Request a declaration of the inventors 
as provided for in PCT Rule 4.17(iv). 


[Para. (a) amended, 58 FR 4335, Jan. 14, 1993, effective 
May 1, 1993; para. (d) revised, 66 FR 16004, Mar. 22, 
2001, effective Mar. 1, 2001; para. (d)(2) revised, 66 FR 
67087, Dec. 28, 2001, effective Dec. 28, 2001; paras. (a) & 
(d)(2) revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003; para. (d) revised, para (e) added, 68 FR 58991, 
Oct. 20, 2003, effective Jan. 1, 2004] 

§ 1.435 The description. 

(a) The application must meet the requirements 
as to the content and form of the description set forth 
in PCT Rules 5, 9, 10, and 11 and sections 204 and 
208 of the Administrative Instructions. 
(b) In international applications designating the 
United States the description must contain upon filing 
an indication of the best mode contemplated by the 
inventor for carrying out the claimed invention. 


[Para. (a) revised, 63 FR 29614, June 1, 1998, effective 
July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998)] 

§ 1.436 The claims. 

The requirements as to the content and format of 
claims are set forth in PCT Art. 6 and PCT Rules 6, 9, 
10 and 11 and shall be adhered to. The number of the 
claims shall be reasonable, considering the nature of 
the invention claimed. 

 

§ 1.437 The drawings. 

(a) Subject to paragraph (b) of this section, 
when drawings are necessary for the understanding of 
the invention, or are mentioned in the description, 
they must be part of an international application as 
originally filed in the United States Receiving Office 
in order to maintain the international filing date during 
the national stage (PCT Art. 7). 
(b) Drawings missing from the application 
upon filing will be accepted if such drawings are 
received within 30 days of the date of first receipt of 
the incomplete papers. If the missing drawings are 
received within the 30-day period, the international 
filing date shall be the date on which such drawings 
are received. If such drawings are not timely received, 
all references to drawings in the international application 
shall be considered non-existent (PCT Art. 14(2), 
Administrative Instruction 310). 
(c) The physical requirements for drawings are 
set forth in PCT Rule 11 and shall be adhered to. 


§ 1.438 The abstract. 

(a) Requirements as to the content and form of 
the abstract are set forth in PCT Rule 8, and shall be 
adhered to. 
(b) Lack of an abstract upon filing of an international 
application will not affect the granting of a 
filing date. However, failure to furnish an abstract 
within one month from the date of the notification by 
the Receiving Office will result in the international 
application being declared withdrawn. 


FEES 

§ 1.445 International application filing, processing and search fees. 

(a) The following fees and charges for international 
applications are established by the Director 
under the authority of 35 U.S.C. 376: 
(1) A transmittal fee (see 35 U.S.C. 361(d) 
and PCT Rule 14) . . . . . . . . . . . . . . . . . . . . . $300.00 
(2) A search fee (see 35 U.S.C. 361(d) and 
PCT Rule 16): 
(i) If a corresponding prior United States 
national application under 35 U.S.C. 111(a) has been 
filed on or after December 8, 2004, the basic filing fee 
under § 1.16(a), search fee under § 1.16(k), and examination 
fee under § 1.16(o) have been paid therein, 


and the corresponding prior United States national application 
is identified by application number, if 
known, or if the application number is not known by 
the filing date, title, and name of applicant (and preferably 
the application docket number), in the international 
application or accompanying papers at the time 
of filing the international application . . . . . . $300.00. 

(ii) If a corresponding prior United States 
national application under 35 U.S.C. 111(a) has been 
filed before December 8, 2004, the basic filing fee 
under § 1.16 has been paid therein, and the corresponding 
prior United States national application is 
identified by application number, if known, or if the 
application number is not known by the filing date, 
title, and name of applicant (and preferably the application 
docket number), in the international application 
or accompanying papers at the time of filing the international 
application . . . . . . . . . . . . . . . . . . . . $300.00 

(iii) For all situations not provided for 
in paragraphs (a)(2)(i) or (a)(2)(ii) of this section 
. . . . . . . . . . . . . . . . . . . . .$1,000.00 

(3) A supplemental search fee when required, 
per additional invention . . . . . . . . . . . . . . .$1,000.00 
(4) A fee equivalent to the transmittal fee in 
paragraph (a)(1) of this section for transmittal of an 
international application to the International Bureau 
for processing in its capacity as a Receiving Office 
(PCT Rule 19.4). 
(b) The international filing fee shall be as prescribed 
in PCT Rule 15. 


[43 FR 20466, May 11, 1978; para. (a), 47 FR 41282, 
Sept. 17, 1982, effective Oct. 1, 1982; para. (a)(4) - (6), 
50 FR 9384, Mar. 7, 1985, effective May 8, 1985; 50 FR 
31826, Aug. 6, 1985, effective Oct. 5, 1985; para. (a) 
amended 52 FR 20047, May 28, 1987; paras. (a)(2) and (3), 
54 FR 6893, Feb. 15, 1989, 54 FR 9432, March 7, 1989, 
effective Apr. 17, 1989; para. (a), 56 FR 65142, Dec. 13, 
1991, effective Dec. 27, 1991; para. (a), 57 FR 38190, Aug. 
21, 1992, effective Oct. 1, 1992; para. (a)(4) added, 58 FR 
4335, Jan. 14, 1993, effective May 1, 1993; paras. (a)(1)(
3), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; 
para. (a)(5) added, 60 FR 21438, May 2, 1995, effective 
June 1, 1995; para. (a) amended, 60 FR 41018, Aug. 11, 
1995, effective Oct. 1, 1995; para. (a) amended, 61 FR 
39585, July 30, 1996, effective Oct. 1, 1996; para. (a) 
amended, 62 FR 40450, July 29, 1997, effective Oct. 1, 
1997; para. (a) revised, 63 FR 29614, June 1, 1998, effective 
July 1,1998 (adopted as final, 63 FR 66040, Dec. 1, 
1998); para. (a) revised, 68 FR 14332, Mar. 25, 2003, effec-

 

tive May 1, 2003; revised, 68 FR 58991, Oct. 20, 2003, 
effective Jan. 1, 2004; para. (a)(2) revised, 70 FR 3880, 
Jan. 27, 2005, effective Dec. 8, 2004] 

§ 1.446 Refund of international application filing 
and processing fees. 

(a) Money paid for international application 
fees, where paid by actual mistake or in excess, such 
as a payment not required by law or treaty and its regulations, 
may be refunded. A mere change of purpose 
after the payment of a fee will not entitle a party to a 
refund of such fee. The Office will not refund 
amounts of twenty-five dollars or less unless a refund 
is specifically requested and will not notify the payor 
of such amounts. If the payor or party requesting a 
refund does not provide the banking information necessary 
for making refunds by electronic funds transfer, 
the Office may use the banking information 
provided on the payment instrument to make any 
refund by electronic funds transfer. 
(b) Any request for refund under paragraph (a) 
of this section must be filed within two years from the 
date the fee was paid. If the Office charges a deposit 
account by an amount other than an amount specifically 
indicated in an authorization under § 1.25(b), 
any request for refund based upon such charge must 
be filed within two years from the date of the deposit 
account statement indicating such charge and include 
a copy of that deposit account statement. The time 
periods set forth in this paragraph are not extendable. 
(c) Refund of the supplemental search fees will 
be made if such refund is determined to be warranted 
by the Director or the Director’s designee acting 
under PCT Rule 40.2(c). 
(d) The international and search fees will be 
refunded if no international filing date is accorded or 
if the application is withdrawn before transmittal of 
the record copy to the International Bureau (PCT 
Rules 15.6 and 16.2). The search fee will be refunded 
if the application is withdrawn before transmittal of 
the search copy to the International Searching Authority. 
The transmittal fee will not be refunded. 
(e) The handling fee (§ 1.482(b)) will be 
refunded (PCT Rule 57.6) only if: 
(1) The Demand is withdrawn before the 
Demand has been sent by the International Preliminary 
Examining Authority to the International 
Bureau, or 


(2) The Demand is considered not to have 
been submitted (PCT Rule 54.4(a)). 

[43 FR 20466, May 11, 1978; para. (b), 47 FR 41282, 
Sept. 17, 1982, effective Oct. 1, 1982; para.(b), 50 FR 
9384, Mar. 7, 1985, effective May 8, 1985; 50 FR 31826, 
Aug. 6, 1985, effective Oct. 5, 1985; para. (d) amended and 
para. (e) added, 58 FR 4335, Jan. 14, 1993, effective May 
1, 1993; para (a) revised and para. (b) added, 65 FR 54604, 
Sept. 8, 2000, effective Nov. 7, 2000; para. (c) revised, 68 
FR 14332, Mar. 25, 2003, effective May 1, 2003] 

PRIORITY 

§ 1.451 The priority claim and priority document 
in an international application. 

(a) The claim for priority must, subject to paragraph 
(d) of this section, be made on the Request 
(PCT Rule 4.10) in a manner complying with sections 
110 and 115 of the Administrative Instructions. 
(b) Whenever the priority of an earlier United 
States national application or international application 
filed with the United States Receiving Office is 
claimed in an international application, the applicant 
may request in a letter of transmittal accompanying 
the international application upon filing with the 
United States Receiving Office or in a separate letter 
filed in the United States Receiving Office not later 
than 16 months after the priority date, that the United 
States Patent and Trademark Office prepare a certified 
copy of the prior application for transmittal to the 
International Bureau (PCT Article 8 and PCT Rule 
17). The fee for preparing a certified copy is set forth 
in § 1.19(b)(1). 
(c) If a certified copy of the priority document 
is not submitted together with the international application 
on filing, or, if the priority application was filed 
in the United States and a request and appropriate 
payment for preparation of such a certified copy do 
not accompany the international application on filing 
or are not filed within 16 months of the priority date, 
the certified copy of the priority document must be 
furnished by the applicant to the International Bureau 
or to the United States Receiving Office within the 
time limit specified in PCT Rule 17.1(a). 
(d) The applicant may correct or add a priority 
claim in accordance with PCT Rule 26bis.1. 


 

[43 FR 20466, May 11, 1978; 47 FR 40140, Sept. 10, 
1982, effective Oct. 1, 1982; para. (b), 47 FR 41282, Sept. 
17, 1982, effective Oct. 1, 1982; paras. (b) & (c), 50 FR 
9384, Mar. 7, 1985, effective May 8, 1985; para. (b), 54 FR 
6893, Feb. 15, 1989, effective Apr. 17, 1989; para. (a) 
amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 
1993; para. (a) revised, para. (d) added, 63 FR 29614, June 
1, 1998, effective July 1, 1998 (adopted as final, 63 FR 
66040, Dec. 1, 1998); para. (b) revised, 66 FR 16004, Mar. 
22, 2001, effective Mar. 1, 2001] 

REPRESENTATION 

§ 1.455 Representation in international applications. 

(a) Applicants of international applications may 
be represented by attorneys or agents registered to 
practice before the United States Patent and Trademark 
Office or by an applicant appointed as a common 
representative (PCT Art. 49, Rules 4.8 and 90 
and § 11.9). If applicants have not appointed an attorney 
or agent or one of the applicants to represent 
them, and there is more than one applicant, the applicant 
first named in the request and who is entitled to 
file in the U.S. Receiving Office shall be considered 
to be the common representative of all the applicants. 
An attorney or agent having the right to practice 
before a national office with which an international 
application is filed and for which the United States is 
an International Searching Authority or International 
Preliminary Examining Authority may be appointed 
to represent the applicants in the international application 
before that authority. An attorney or agent may 
appoint an associate attorney or agent who shall also 
then be of record (PCT Rule 90.1(d)). The appointment 
of an attorney or agent, or of a common representative, 
revokes any earlier appointment unless 
otherwise indicated (PCT Rule 90.6(b) and (c)). 
(b) Appointment of an agent, attorney or common 
representative (PCT Rule 4.8) must be effected 
either in the Request form, signed by applicant, in the 
Demand form, signed by applicant, or in a separate 
power of attorney submitted either to the United 
States Receiving Office or to the International Bureau. 
(c) Powers of attorney and revocations thereof 
should be submitted to the United States Receiving 
Office until the issuance of the international search 
report. 


(d) The addressee for correspondence will be as 
indicated in section 108 of the Administrative Instructions. 


[43 FR 20466, May 11, 1978; 50 FR 5171, Feb. 6, 
1985, effective Mar. 8, 1985; para. (a) amended, 58 FR 
4335, Jan. 14, 1993, effective May 1, 1993; para. (b) 
revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004; 
para. (a) revised, 69 FR 35427, June 24, 2004, effective 
July 26, 2004] 

TRANSMITTAL OF RECORD COPY 

§ 1.461 Procedures for transmittal of record copy 
to the International Bureau. 

(a) Transmittal of the record copy of the international 
application to the International Bureau shall 
be made by the United States Receiving Office or as 
provided by PCT Rule 19.4. 
(b) [Reserved] 


(c) No copy of an international application may 
be transmitted to the International Bureau, a foreign 
Designated Office, or other foreign authority by the 
United States Receiving Office or the applicant, 
unless the applicable requirements of part 5 of this 
chapter have been satisfied. 


[43 FR 20466, May 11, 1978; paras. (a) and (b), 50 FR 
9384, Mar. 7, 1985, effective May 8, 1985; para. (a) 
revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 
(adopted as final, 63 FR 66040, Dec. 1, 1998)] 

TIMING 

§ 1.465 Timing of application processing based 
on the priority date. 

(a) For the purpose of computing time limits 
under the Treaty, the priority date shall be defined as 
in PCT Art. 2(xi). 
(b) When a claimed priority date is corrected or 
added under PCT Rule 26bis.1(a), or withdrawn 
under PCT Rule 90bis.3, or considered not to have 
been made under PCT Rule 26bis.2, the priority date 
for the purposes of computing any non-expired time 
limits will be the date of the earliest valid remaining 
priority claim of the international application, or if 
none, the international filing date. 


 

(c) When corrections under PCT Art. 11(2), 
Art. 14(2) or PCT Rule 20.2(a) (i) or (iii) are timely 
submitted, and the date of receipt of such corrections 
falls later than one year from the claimed priority date 
or dates, the Receiving Office shall proceed under 
PCT Rule 26bis.2. 

[Paras. (b) and (c) revised, 63 FR 29614, June 1, 1998, 
effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 
1, 1998)] 

§ 1.468 Delays in meeting time limits. 

Delays in meeting time limits during international 
processing of international applications may only be 
excused as provided in PCT Rule 82. For delays in 
meeting time limits in a national application, see 
§ 1.137. 

AMENDMENTS 

§ 1.471 Corrections and amendments during 
international processing. 

(a) Except as otherwise provided in this paragraph, 
all corrections submitted to the United States 
Receiving Office or United States International 
Searching Authority must be in English, in the form 
of replacement sheets in compliance with PCT Rules 
10 and 11, and accompanied by a letter that draws 
attention to the differences between the replaced 
sheets and the replacement sheets. Replacement 
sheets are not required for the deletion of lines of text, 
the correction of simple typographical errors, and one 
addition or change of not more than five words per 
sheet. These changes may be stated in a letter and, if 
appropriate, the United States Receiving Office will 
make the deletion or transfer the correction to the 
international application, provided that such corrections 
do not adversely affect the clarity and direct 
reproducibility of the application (PCT Rule 26.4). 
Amendments that do not comply with PCT Rules 10 
and 11.1 to 11.13 may not be entered. 
(b) Amendments of claims submitted to the 
International Bureau shall be as prescribed by PCT 
Rule 46. 
(c) Corrections or additions to the Request 
of any declarations under PCT Rule 4.17 should be 
submitted to the International Bureau as prescribed by 
PCT Rule 26ter. 


[Para. (a) revised, 63 FR 29614, June 1, 1998, effective 
July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 1998); 
para. (c) added, 66 FR 16004, Mar. 22, 2001, effective Mar. 
1, 2001] 

§ 1.472 Changes in person, name, or address of 
applicants and inventors. 

All requests for a change in person, name or 
address of applicants and inventor should be sent to 
the United States Receiving Office until the time of 
issuance of the international search report. Thereafter 
requests for such changes should be submitted to the 
International Bureau. 

[43 FR 20466, May 11, 1978; redesignated at 52 FR 
20047, May 28, 1987] 

UNITY OF INVENTION 

§ 1.475 Unity of invention before the International Searching Authority, the International Preliminary Examining Authority 
and during the national stage. 

(a) An international and a national stage application 
shall relate to one invention only or to a group 
of inventions so linked as to form a single general 
inventive concept (“requirement of unity of invention”). 
Where a group of inventions is claimed in an 
application, the requirement of unity of invention 
shall be fulfilled only when there is a technical relationship 
among those inventions involving one or 
more of the same or corresponding special technical 
features. The expression “special technical features” 
shall mean those technical features that define a contribution 
which each of the claimed inventions, considered 
as a whole, makes over the prior art. 
(b) An international or a national stage application 
containing claims to different categories of invention 
will be considered to have unity of invention if 
the claims are drawn only to one of the following 
combinations of categories: 
(1) A product and a process specially adapted 
for the manufacture of said product; or 
(2) A product and process of use of said 
product; or 
(3) A product, a process specially adapted for 
the manufacture of the said product, and a use of the 
said product; or 


 

(4) A process and an apparatus or means specifically 
designed for carrying out the said process; or 
(5) A product, a process specially adapted for 
the manufacture of the said product, and an apparatus 
or means specifically designed for carrying out the 
said process. 
(c) If an application contains claims to more or 
less than one of the combinations of categories of 
invention set forth in paragraph (b) of this section, 
unity of invention might not be present. 
(d) If multiple products, processes of manufacture 
or uses are claimed, the first invention of the category 
first mentioned in the claims of the application 
and the first recited invention of each of the other categories 
related thereto will be considered as the main 
invention in the claims, see PCT Article 17(3)(a) and 
§ 1.476(c). 
(e) The determination whether a group of 
inventions is so linked as to form a single general 
inventive concept shall be made without regard to 
whether the inventions are claimed in separate claims 
or as alternatives within a single claim. 


[Added 52 FR 20047, May 28, 1987, effective July 1, 
1987; paras. (a) - (e) amended and para. (f) deleted, 58 FR 
4335, Jan. 14, 1993, effective May 1, 1993] 

§ 1.476 Determination of unity of invention 
before the International Searching 
Authority. 

(a) Before establishing the international search 
report, the International Searching Authority will 
determine whether the international application complies 
with the requirement of unity of invention as set 
forth in § 1.475. 
(b) If the International Searching Authority 
considers that the international application does not 
comply with the requirement of unity of invention, it 
shall inform the applicant accordingly and invite the 
payment of additional fees (note § 1.445 and PCT Art. 
17(3)(a) and PCT Rule 40). The applicant will be 
given a time period in accordance with PCT Rule 40.3 
to pay the additional fees due. 
(c) In the case of non-compliance with unity of 
invention and where no additional fees are paid, the 
international search will be performed on the invention 
first mentioned (“main invention”) in the claims. 
(d) Lack of unity of invention may be directly 
evident before considering the claims in relation to 


any prior art, or after taking the prior art into consideration, 
as where a document discovered during the 
search shows the invention claimed in a generic or 
linking claim lacks novelty or is clearly obvious, leaving 
two or more claims joined thereby without a common 
inventive concept. In such a case the 
International Searching Authority may raise the 
objection of lack of unity of invention. 

[43 FR 20466, May 11, 1978; redesignated and 
amended at 52 FR 20047, May 28, 1987; para. (a) 
amended, 58 FR 4335, Jan. 14, 1993, effective May 1, 
1993] 

§ 1.477 Protest to lack of unity of invention 

before the International Searching 

Authority. 

(a) If the applicant disagrees with the holding 
of lack of unity of invention by the International 
Searching Authority, additional fees may be paid 
under protest, accompanied by a request for refund 
and a statement setting forth reasons for disagreement 
or why the required additional fees are considered 
excessive, or both (PCT Rule 40.2(c)). 
(b) Protest under paragraph (a) of this section 
will be examined by the Director or the Director’s 
designee. In the event that the applicant’s protest is 
determined to be justified, the additional fees or a portion 
thereof will be refunded. 
(c) An applicant who desires that a copy of the 
protest and the decision thereon accompany the international 
search report when forwarded to the Designated 
Offices may notify the International Searching 
Authority to that effect any time prior to the issuance 
of the international search report. Thereafter, such 
notification should be directed to the International 
Bureau (PCT Rule 40.2(c)). 


[43 FR 20466, May 11, 1978; redesignated and 
amended at 52 FR 20047, May 28, 1987; para. (b) revised, 
68 FR 14332, Mar. 25, 2003, effective May 1, 2003] 

INTERNATIONAL PRELIMINARY 
EXAMINATION


§ 1.480 Demand for international preliminary 
examination. 

(a) On the filing of a proper Demand in an 
application for which the United States International 

 

Preliminary Examining Authority is competent and 
for which the fees have been paid, the international 
application shall be the subject of an international preliminary 
examination. The preliminary examination 
fee (§ 1.482(a)(1)) and the handling fee (§ 1.482(b)) 
shall be due within the applicable time limit set forth 
in PCT Rule 57.3. 

(b) The Demand shall be made on a standardized 
form (PCT Rule 53). Copies of the printed 
Demand forms are available from the United States 
Patent and Trademark Office. Letters requesting 
printed Demand forms should be marked “Mail Stop 
PCT.” 
(c) Withdrawal of a proper Demand prior to the 
start of the international preliminary examination will 
entitle applicant to a refund of the preliminary examination 
fee minus the amount of the transmittal fee set 
forth in § 1.445(a)(1). 
(d) The filing of a Demand shall constitute the 
election of all Contracting States which are designated 
and are bound by Chapter II of the Treaty on the international 
filing date (PCT Rule 53.7). 
(e) Any Demand filed after the expiration of the 
applicable time limit set forth in PCT Rule 54bis.1(a) 
shall be considered as if it had not been submitted 
(PCT Rule 54bis.1(b)). 


[52 FR 20048, May 28, 1987; para. (d), 53 FR 47810, 
Nov. 28, 1988, effective Jan. 1, 1989; para. (b) amended, 
58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (a) 
revised, 63 FR 29614, June 1, 1998, effective July 1, 1998 
(adopted as final, 63 FR 66040, Dec. 1, 1998); para. (c) 
removed and para. (d) redesignated as para. (c), 67 FR 520, 
Jan. 4, 2002, effective Apr. 1, 2002; para. (b) revised, 68 
FR 14332, Mar. 25, 2003, effective May 1, 2003; para. (a) 
revised, paras. (d) & (e) added, 68 FR 58991, Oct. 20, 
2003, effective Jan. 1, 2004] 

§ 1.481 Payment of international preliminary 
examination fees. 

(a) The handling and preliminary examination 
fees shall be paid within the time period set in PCT 
Rule 57.3. The handling fee or preliminary examination 
fee payable is the handling fee or preliminary 
examination fee in effect on the date of payment. 
(1) If the handling and preliminary examination 
fees are not paid within the time period set in 
PCT Rule 57.3, applicant will be notified and given 


one month within which to pay the deficient fees plus 
a late payment fee equal to the greater of: 

(i) Fifty percent of the amount of the deficient 
fees, but not exceeding an amount equal to double 
the handling fee; or 
(ii) An amount equal to the handling fee 
(PCT Rule 58bis.2). 
(2) The one-month time limit set in this paragraph 
to pay deficient fees may not be extended. 
(b) If the payment needed to cover the handling 
and preliminary examination fees, pursuant to paragraph 
(a) of this section, is not timely made in accordance 
with PCT Rule 58bis.1(d), the United States 
International Preliminary Examination Authority will 
declare the Demand to be considered as if it had not 
been submitted. 


[63 FR 29614, June 1, 1998, effective July 1, 1998 
(adopted as final, 63 FR 66040, Dec. 1, 1998); para. (a) 
revised, 68 FR 58991, Oct. 20, 2003, effective Jan. 1, 2004] 

§ 1.482 International preliminary examination 
fees. 

(a) The following fees and charges for international 
preliminary examination are established by the 
Director under the authority of 35 U.S.C. 376: 
(1) The following preliminary examination 
fee is due on filing the Demand: 
(i) If an international search fee as set 
forth in § 1.445(a)(2) has been paid on the international 
application to the United States Patent and 
Trademark Office as an International Searching 
Authority . . . . . . . . . . . . . . . . . . . . . .$600.00 
(ii) If the International Searching Authority 
for the international application was an authority 
other than the United States Patent and Trademark 
Office . . . . . . . . . . . . . . . . . . . . . .$750.00 
(2) An additional preliminary examination 
fee when required, per additional invention . $600.00 
(b) The handling fee is due on filing the 
Demand and shall be as prescribed in PCT Rule 57. 


[52 FR 20048, May 28, 1987; para. (a), 54 FR 6893, 
Feb. 15, 1989, effective Apr. 17, 1989; para. (a), 56 FR 
65142, Dec. 13, 1991, effective Dec. 27, 1991; paras. (a)(1) 
and (a)(2)(ii), 57 FR 38190, Aug. 21, 1992, effective Oct. 
1, 1992; paras. (a)(2)(i) and (b) amended, 58 FR 4335, Jan. 
14, 1993, effective May 1, 1993; paras. (a)(1) and (a)(2)(ii), 
59 FR 43736, Aug. 25, 1994, effective Oct. 1, 1994; paras. 
(a)(1)(i), (a)(1)(ii), & (a)(2)(ii) amended, 60 FR 41018, 

 

Aug. 11, 1995, effective Oct. 1, 1995; paras. (a)(1)(i), 
(a)(1)(ii), and (a)(2)(ii) amended, 61 FR 39585, July 30, 
1996, effective Oct. 1, 1996; paras. (a)(1)(i), (a)(1)(ii), and 
(a)(2)(ii) amended, 62 FR 40450, July 29, 1997, effective 
Oct. 1, 1997; para. (a) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; revised, 68 FR 58991, Oct. 20, 
2003, effective Jan. 1, 2004; para. (b) & (e)-(g) revised, 
paras. (h) & (i) added, 68 FR 58991, Oct. 20, 2003, effective 
Jan. 1, 2004] 

§ 1.484 Conduct of international preliminary 
examination. 

(a) An international preliminary examination 
will be conducted to formulate a non-binding opinion 
as to whether the claimed invention has novelty, 
involves an inventive step (is non-obvious) and is 
industrially applicable. 
(b) International preliminary examination will 
begin in accordance with PCT Rule 69.1. 
(c) No international preliminary examination 
will be conducted on inventions not previously 
searched by an International Searching Authority. 
(d) The International Preliminary Examining 
Authority will establish a written opinion if any defect 
exists or if the claimed invention lacks novelty, inventive 
step or industrial applicability and will set a non-
extendable time limit in the written opinion for the 
applicant to reply. 
(e) The written opinion established by the International 
Searching Authority under PCT Rule 43bis.1 
shall be considered to be a written opinion of the 
United States International Preliminary Examining 
Authority for the purposes of paragraph (d) of this 
section. 
(f) The International Preliminary Examining 
Authority may establish further written opinions 
under paragraph (d) of this section. 
(g) If no written opinion under paragraph (d) of 
this section is necessary, or if no further written opinion 
under paragraph (f) of this section is to be established, 
or after any written opinion and the reply 
thereto or the expiration of the time limit for reply to 
such written opinion, an international preliminary 
examination report will be established by the International 
Preliminary Examining Authority. One copy 
will be submitted to the International Bureau and one 
copy will be submitted to the applicant. 


(h) An applicant will be permitted a personal or 
telephone interview with the examiner, which may be 
requested after the filing of a Demand, and must be 
conducted during the period between the establishment 
of the written opinion and the establishment of 
the international preliminary examination report. 
Additional interviews may be conducted where the 
examiner determines that such additional interviews 
may be helpful to advancing the international preliminary 
examination procedure. A summary of any such 
personal or telephone interview must be filed by the 
applicant or, if not filed by applicant be made of 
record in the file by the examiner. 
(i) If the application whose priority is claimed 
in the international application is in a language other 
than English, the United States International Preliminary 
Examining Authority may, where the validity of 
the priority claim is relevant for the formulation of the 
opinion referred to in Article 33(1), invite the applicant 
to furnish an English translation of the priority 
document within two months from the date of the 
invitation. If the translation is not furnished within 
that time limit, the international preliminary report 
may be established as if the priority had not been 
claimed. 


[52 FR 20049, May 28, 1987; para. (b) amended, 
58 FR 4335, Jan. 14, 1993, effective May 1, 1993; paras. 
(d)-(f) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; para. (b) revised, 63 FR 29614, June 1, 1998, 
effective July 1, 1998 (adopted as final, 63 FR 66040, Dec. 
1, 1998); para. (g) added, 66 FR 16004, Mar. 22, 2001, 
effective Mar. 1, 2001; para. (b) & (e)-(g) revised, paras. 

(h) & (i) added, 68 FR 58991, Oct. 20, 2003, effective Jan. 
1, 2004] 

§ 1.485 Amendments by applicant during international preliminary examination. 

(a) The applicant may make amendments at the 
time of filing the Demand. The applicant may also 
make amendments within the time limit set by the 
International Preliminary Examining Authority for 
reply to any notification under § 1.484(b) or to any 
written opinion. Any such amendments must: 
(1) Be made by submitting a replacement 
sheet in compliance with PCT Rules 10 and 11.1 to 


11.13 for every sheet of the application which differs 
from the sheet it replaces unless an entire sheet is cancelled; 
and 

 

(2) Include a description of how the replacement 
sheet differs from the replaced sheet. Amendments 
that do not comply with PCT Rules 10 and 11.1 
to 11.13 may not be entered. 
(b) If an amendment cancels an entire sheet of 
the international application, that amendment shall be 
communicated in a letter. 


[Added 52 FR 20049, May 28, 1987; amended, 58 FR 
4335, Jan. 14, 1993, effective May 1, 1993; para. (a) 
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997; para. (a) revised, 63 FR 29614, June 1, 1998, effective 
July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 
1998)] 

§ 1.488 Determination of unity of invention 
before the International Preliminary 
Examining Authority. 

(a) Before establishing any written opinion or 
the international preliminary examination report, the 
International Preliminary Examining Authority will 
determine whether the international application complies 
with the requirement of unity of invention as set 
forth in § 1.475. 
(b) If the International Preliminary Examining 
Authority considers that the international application 
does not comply with the requirement of unity of 
invention, it may: 
(1) Issue a written opinion and/or an international 
preliminary examination report, in respect of 
the entire international application and indicate that 
unity of invention is lacking and specify the reasons 
therefor without extending an invitation to restrict or 
pay additional fees. No international preliminary 
examination will be conducted on inventions not previously 
searched by an International Searching 
Authority. 
(2) Invite the applicant to restrict the claims 
or pay additional fees, pointing out the categories of 
invention found, within a set time limit which will not 
be extended. No international preliminary examination 
will be conducted on inventions not previously 
searched by an International Searching Authority, or 
(3) If applicant fails to restrict the claims or 
pay additional fees within the time limit set for reply, 
the International Preliminary Examining Authority 
will issue a written opinion and/or establish an international 
preliminary examination report on the main 
invention and shall indicate the relevant facts in the 


said report. In case of any doubt as to which invention 
is the main invention, the invention first mentioned in 
the claims and previously searched by an International 
Searching Authority shall be considered the main 
invention. 

(c) Lack of unity of invention may be directly 
evident before considering the claims in relation to 
any prior art, or after taking the prior art into consideration, 
as where a document discovered during the 
search shows the invention claimed in a generic or 
linking claim lacks novelty or is clearly obvious, leaving 
two or more claims joined thereby without a common 
inventive concept. In such a case the 
International Preliminary Examining Authority may 
raise the objection of lack of unity of invention. 

[52 FR 20049, May 28, 1987; para. (a) amended, 
58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. 
(b)(3) revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997] 

§ 1.489 Protest to lack of unity of invention 

before the International Preliminary 

Examining Authority. 

(a) If the applicant disagrees with the holding 
of lack of unity of invention by the International Preliminary 
Examining Authority, additional fees may be 
paid under protest, accompanied by a request for 
refund and a statement setting forth reasons for disagreement 
or why the required additional fees are 
considered excessive, or both. 
(b) Protest under paragraph (a) of this section 
will be examined by the Director or the Director’s 
designee. In the event that the applicant’s protest is 
determined to be justified, the additional fees or a portion 
thereof will be refunded. 
(c) An applicant who desires that a copy of the 
protest and the decision thereon accompany the international 
preliminary examination report when forwarded 
to the Elected Offices, may notify the 
International Preliminary Examining Authority to that 
effect any time prior to the issuance of the international 
preliminary examination report. Thereafter, 
such notification should be directed to the International 
Bureau. 


[Added 52 FR 20050, May 28, 1987, effective July 1, 
1987; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

 

NATIONAL STAGE


§ 1.491 National stage commencement and entry. 

(a) Subject to 35 U.S.C. 371(f), the national 
stage shall commence with the expiration of the applicable 
time limit under PCT Article 22(1) or (2), or 
under PCT Article 39(1)(a). 
(b) An international application enters the 
national stage when the applicant has filed the documents 
and fees required by 35 U.S.C. 371(c) within 
the period set in § 1.495. 


[Added, 52 FR 20050, May 28, 1987; revised, 66 FR 
45775, Aug. 30, 2001; revised, 67 FR 520, Jan. 4, 2002, 
effective Apr. 1, 2002] 

§ 1.492 National stage fees. 

The following fees and charges are established for 
international applications entering the national stage 
under 35 U.S.C. 371: 

(a) The basic national fee for an international 
application entering the national stage under 35 

U.S.C. 371 if the basic national fee was not paid 

before December 8, 2004: 
By a small entity (§ 1.27(a)) . . . $150.00 
By other than a small entity . . . . $300.00 

(b) Search fee for an international application 
entering the national stage under 35 U.S.C. 371 if the 
basic national fee was not paid before December 8, 
2004: 
(1) If an international preliminary examination 
report on the international application prepared 
by the United States International Preliminary Examining 
Authority or a written opinion on the international 
application prepared by the United States 
International Searching Authority states that the criteria 
of novelty, inventive step (non-obviousness), and 
industrial applicability, as defined in PCT Article 33 
(1) to (4) have been satisfied for all of the claims presented 
in the application entering the national stage: 
By a small entity (§ 1.27(a)) . . . . . $0.00 
By other than a small entity . . . . . . $0.00 


(2) If the search fee as set forth in § 1.445 
(a)(2) has been paid on the international application to 
the United States Patent and Trademark Office as an 
International Searching Authority: 


By a small entity (§ 1.27(a)) . . . . $50.00 
By other than a small entity . . . . $100.00 

(3) If an international search report on the 
international application has been prepared by an 
International Searching Authority other than the 
United States International Searching Authority and is 
provided, or has been previously communicated by 
the International Bureau, to the Office: 
By a small entity (§ 1.27(a)) . . . $200.00 
By other than a small entity . . . . $400.00 


(4) In all situations not provided for in paragraphs 
(b)(1), (b)(2), or (b)(3) of this section: 
By a small entity (§ 1.27(a)) . . . $250.00 
By other than a small entity . . . . $500.00 


(c) The examination fee for an international 
application entering the national stage under 35 


U.S.C. 371 if the basic national fee was not paid 
before December 8, 2004: 

(1) If an international preliminary examination 
report on the international application prepared 
by the United States International Preliminary Examining 
Authority or a written opinion on the international 
application prepared by the United States 
International Searching Authority states that the criteria 
of novelty, inventive step (non-obviousness), and 
industrial applicability, as defined in PCT Article 
33(1) to (4) have been satisfied for all of the claims 
presented in the application entering the national 
stage: 
By a small entity (§ 1.27(a)) . . . . . $0.00 
By other than a small entity . . . . . . $0.00 


(2) In all situations not provided for in paragraph 
(c)(1) of this section: 
By a small entity (§ 1.27(a)) . . . $100.00 
By other than a small entity . . . . $200.00 


(d) In addition to the basic national fee, for filing 
or on a later presentation at any other time of each 
claim in independent form in excess of 3: 
By a small entity (§ 1.27(a)) . . . $100.00 
By other than a small entity . . . . $200.00 


(e) In addition to the basic national fee, for filing 
or on later presentation at any other time of each 
claim (whether dependent or independent) in excess 
of 20 (note that §1.75(c) indicates how multiple 
dependent claims are considered for fee calculation 
purposes): 


By a small entity (§ 1.27(a)) . . . . $25.00 
By other than a small entity . . . . . $50.00 

 

(f) In addition to the basic national fee, if the 
application contains, or is amended to contain, a multiple 
dependent claim, per application: 
By a small entity (§ 1.27(a)) . . . $180.00 
By other than a small entity . . . . $360.00 


(g) If the excess claims fees required by paragraphs 
(d) and (e) of this section and multiple dependent 
claim fee required by paragraph (f) of this 
section are not paid with the basic national fee or on 
later presentation of the claims for which excess 
claims or multiple dependent claim fees are due, the 
fees required by paragraphs (d), (e), and (f) of this 
section must be paid or the claims canceled by 
amendment prior to the expiration of the time period 
set for reply by the Office in any notice of fee deficiency 
in order to avoid abandonment. 
(h) Surcharge for filing any of the search fee, 
the examination fee, or the oath or declaration after 
the date of the commencement of the national stage (§ 
1.491(a)) pursuant to § 1.495(c) 
By a small entity (§ 1.27(a)) . . . . $65.00 
By other than a small entity . . . . $130.00 


(i) For filing an English translation of an 
international application or any annexes to an 
international preliminary examination report later 
than thirty months after the priority date (§§ 
1.495(c) and (e)). . . . . . . . . . . . . . . . . . . . .$130.00. 
(j) Application size fee for any international 
application for which the basic national fee was not 
paid before December 8, 2004, the specification and 
drawings of which exceed 100 sheets of paper, for 
each additional 50 sheets or fraction thereof (see § 
1.52(f) for applications submitted in whole or in part 
on an electronic medium): 


By a small entity (§ 1.27(a)) . . . $125.00 
By other than a small entity . . . . $250.00 

[52 FR 20050, May 28, 1987, effective July 1, 1987; 
paras. (a)(1) - (3), (b), (d)- (f), 54 FR 6893, Feb. 15, 1989, 
effective Apr. 17, 1989; para. (a)(5) added, 56 FR 65142, 
Dec. 13, 1991, effective Dec. 16, 1991; revised, 56 FR 
65142, Dec. 13, 1991, effective Dec. 16, 1991; paras. 
(a)(1)-(a)(3), (a)(5) and (b)-(d), 57 FR 38190, Aug. 21, 
1992, effective Oct. 1, 1992; para. (e) amended, 58 FR 
4335, Jan. 14, 1993, effective May 1, 1993; paras. (a), (b) 
and (d), 59 FR 43736, Aug. 25, 1994, effective Oct. 1, 
1994; paras. (a), (b), & (d) amended, 60 FR 41018, Aug. 
11, 1995, effective, Oct. 1, 1995; paras. (a), (b), & (d) 
amended, 61 FR 39585, July 30, 1996, effective Oct. 1, 
1996; paras. (a), (b), & (d) amended, 62 FR 40450, July 29, 
1997, effective Oct. 1, 1997; para. (g) added, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997; paras. (a)-(d) revised, 
63 FR 67578, Dec. 8, 1998, effective Nov. 10, 1998; para. 
(a)(2) revised, 64 FR 67774, Dec. 3, 1999, effective Dec. 
29, 1999; paras. (a), (b) and (d) revised, 65 FR 49193, Aug. 
11, 2000, effective Oct. 1, 2000; paras. (a)-(e) revised, 65 
FR 78958, Dec. 18, 2000; paras. (a)(1)-(a)(3), (a)(5), (b) 
and (d) revised, 66 FR 39447, July 31, 2001, effective Oct. 
1, 2001; paras. (e) and (f) revised, 67 FR 520, Jan. 4, 2002, 
effective Apr. 1, 2002; paras. (a)(1) through (a)(3), and 
(a)(5) revised, 67 FR 70847, Nov. 27, 2002, effective Jan. 
1, 2003; paras. (a)(1) through (a)(3), (a)(5), (b), and (d) 
revised, 68 FR 41532, July 14, 2003, effective Oct. 1, 2003; 
paras. (a)(1) through (a)(3), (a)(5), (b) and (d) revised, 69 F 
R 52604, Aug. 27, 2004, effective Oct. 1, 2004; revised, 70 
FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; paras. (b) 
and (c) revised, 70 FR 5053, Feb. 1, 2005, effective Feb. 1, 
2005; paras. (h) and (j) revised, 70 FR 30360, May 26, 
2005, effective July 1, 2005; paras. (b) and (c) revised, 70 
FR 35375, June 20, 2005, effective July 1, 2005] 

§ 1.494 [Reserved] 

[Added 52 FR 20050, May 28, 1987; paras. (a) - (d) 
and (g) amended and para. (h) deleted, 58 FR 4335, Jan. 14, 
1993, effective May 1, 1993; para. (c) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para (c) 
revised, 63 FR 29614, June 1, 1998, effective, July 1, 1998 
(adopted as final, 63 FR 66040, Dec. 1, 1998); para (f) 
revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 
2000; para. (c)(2) revised, 66 FR 16004, Mar. 22, 2001, 
effective Mar. 1, 2000; para. (c)(2) corrected, 66 FR 28053, 
May 22, 2001, effective Mar. 22, 2001; removed and 
reserved, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 2002] 

§ 1.495 Entering the national stage in the United 
States of America. 

(a) The applicant in an international application 
must fulfill the requirements of 35 U.S.C. 371 within 
the time periods set forth in paragraphs (b) and (c) of 
this section in order to prevent the abandonment of 
the international application as to the United States of 
America. The thirty-month time period set forth in 
paragraphs (b), (c), (d), (e) and (h) of this section may 
not be extended. International applications for which 
those requirements are timely fulfilled will enter the 
national stage and obtain an examination as to the patentability 
of the invention in the United States of 
America. 

 

(b) To avoid abandonment of the application, 
the applicant shall furnish to the United States Patent 
and Trademark Office not later than the expiration of 
thirty months from the priority date: 
(1) A copy of the international application, 
unless it has been previously communicated by the 
International Bureau or unless it was originally filed 
in the United States Patent and Trademark Office; and 
(2) The basic national fee (see § 1.492(a)). 
(c)(1) If applicant complies with paragraph (b) of 
this section before expiration of thirty months from 
the priority date, the Office will notify the applicant if 
he or she has omitted any of: 


(i) A translation of the international application, 
as filed, into the English language, if it was 
originally filed in another language and if any English 
language translation of the publication of the international 
application previously submitted under 35 


U.S.C. 154(d) (§ 1.417) is not also a translation of the 
international application as filed (35 U.S.C. 
371(c)(2)); 

(ii) The oath or declaration of the inventor 
(35 U.S.C. 371(c)(4) and § 1.497), if a declaration of 
inventorship in compliance with § 1.497 has not been 
previously submitted in the international application 
under PCT Rule 4.17(iv) within the time limits provided 
for in PCT Rule 26ter.1; 
(iii) The search fee set forth in § 1.492(b); 


(iv) The examination fee set forth in § 
1.492(c); and 
(v) Any application size fee required by § 
1.492(j); 
(2) A notice under paragraph (c)(1) of this 
section will set a time period within which applicant 
must provide any omitted translation, oath or declaration 
of the inventor, search fee set forth in § 1.492(b), 
examination fee set forth in § 1.492(c), and any application 
size fee required by § 1.492(j) in order to avoid 
abandonment of the application. 
(3) The payment of the processing fee set 
forth in § 1.492(i) is required for acceptance of an 
English translation later than the expiration of thirty 
months after the priority date. The payment of the surcharge 
set forth in § 1.492(h) is required for acceptance 
of any of the search fee, the examination fee, or 
the oath or declaration of the inventor after the date of 
the commencement of the national stage (§ 1.491(a)). 


(4) A “Sequence Listing” need not be translated 
if the “Sequence Listing” complies with PCT 
Rule 12.1(d) and the description complies with PCT 
Rule 5.2(b). 
(d) A copy of any amendments to the claims 
made under PCT Article 19, and a translation of those 
amendments into English, if they were made in 
another language, must be furnished not later than the 
expiration of thirty months from the priority date. 
Amendments under PCT Article 19 which are not 
received by the expiration of thirty months from the 
priority date will be considered to be canceled. 
(e) A translation into English of any annexes to 
an international preliminary examination report (if 
applicable), if the annexes were made in another language, 
must be furnished not later than the expiration 
of thirty months from the priority date. Translations of 
the annexes which are not received by the expiration 
of thirty months from the priority date may be submitted 
within any period set pursuant to paragraph (c) of 
this section accompanied by the processing fee set 
forth in § 1.492(f). Annexes for which translations are 
not timely received will be considered canceled. 
(f) Verification of the translation of the international 
application or any other document pertaining to 
an international application may be required where it 
is considered necessary, if the international application 
or other document was filed in a language other 
than English. 
(g) The documents and fees submitted under 
paragraphs (b) and (c) of this section must be clearly 
identified as a submission to enter the national stage 
under 35 U.S.C. 371. Otherwise, the submission will 
be considered as being made under 35 U.S.C. 111(a). 
(h) An international application becomes abandoned 
as to the United States thirty months from the 
priority date if the requirements of paragraph (b) of 
this section have not been complied with within thirty 
months from the priority date. If the requirements of 
paragraph (b) of this section are complied with within 
thirty months from the priority date but either of any 
required translation of the international application as 
filed or the oath or declaration are not timely filed, an 
international application will become abandoned as to 
the United States upon expiration of the time period 
set pursuant to paragraph (c) of this section. 


[Added 52 FR 20051, May 28, 1987, effective July 1, 
1987; paras. (a) -(e) & (h) amended and para. (i) deleted, 

 

58 FR 4335, Jan. 14, 1993, effective May 1, 1993; para. (c) 
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997; para (c) revised, 63 FR 29614, June 1, 1998, effective 
July 1, 1998 (adopted as final, 63 FR 66040, Dec. 1, 
1998), para. (g) revised, 65 FR 57024, Sept. 20, 2000, 
effective Nov. 29, 2000; para. (c)(2) revised, 66 FR 16004, 
Mar. 22, 2001, effective Mar. 1, 2001 para. (c)(2) corrected, 
66 FR 28053, May 22, 2001, effective Mar. 22, 2001; heading 
and paras. (a)-(e) and (h) revised, 67 FR 520, Jan. 4, 
2002, effective Apr. 1, 2002; paras. (c) & (g) revised, 68 FR 
70996, Dec. 22, 2003, effective Jan. 21, 2004; para. (c) 
revised, 70 FR 3880, Jan. 27, 2005, effective Dec. 8, 2004; 
paras. (c)(1)(i) and (c)(3) revised, 70 FR 30360, May 26, 
2005, effective July 1, 2005] 

§ 1.496 Examination of international applications in the national stage. 

(a) International applications which have complied 
with the requirements of 35 U.S.C. 371(c) will 
be taken up for action based on the date on which 
such requirements were met. However, unless an 
express request for early processing has been filed 
under 35 U.S.C. 371(f), no action may be taken prior 
to one month after entry into the national stage. 
(b) National stage applications having paid 
therein the search fee as set forth in § 1.492(b)(1) and 
the examination fee as set forth in § 1.492(c)(1) may 
be amended subsequent to the date of entry into the 
national stage only to the extent necessary to eliminate 
objections as to form or to cancel rejected claims. 
Such national stage applications will be advanced out 
of turn for examination. 


[Added 52 FR 20051, May 28, 1987, effective July 1, 
1987; para. (b) revised, 70 FR 5053, Feb. 1, 2005, effective 
Feb. 1, 2005; para. (b) revised, 70 FR 35375, June 20, 
2005, effective July 1, 2005] 

§ 1.497 Oath or declaration under 35 U.S.C. 
371(c)(4). 

(a) When an applicant of an international application 
desires to enter the national stage under 
35 U.S.C. 371 pursuant to § 1.495, and a declaration 
in compliance with this section has not been previously 
submitted in the international application under 
PCT Rule 4.17(iv) within the time limits provided for 
in PCT Rule 26ter.1, he or she must file an oath or 
declaration that: 

(1) Is executed in accordance with either 
§§ 1.66 or 1.68; 
(2) Identifies the specification to which it is 
directed; 
(3) Identifies each inventor and the country 
of citizenship of each inventor; and 
(4) States that the person making the oath or 
declaration believes the named inventor or inventors 
to be the original and first inventor or inventors of the 
subject matter which is claimed and for which a 
patent is sought. 
(b)(1) The oath or declaration must be made by 
all of the actual inventors except as provided for in 
§§ 1.42, 1.43 or 1.47. 


(2) If the person making the oath or declaration 
or any supplemental oath or declaration is not the 
inventor (§§ 1.42, 1.43, or § 1.47), the oath or declaration 
shall state the relationship of the person to the 
inventor, and, upon information and belief, the facts 
which the inventor would have been required to state. 
If the person signing the oath or declaration is the 
legal representative of a deceased inventor, the oath or 
declaration shall also state that the person is a legal 
representative and the citizenship, residence and mailing 
address of the legal representative. 
(c) Subject to paragraph (f) of this section, if 
the oath or declaration meets the requirements of 
paragraphs (a) and (b) of this section, the oath or declaration 
will be accepted as complying with 35 U.S.C. 
371(c)(4) and § 1.495(c). However, if the oath or declaration 
does not also meet the requirements of § 1.63, 
a supplemental oath or declaration in compliance with 
§ 1.63 or an application data sheet will be required in 
accordance with § 1.67. 
(d) If the oath or declaration filed pursuant to 
35 U.S.C. 371(c)(4) and this section names an inventive 
entity different from the inventive entity set forth 
in the international application, or if a change to the 
inventive entity has been effected under PCT Rule 
92bis subsequent to the execution of any oath or declaration 
which was filed in the application under PCT 
Rule 4.17(iv) or this section and the inventive entity 
thus changed is different from the inventive entity 
identified in any such oath or declaration, applicant 
must submit: 
(1) A statement from each person being 
added as an inventor and from each person being 
deleted as an inventor that any error in inventorship in 


 

the international application occurred without deceptive 
intention on his or her part; 

(2) The processing fee set forth in § 1.17(i); 
and 
(3) If an assignment has been executed by 
any of the original named inventors, the written consent 
of the assignee (see § 3.73(b) of this chapter); and 
(4) Any new oath or declaration required by 
paragraph (f) of this section. 
(e) The Office may require such other information 
as may be deemed appropriate under the particular 
circumstances surrounding the correction of 
inventorship. 
(f) A new oath or declaration in accordance 
with this section must be filed to satisfy 35 U.S.C. 
371(c)(4) if the declaration was filed under PCT Rule 
4.17(iv), and: 
(1) There was a change in the international 
filing date pursuant to PCT Rule 20.2 after the declaration 
was executed; or 
(2) A change in the inventive entity was 
effected under PCT Rule 92bis after the declaration 
was executed and no declaration which sets forth and 
is executed by the inventive entity as so changed has 
been filed in the application. 
(g) If a priority claim has been corrected or 
added pursuant to PCT Rule 26bis during the international 
stage after the declaration of inventorship was 
executed in the international application under PCT 
Rule 4.17(iv), applicant will be required to submit 
either a new oath or declaration or an application data 
sheet as set forth in § 1.76 correctly identifying the 
application upon which priority is claimed. 


[Added 52 FR 20052, May 28, 1987, effective July 1, 
1987; paras. (a) and (b) revised and para. (c) added, 61 FR 
42790, Aug. 19, 1996, effective Sept. 23, 1996; para. (b)(2) 
revised and paras. (d) and (e) added, 65 FR 54604, Sept. 8, 
2000, effective Nov. 7, 2000; paras. (a), (c), and (d) revised 
and paras. (f) and (g) added, 66 FR 16004, Mar. 22, 2001, 
effective Mar. 1, 2001; para. (a)(1) corrected, 66 FR 28053, 
May 22, 2001, effective Mar. 22, 2001; paras. (a), (c), (d), 
and (f) revised, 67 FR 520, Jan. 4, 2002, effective Apr. 1, 
2002; para. (c) corrected, 67 FR 6075, Feb. 8, 2002] 

§ 1.499 Unity of invention during the national 
stage. 

If the examiner finds that a national stage application 
lacks unity of invention under § 1.475, the examiner 
may in an Office action require the applicant in 
the response to that action to elect the invention to 
which the claims shall be restricted. Such requirement 
may be made before any action on the merits but may 
be made at any time before the final action at the discretion 
of the examiner. Review of any such requirement 
is provided under §§ 1.143 and 1.144. 

[Added 52 FR 20052, May 28, 1987, effective July 1, 
1987; amended, 58 FR 4335, Jan. 14, 1993, effective May 
1, 1993] 

Subpart D — Ex Parte Reexamination of 
Patents 

CITATION OF PRIOR ART 

§ 1.501 Citation of prior art in patent files. 

(a) At any time during the period of enforceability 
of a patent, any person may cite, to the Office 
in writing, prior art consisting of patents or printed 
publications which that person states to be pertinent 
and applicable to the patent and believes to have a 
bearing on the patentability of any claim of the patent. 
If the citation is made by the patent owner, the explanation 
of pertinency and applicability may include an 
explanation of how the claims differ from the prior 
art. Such citations shall be entered in the patent file 
except as set forth in §§ 1.502 and 1.902. 
(b) If the person making the citation wishes his 
or her identity to be excluded from the patent file and 
kept confidential, the citation papers must be submitted 
without any identification of the person making 
the submission. 
(c) Citation of patents or printed publications 
by the public in patent files should either: (1) Reflect 
that a copy of the same has been mailed to the patent 
owner at the address as provided for in § 1.33(c); or in 
the event service is not possible (2) Be filed with the 
Office in duplicate. 


[46 FR 29185, May 29, 1981, effective July 1, 1981; 
para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 
5, 2001] 

§ 1.502 Processing of prior art citations during 
an ex parte reexamination proceeding.

 Citations by the patent owner under § 1.555 and by 
an ex parte reexamination requester under either 

 

§ 1.510 or § 1.535 will be entered in the reexamination 
file during a reexamination proceeding. The entry 
in the patent file of citations submitted after the 
date of an order to reexamine pursuant to § 1.525 by 
persons other than the patent owner, or an ex parte 
reexamination requester under either § 1.510 or § 
1.535, will be delayed until the reexamination proceeding 
has been terminated. See § 1.902 for processing 
of prior art citations in patent and reexamination 
files during an inter partes reexamination proceeding 
filed under § 1.913. 

[Added 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

REQUEST FOR EX PARTE REEXAMINATION 

§ 1.510 Request for ex parte reexamination. 

(a) Any person may, at any time during the 
period of enforceability of a patent, file a request for 
an ex parte reexamination by the Office of any claim 
of the patent on the basis of prior art patents or printed 
publications cited under § 1.501. The request must be 
accompanied by the fee for requesting reexamination 
set in § 1.20(c)(1). 
(b) Any request for reexamination must include 
the following parts: 
(1) A statement pointing out each substantial 
new question of patentability based on prior patents 
and printed publications. 
(2) An identification of every claim for 
which reexamination is requested, and a detailed 
explanation of the pertinency and manner of applying 
the cited prior art to every claim for which reexamination 
is requested. If appropriate the party requesting 
reexamination may also point out how claims distinguish 
over cited prior art. 
(3) A copy of every patent or printed publication 
relied upon or referred to in paragraph (b)(1) and 
(2) of this section accompanied by an English language 
translation of all the necessary and pertinent 
parts of any non-English language patent or printed 
publication. 
(4) A copy of the entire patent including the 
front face, drawings, and specification/claims (in double 
column format) for which reexamination is 
requested, and a copy of any disclaimer, certificate of 
correction, or reexamination certificate issued in the 


patent. All copies must have each page plainly written 
on only one side of a sheet of paper. 

(5) A certification that a copy of the request 
filed by a person other than the patent owner has been 
served in its entirety on the patent owner at the 
address as provided for in § 1.33(c). The name and 
address of the party served must be indicated. If service 
was not possible, a duplicate copy must be supplied 
to the Office. 
(c) If the request does not include the fee for 
requesting ex parte reexamination required by paragraph 
(a) of this section and meet all the requirements 
by paragraph (b) of this section, then the person identified 
as requesting reexamination will be so notified 
and will generally be given an opportunity to complete 
the request within a specified time. Failure to 
comply with the notice will result in the ex parte reexamination 
request not being granted a filing date, and 
will result in placement of the request in the patent 
file as a citation if it complies with the requirements 
of § 1.501. 
(d) The filing date of the request for ex parte 
reexamination is the date on which the request satisfies 
all the requirements of this section. 
(e) A request filed by the patent owner may 
include a proposed amendment in accordance with 
§1.530. 
(f) If a request is filed by an attorney or agent 
identifying another party on whose behalf the request 
is being filed, the attorney or agent must have a power 
of attorney from that party or be acting in a representative 
capacity pursuant to § 1.34(a). 


[46 FR 29185, May 29, 1981, effective July 1, 1981; 
para. (a), 47 FR 41282, Sept. 17, 1982, effective Oct. 1, 
1982; para. (e) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; paras. (b)(4) and (e) revised, 65 FR 
54604, Sept. 8, 2000, effective Nov. 7, 2000; heading and 
para. (a) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 
5, 2001; paras. (c) and (d) revised, 71 FR 9260, Feb. 23, 
2006, effective Mar. 27, 2006; paras. (c) and (d) revised, 71 
FR 44219, Aug. 4, 2006, effective Aug. 4, 2006] 

§ 1.515 Determination of the request for ex parte 
reexamination. 

(a) Within three months following the filing 
date of a request for an ex parte reexamination, an 
examiner will consider the request and determine 
whether or not a substantial new question of patent-

 

ability affecting any claim of the patent is raised by 
the request and the prior art cited therein, with or 
without consideration of other patents or printed publications. 
The examiner’s determination will be based 
on the claims in effect at the time of the determination, 
will become a part of the official file of the 
patent, and will be mailed to the patent owner at the 
address as provided for in § 1.33(c) and to the person 
requesting reexamination. 

(b) Where no substantial new question of patentability 
has been found, a refund of a portion of the 
fee for requesting ex parte reexamination will be 
made to the requester in accordance with § 1.26(c). 
(c) The requester may seek review by a petition 
to the Director under § 1.181 within one month of the 
mailing date of the examiner’s determination refusing 
ex parte reexamination. Any such petition must comply 
with § 1.181(b). If no petition is timely filed or if 
the decision on petition affirms that no substantial 
new question of patentability has been raised, the 
determination shall be final and nonappealable. 


[46 FR 29185, May 29, 1981, effective July 1, 1981; 
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; 
para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 1.520 Ex parte reexamination at the initiative of 
the Director.

 The Director, at any time during the period of 
enforceability of a patent, may determine whether or 
not a substantial new question of patentability is 
raised by patents or printed publications which have 
been discovered by the Director or which have been 
brought to the Director’s attention, even though no 
request for reexamination has been filed in accordance 
with § 1.510 or § 1.913. The Director may initiate 
ex parte reexamination without a request for 
reexamination pursuant to § 1.510 or § 1.913. Normally 
requests from outside the Office that the Director 
undertake reexamination on his own initiative will 
not be considered. Any determination to initiate ex 
parte reexamination under this section will become a 
part of the official file of the patent and will be mailed 
to the patent owner at the address as provided for in § 
1.33(c). 

[46 FR 29186, May 29, 1981, effective July 1, 1981; 
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; 
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 
2003] 

EX PARTE REEXAMINATION 

§ 1.525 Order for ex parte reexamination. 

(a) If a substantial new question of patentability 
is found pursuant to § 1.515 or § 1.520, the determination 
will include an order for ex parte reexamination 
of the patent for resolution of the question. If the order 
for ex parte reexamination resulted from a petition 
pursuant to § 1.515(c), the ex parte reexamination 
will ordinarily be conducted by an examiner other 
than the examiner responsible for the initial determination 
under § 1.515(a). 
(b) The notice published in the Official Gazette 
under § 1.11(c) will be considered to be constructive 
notice and ex parte reexamination will proceed. 


[46 FR 29186, May 29, 1981, effective July 1, 1981; 
heading and paras. (a) and (b) revised, 65 FR 76756, Dec. 
7, 2000, effective Feb. 5, 2001] 

§ 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. 

(a) Except as provided in § 1.510(e), no statement 
or other response by the patent owner in an ex 
parte reexamination proceeding shall be filed prior to 
the determinations made in accordance with § 1.515 
or § 1.520. If a premature statement or other response 
is filed by the patent owner, it will not be acknowledged 
or considered in making the determination. 
(b) The order for ex parte reexamination will 
set a period of not less than two months from the date 
of the order within which the patent owner may file a 
statement on the new question of patentability, including 
any proposed amendments the patent owner 
wishes to make. 
(c) Any statement filed by the patent owner 
shall clearly point out why the subject matter as 
claimed is not anticipated or rendered obvious by the 
prior art patents or printed publications, either alone 
or in any reasonable combinations. Where the reexamination 
request was filed by a third party requester, 
any statement filed by the patent owner must be 


 

served upon the ex parte reexamination requester in 
accordance with § 1.248. 

(d) Making amendments in a reexamination 
proceeding. A proposed amendment in an ex parte or 
an inter partes reexamination proceeding is made by 
filing a paper directing that proposed specified 
changes be made to the patent specification, including 
the claims, or to the drawings. An amendment paper 
directing that proposed specified changes be made in 
a reexamination proceeding may be submitted as an 
accompaniment to a request filed by the patent owner 
in accordance with § 1.510(e), as part of a patent 
owner statement in accordance with paragraph (b) of 
this section, or, where permitted, during the prosecution 
of the reexamination proceeding pursuant to 
§ 1.550(a) or § 1.937. 
(1) Specification other than the claims. 
Changes to the specification, other than to the claims, 
must be made by submission of the entire text of an 
added or rewritten paragraph including markings pursuant 
to paragraph (f) of this section, except that an 
entire paragraph may be deleted by a statement deleting 
the paragraph, without presentation of the text of 
the paragraph. The precise point in the specification 
must be identified where any added or rewritten paragraph 
is located. This paragraph applies whether the 
amendment is submitted on paper or compact disc 
(see §§ 1.96 and 1.825). 
(2) Claims. An amendment paper must 
include the entire text of each patent claim which is 
being proposed to be changed by such amendment 
paper and of each new claim being proposed to be 
added by such amendment paper. For any claim 
changed by the amendment paper, a parenthetical 
expression “amended,” “twice amended,” etc., should 
follow the claim number. Each patent claim proposed 
to be changed and each proposed added claim must 
include markings pursuant to paragraph (f) of this section, 
except that a patent claim or proposed added 
claim should be canceled by a statement canceling the 
claim, without presentation of the text of the claim. 
(3) Drawings. Any change to the patent 
drawings must be submitted as a sketch on a separate 
paper showing the proposed changes in red for 
approval by the examiner. Upon approval of the 
changes by the examiner, only new sheets of drawings 
including the changes and in compliance with § 1.84 
must be filed. Amended figures must be identified as 


“Amended,” and any added figure must be identified 
as “New.” In the event a figure is canceled, the figure 
must be surrounded by brackets and identified as 
“Canceled.” 

(4) The formal requirements for papers making 
up the reexamination proceeding other than those 
set forth in this section are set out in § 1.52. 
(e) Status of claims and support for claim 
changes. Whenever there is an amendment to the 
claims pursuant to paragraph (d) of this section, there 
must also be supplied, on pages separate from the pages 
containing the changes, the status (i.e., pending or 
canceled), as of the date of the amendment, of all 
patent claims and of all added claims, and an explanation 
of the support in the disclosure of the patent for the 
changes to the claims made by the amendment paper. 
(f) Changes shown by markings. Any changes 
relative to the patent being reexamined which are 
made to the specification, including the claims, must 
include the following markings: 
(1) The matter to be omitted by the reexamination 
proceeding must be enclosed in brackets; and 
(2) The matter to be added by the reexamination 
proceeding must be underlined. 
(g) Numbering of patent claims preserved. 
Patent claims may not be renumbered. The numbering 
of any claims added in the reexamination proceeding 
must follow the number of the highest numbered 
patent claim. 
(h) Amendment of disclosure may be required. 
The disclosure must be amended, when required by 
the Office, to correct inaccuracies of description and 
definition, and to secure substantial correspondence 
between the claims, the remainder of the specification, 
and the drawings. 
(i) Amendments made relative to patent. All 
amendments must be made relative to the patent specification, 
including the claims, and drawings, which 
are in effect as of the date of filing the request for 
reexamination. 
(j) No enlargement of claim scope. No amendment 
may enlarge the scope of the claims of the patent 
or introduce new matter. No amendment may be proposed 
for entry in an expired patent. Moreover, no 
amendment, other than the cancellation of claims, will 
be incorporated into the patent by a certificate issued 
after the expiration of the patent. 


 

(k) Amendments not effective until certificate. 
Although the Office actions will treat proposed 
amendments as though they have been entered, the 
proposed amendments will not be effective until the 
reexamination certificate is issued. 
(l) Correction of inventorship in an ex parte or 
inter partes reexamination proceeding. 
(1) When it appears in a patent being reexamined 
that the correct inventor or inventors were not 
named through error without deceptive intention on 
the part of the actual inventor or inventors, the Director 
may, on petition of all the parties set forth in 
§ 1.324(b)(1)-(3), including the assignees, and satisfactory 
proof of the facts and payment of the fee set 
forth in § 1.20(b), or on order of a court before which 
such matter is called in question, include in the reexamination 
certificate to be issued under § 1.570 or 
§ 1.977 an amendment naming only the actual inventor 
or inventors. The petition must be submitted as 
part of the reexamination proceeding and must satisfy 
the requirements of § 1.324. 
(2) Notwithstanding the preceding paragraph 
(1)(1) of this section, if a petition to correct 
inventorship satisfying the requirements of § 1.324 is 
filed in a reexamination proceeding, and the reexamination 
proceeding is terminated other than by a reexamination 
certificate under § 1.570 or § 1.977, a 
certificate of correction indicating the change of 
inventorship stated in the petition will be issued upon 
request by the patentee. 


[46 FR 29186, May 29, 1981, effective July 1, 1981; 
para. (d) revised, para. (e) removed, 62 FR 53131, Oct. 10, 
1997, effective Dec. 1, 1997; heading and para. (d) revised, 
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. 

(e) through (l) added, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; heading, paras. (a)-(c), para. (d) introductory 
text and para. (l) revised, 65 FR 76756, Dec. 7, 2000, effective 
Feb. 5, 2001; para. (l)(1) revised, 68 FR 14332, Mar. 
25, 2003, effective May 1, 2003] 

§ 1.535 Reply by third party requester in ex parte 
reexamination.

 A reply to the patent owner’s statement under 
§ 1.530 may be filed by the ex parte reexamination 
requester within two months from the date of service 
of the patent owner’s statement. Any reply by the ex 
parte requester must be served upon the patent owner 
in accordance with § 1.248. If the patent owner does 
not file a statement under § 1.530, no reply or other 
submission from the ex parte reexamination requester 
will be considered. 

[46 FR 29186, May 29, 1981, effective July 1, 1981; 
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001] 

§ 1.540 Consideration of responses in ex parte 
reexamination. 

The failure to timely file or serve the documents 
set forth in § 1.530 or in § 1.535 may result in their 
being refused consideration. No submissions other 
than the statement pursuant to § 1.530 and the reply 
by the ex parte reexamination requester pursuant to 
§ 1.535 will be considered prior to examination. 

[46 FR 29186, May 29, 1981, effective July 1, 1981; 
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001] 

§ 1.550 Conduct of ex parte reexamination proceedings. 

(a) All ex parte reexamination proceedings, 
including any appeals to the Board of Patent Appeals 
and Interferences, will be conducted with special dispatch 
within the Office. After issuance of the ex parte 
reexamination order and expiration of the time for 
submitting any responses, the examination will be 
conducted in accordance with §§ 1.104 through 1.116 
and will result in the issuance of an ex parte reexamination 
certificate under § 1.570. 
(b) The patent owner in an ex parte reexamination 
proceeding will be given at least thirty days 
to respond to any Office action. In response to any 
rejection, such response may include further statements 
and/or proposed amendments or new claims to 
place the patent in a condition where all claims, if 
amended as proposed, would be patentable. 
(c) The time for taking any action by a patent 
owner in an ex parte reexamination proceeding will 
be extended only for sufficient cause and for a reasonable 
time specified. Any request for such extension 
must be filed on or before the day on which action by 
the patent owner is due, but in no case will the mere 
filing of a request effect any extension. Any request 
for such extension must be accompanied by the petition 
fee set forth in § 1.17(g). See § 1.304(a) for 
extensions of time for filing a notice of appeal to the 


U.S. Court of Appeals for the Federal Circuit or for 
commencing a civil action. 

 

(d) If the patent owner fails to file a timely and 
appropriate response to any Office action or any written 
statement of an interview required under 
§ 1.560(b), the ex parte reexamination proceeding 
will be terminated, and the Director will proceed to 
issue a certificate under § 1.570 in accordance with 
the last action of the Office. 
(e) If a response by the patent owner is not 
timely filed in the Office, 
(1) The delay in filing such response may be 
excused if it is shown to the satisfaction of the Director 
that the delay was unavoidable; a petition to accept 
an unavoidably delayed response must be filed in 
compliance with § 1.137(a); or 
(2) The response may nevertheless be 
accepted if the delay was unintentional; a petition to 
accept an unintentionally delayed response must be 
filed in compliance with § 1.137(b). 
(f) The reexamination requester will be sent 
copies of Office actions issued during the ex parte 
reexamination proceeding. After filing of a request for 
ex parte reexamination by a third party requester, any 
document filed by either the patent owner or the third 
party requester must be served on the other party in 
the reexamination proceeding in the manner provided 
by § 1.248. The document must reflect service or the 
document may be refused consideration by the Office. 
(g) The active participation of the ex parte reexamination 
requester ends with the reply pursuant to 
§ 1.535, and no further submissions on behalf of the 
reexamination requester will be acknowledged or considered. 
Further, no submissions on behalf of any 
third parties will be acknowledged or considered 
unless such submissions are: 
(1) in accordance with § 1.510 or § 1.535; or 


(2) entered in the patent file prior to the date 
of the order for ex parte reexamination pursuant to 
§ 1.525. 
(h) Submissions by third parties, filed after the 
date of the order for ex parte reexamination pursuant 
to § 1.525, must meet the requirements of and will be 
treated in accordance with § 1.501(a). 


[46 FR 29186, May 29, 1981, effective July 1, 1981; 
para. (c), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; 
para. (a), 49 FR 48416, Dec. 12, 1984, effective Feb. 11, 
1985; para. (c), 54 FR 29553, July 13, 1989, effective Aug. 
20, 1989; paras. (a), (b), & (e) revised, 62 FR 53131, Oct. 
10, 1997, effective Dec. 1, 1997; paras. (a) and (b) revised, 
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; 
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; 
paras. (d) & (e)(1) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; para. (c) revised, 69 FR 56481, 
Sept. 21, 2004, effective Nov. 22, 2004] 

§ 1.552 Scope of reexamination in ex parte reexamination proceedings. 

(a) Claims in an ex parte reexamination proceeding 
will be examined on the basis of patents or 
printed publications and, with respect to subject matter 
added or deleted in the reexamination proceeding, 
on the basis of the requirements of 35 U.S.C. 112. 
(b) Claims in an ex parte reexamination proceeding 
will not be permitted to enlarge the scope of 
the claims of the patent. 
(c) Issues other than those indicated in paragraphs 
(a) and (b) of this section will not be resolved 
in a reexamination proceeding. If such issues are 
raised by the patent owner or third party requester 
during a reexamination proceeding, the existence of 
such issues will be noted by the examiner in the next 
Office action, in which case the patent owner may 
consider the advisability of filing a reissue application 
to have such issues considered and resolved. 


[46 FR 29186, May 29, 1981, effective July 1, 1981; 
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001] 

§ 1.555 Information material to patentability in 

ex parte reexamination and inter partes 

reexamination proceedings. 

(a) A patent by its very nature is affected with a 
public interest. The public interest is best served, and 
the most effective reexamination occurs when, at the 
time a reexamination proceeding is being conducted, 
the Office is aware of and evaluates the teachings of 
all information material to patentability in a reexamination 
proceeding. Each individual associated with 
the patent owner in a reexamination proceeding has a 
duty of candor and good faith in dealing with the 
Office, which includes a duty to disclose to the Office 
all information known to that individual to be material 
to patentability in a reexamination proceeding. The 
individuals who have a duty to disclose to the Office 
all information known to them to be material to patentability 
in a reexamination proceeding are the patent 
owner, each attorney or agent who represents the 
patent owner, and every other individual who is sub-

 

stantively involved on behalf of the patent owner in a 
reexamination proceeding. The duty to disclose the 
information exists with respect to each claim pending 
in the reexamination proceeding until the claim is 
cancelled. Information material to the patentability 
of a cancelled claim need not be submitted if the 
information is not material to patentability of any 
claim remaining under consideration in the reexamination 
proceeding. The duty to disclose all information 
known to be material to patentability in a 
reexamination proceeding is deemed to be satisfied if 
all information known to be material to patentability 
of any claim in the patent after issuance of the reexamination 
certificate was cited by the Office or submitted 
to the Office in an information disclosure 

statement. However, the duties of candor, good faith, 
and disclosure have not been complied with if any 
fraud on the Office was practiced or attempted or the 
duty of disclosure was violated through bad faith or 
intentional misconduct by, or on behalf of, the patent 
owner in the reexamination proceeding. Any information 
disclosure statement must be filed with the items 
listed in § 1.98(a) as applied to individuals associated 
with the patent owner in a reexamination proceeding, 
and should be filed within two months of the date of 
the order for reexamination, or as soon thereafter as 
possible. 

(b) Under this section, information is material 
to patentability in a reexamination proceeding when it 
is not cumulative to information of record or being 
made of record in the reexamination proceeding, and 
(1) It is a patent or printed publication that 
establishes, by itself or in combination with other patents 
or printed publications, a prima facie case of 
unpatentability of a claim; or 
(2) It refutes, or is inconsistent with, a position 
the patent owner takes in: 
(i) Opposing an argument of unpatentability 
relied on by the Office, or 
(ii) Asserting an argument of patentability. 
A prima facie case of unpatentability of a claim 
pending in a reexamination proceeding is established 
when the information compels a conclusion that a 
claim is unpatentable under the preponderance of evidence, 
burden-of-proof standard, giving each term in 
the claim its broadest reasonable construction consis


tent with the specification, and before any consideration 
is given to evidence which may be submitted in 
an attempt to establish a contrary conclusion of patentability. 


(c) The responsibility for compliance with this 
section rests upon the individuals designated in paragraph 
(a) of this section and no evaluation will be 
made by the Office in the reexamination proceeding 
as to compliance with this section. If questions of 
compliance with this section are raised by the patent 
owner or the third party requester during a reexamination 
proceeding, they will be noted as unresolved 
questions in accordance with § 1.552(c). 

[46 FR 29187, May 29, 1981, effective July 1, 1981; 
47 FR 21752, May 19, 1982, effective July 1, 1982; paras. 

(a) and (b), 49 FR 556, Jan. 4, 1984, effective Apr. 1, 1984; 
revised 57 FR 2021, Jan. 17, 1992, effective Mar. 16, 1992; 
heading and para. (c) revised, 65 FR 76756, Dec. 7, 2000, 
effective Feb. 5, 2001] 

§ 1.560 Interviews in ex parte reexamination proceedings. 

(a) Interviews in ex parte reexamination proceedings 
pending before the Office between examiners 
and the owners of such patents or their attorneys 
or agents of record must be conducted in the Office at 
such times, within Office hours, as the respective 
examiners may designate. Interviews will not be permitted 
at any other time or place without the authority 
of the Director. Interviews for the discussion of the 
patentability of claims in patents involved in ex parte 
reexamination proceedings will not be conducted 
prior to the first official action. Interviews should be 
arranged in advance. Requests that reexamination 
requesters participate in interviews with examiners 
will not be granted. 
(b) In every instance of an interview with an 
examiner in an ex parte reexamination proceeding, a 
complete written statement of the reasons presented at 
the interview as warranting favorable action must be 
filed by the patent owner. An interview does not 
remove the necessity for response to Office actions as 
specified in § 1.111. Patent owner’s response to an 
outstanding Office action after the interview does not 
remove the necessity for filing the written statement. 
The written statement must be filed as a separate part 
of a response to an Office action outstanding at the 
time of the interview, or as a separate paper within 
one month from the date of the interview, whichever 
is later. 


 

[46 FR 29187, May 29, 1981, effective July 1, 1981; 
revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; 
para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 1.565 Concurrent office proceedings which 
include an ex parte reexamination proceeding. 

(a) In an ex parte reexamination proceeding 
before the Office, the patent owner must inform the 
Office of any prior or concurrent proceedings in 
which the patent is or was involved such as interferences, 
reissues, ex parte reexaminations, inter partes 
reexaminations, or litigation and the results of such 
proceedings. See § 1.985 for notification of prior or 
concurrent proceedings in an inter partes reexamination 
proceeding. 
(b) If a patent in the process of ex parte reexamination 
is or becomes involved in litigation, the Director 
shall determine whether or not to suspend the 
reexamination. See § 1.987 for inter partes reexamination 
proceedings. 
(c) If ex parte reexamination is ordered while a 
prior ex parte reexamination proceeding is pending 
and prosecution in the prior ex parte reexamination 
proceeding has not been terminated, the ex parte reexamination 
proceedings will be consolidated and result 
in the issuance of a single certificate under § 1.570. 
For merger of inter partes reexamination proceedings, 
see § 1.989(a). For merger of ex parte reexamination 
and inter partes reexamination proceedings, see 
§ 1.989(b). 
(d) If a reissue application and an ex parte reexamination 
proceeding on which an order pursuant to 
§ 1.525 has been mailed are pending concurrently on 
a patent, a decision will normally be made to merge 
the two proceedings or to suspend one of the two proceedings. 
Where merger of a reissue application and 
an ex parte reexamination proceeding is ordered, the 
merged examination will be conducted in accordance 
with §§ 1.171 through 1.179, and the patent owner 
will be required to place and maintain the same claims 
in the reissue application and the ex parte reexamination 
proceeding during the pendency of the merged 
proceeding. The examiner’s actions and responses by 
the patent owner in a merged proceeding will apply to 
both the reissue application and the ex parte reexamination 
proceeding and be physically entered into both 


files. Any ex parte reexamination proceeding merged 
with a reissue application shall be terminated by the 
grant of the reissued patent. For merger of a reissue 
application and an inter partes reexamination, see 
§1.991. 

(e) If a patent in the process of ex parte reexamination 
is or becomes involved in an interference, the 
Director may suspend the reexamination or the interference. 
The Director will not consider a request to 
suspend an interference unless a motion (§ 
41.121(a)(3) of this title) to suspend the interference 
has been presented to, and denied by, an administrative 
patent judge, and the request is filed within ten 
(10) days of a decision by an administrative patent 
judge denying the motion for suspension or such other 
time as the administrative patent judge may set. For 
concurrent inter partes reexamination and interference 
of a patent, see § 1.993. 


[46 FR 29187, May 29, 1981, effective July 1, 1981; 
paras. (b) and (d), 47 FR 21753, May 19, 1982, effective 
July 1, 1982; paras. (b) & (e), 49 FR 48416, Dec. 12, 1984, 
50 FR 23123, May 31, 1985, effective Feb. 11, 1985; para 

(a) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; paras. (b) & (e) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; para. (e) revised, 69 FR 49959, Aug. 
12, 2004, effective Sept. 13, 2004] 

CERTIFICATE 

§ 1.570 Issuance of ex parte reexamination certif

icate after ex parte reexamination pro

ceedings. 

(a) Upon the conclusion of ex parte reexamination 
proceedings, the Director will issue an ex parte 
reexamination certificate in accordance with 
35 U.S.C. 307 setting forth the results of the ex parte 
reexamination proceeding and the content of the 
patent following the ex parte reexamination proceeding. 
(b) An ex parte reexamination certificate will 
be issued in each patent in which an ex parte reexamination 
proceeding has been ordered under § 1.525 and 
has not been merged with any inter partes reexamination 
proceeding pursuant to § 1.989(a). Any statutory 
disclaimer filed by the patent owner will be made part 
of the ex parte reexamination certificate. 


 

(c) The ex parte reexamination certificate will 
be mailed on the day of its date to the patent owner at 
the address as provided for in § 1.33(c). A copy of the 
ex parte reexamination certificate will also be mailed 
to the requester of the ex parte reexamination proceeding. 
(d) If an ex parte reexamination certificate has 
been issued which cancels all of the claims of the 
patent, no further Office proceedings will be conducted 
with that patent or any reissue applications or 
any reexamination requests relating thereto. 
(e) If the ex parte reexamination proceeding is 
terminated by the grant of a reissued patent as provided 
in § 1.565(d), the reissued patent will constitute 
the ex parte reexamination certificate required by this 
section and 35 U.S.C. 307. 
(f) A notice of the issuance of each ex parte 
reexamination certificate under this section will be 
published in the Official Gazette on its date of issuance. 


[46 FR 29187, May 29, 1981, effective July 1, 1981; 
para. (e), 47 FR 21753, May 19, 1982, effective July 1, 
1982; revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

Subpart E — [Reserved] 

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). 

(a) A patent, other than for designs, issued on 
an application filed on or after June 8, 1995, is entitled 
to extension of the patent term if the issuance of 
the patent was delayed due to: 
(1) Interference proceedings under 35 U.S.C. 
135(a); and/or 
(2) The application being placed under a 
secrecy order under 35 U.S.C. 181; and/or 


(3) Appellate review by the Board of Patent 
Appeals and Interferences or by a Federal court under 
35 U.S.C. 141 or 145, if the patent was issued pursuant 
to a decision in the review reversing an adverse 
determination of patentability and if the patent is not 
subject to a terminal disclaimer due to the issuance of 
another patent claiming subject matter that is not patentably 
distinct from that under appellate review. If an 
application is remanded by a panel of the Board of 
Patent Appeals and Interferences and the remand is 
the last action by a panel of the Board of Patent 
Appeals and Interferences prior to the mailing of a 
notice of allowance under 35 U.S.C. 151 in the application, 
the remand shall be considered a decision in 
the review reversing an adverse determination of patentability 
as that phrase is used in 35 U.S.C. 154(b)(2) 
as amended by section 532(a) of the Uruguay Round 
Agreements Act, Public Law 103-465, 108 Stat. 4809, 
4983-85 (1994), and a final decision in favor of the 
applicant under paragraph (c)(3) of this section. A 
remand by a panel of the Board of Patent Appeals and 
Interferences shall not be considered a decision in the 
review reversing an adverse determination of patentability 
as provided in this paragraph if there is filed a 
request for continued examination under 35 U.S.C. 
132(b) that was not first preceded by the mailing, after 
such remand, of at least one of an action under 35 

U.S.C. 132 or a notice of allowance under 35 U.S.C. 

151. 

(b) The term of a patent entitled to extension 
under paragraph (a) of this section shall be extended 
for the sum of the periods of delay calculated under 
paragraphs (c)(1), (c)(2), (c)(3) and (d) of this section, 
to the extent that these periods are not overlapping, up 
to a maximum of five years. The extension will run 
from the expiration date of the patent. 
(c)(1) The period of delay under paragraph 
(a)(1) of this section for an application is the sum of 
the following periods, to the extent that the periods 
are not overlapping: 


(i) With respect to each interference in 
which the application was involved, the number of 
days, if any, in the period beginning on the date the 
interference was declared or redeclared to involve the 
application in the interference and ending on the date 
that the interference was terminated with respect to 
the application; and 


 

(ii) The number of days, if any, in the 
period beginning on the date prosecution in the application 
was suspended by the Patent and Trademark 
Office due to interference proceedings under 
35 U.S.C. 135(a) not involving the application and 
ending on the date of the termination of the suspension. 
(2) The period of delay under paragraph 
(a)(2) of this section for an application is the sum of 
the following periods, to the extent that the periods 
are not overlapping: 
(i) The number of days, if any, the application 
was maintained in a sealed condition under 
35 U.S.C. 181; 
(ii) The number of days, if any, in the 
period beginning on the date of mailing of an examiner’s 
answer under § 41.39 of this title in the application 
under secrecy order and ending on the date the 
secrecy order and any renewal thereof was removed; 


(iii) The number of days, if any, in the 
period beginning on the date applicant was notified 
that an interference would be declared but for the 
secrecy order and ending on the date the secrecy order 
and any renewal thereof was removed; and 

(iv) The number of days, if any, in the 
period beginning on the date of notification under 
§ 5.3(c) and ending on the date of mailing of the 
notice of allowance under § 1.311. 
(3) The period of delay under paragraph 
(a)(3) of this section is the sum of the number of days, 
if any, in the period beginning on the date on which an 
appeal to the Board of Patent Appeals and Interferences 
was filed under 35 U.S.C. 134 and ending on 
the date of a final decision in favor of the applicant by 
the Board of Patent Appeals and Interferences or by a 
Federal court in an appeal under 35 U.S.C. 141 or a 
civil action under 35 U.S.C. 145. 
(d) The period of delay set forth in paragraph 
(c)(3) shall be reduced by: 
(1) Any time during the period of appellate 
review that occurred before three years from the filing 
of the first national application for patent presented 
for examination; and 
(2) Any time during the period of appellate 
review, as determined by the Director, during which 
the applicant for patent did not act with due diligence. 
In determining the due diligence of an applicant, the 
Director may examine the facts and circumstances of 


the applicant’s actions during the period of appellate 
review to determine whether the applicant exhibited 
that degree of timeliness as may reasonably be 
expected from, and which is ordinarily exercised by, a 
person during a period of appellate review. 

(e) The provisions of this section apply only to 
original patents, except for design patents, issued on 
applications filed on or after June 8, 1995, and before 
May 29, 2000. 

[Added, 60 FR 20195, Apr. 25, 1995, effective June 8, 
1995; para. (e) added, 65 FR 56366, Sept. 18, 2000, effective 
Oct. 18, 2000; para. (d)(2) revised, 68 FR 14332, Mar. 
25, 2003, effective May 1, 2003; para. (a)(3) revised, 69 FR 
21704, Apr. 22, 2004, effective May 24, 2004; para. 
(c)(2)(ii) revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004] 

§ 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). 

(a) Failure to take certain actions within specified time frames. Subject to the provisions of 
35 U.S.C. 154(b) and this subpart, the term of an original 
patent shall be adjusted if the issuance of the 
patent was delayed due to the failure of the Office to: 
(1) Mail at least one of a notification under 
35 U.S.C. 132 or a notice of allowance under 
35 U.S.C. 151 not later than fourteen months after the 
date on which the application was filed under 
35 U.S.C. 111(a) or fulfilled the requirements of 
35 U.S.C. 371 in an international application; 
(2) Respond to a reply under 35 U.S.C. 132 
or to an appeal taken under 35 U.S.C. 134 not later 
than four months after the date on which the reply was 
filed or the appeal was taken; 
(3) Act on an application not later than four 
months after the date of a decision by the Board of 
Patent Appeals and Interferences under 35 U.S.C. 134 
or 135 or a decision by a Federal court under 
35 U.S.C. 141, 145, or 146 where at least one allowable 
claim remains in the application; or 
(4) Issue a patent not later than four months 
after the date on which the issue fee was paid under 
35 U.S.C. 151 and all outstanding requirements were 
satisfied. 


 

(b) Failure to issue a patent within three years 
of the actual filing date of the application. Subject to 
the provisions of 35 U.S.C. 154(b) and this subpart, 
the term of an original patent shall be adjusted if the 
issuance of the patent was delayed due to the failure 
of the Office to issue a patent within three years after 
the date on which the application was filed under 
35 U.S.C. 111(a) or the national stage commenced 
under 35 U.S.C. 371(b) or (f) in an international application, 
but not including: 
(1) Any time consumed by continued examination 
of the application under 35 U.S.C. 132(b); 
(2) Any time consumed by an interference 
proceeding under 35 U.S.C. 135(a); 
(3) Any time consumed by the imposition of 
a secrecy order under 35 U.S.C. 181; 
(4) Any time consumed by review by the 
Board of Patent Appeals and Interferences or a Federal 
court; or 
(5) Any delay in the processing of the application 
by the Office that was requested by the applicant. 
(c) Delays caused by interference proceedings. 
Subject to the provisions of 35 U.S.C. 154(b) and this 
subpart, the term of an original patent shall be 
adjusted if the issuance of the patent was delayed due 
to interference proceedings under 35 U.S.C. 135(a). 
(d) Delays caused by secrecy order. Subject to 
the provisions of 35 U.S.C. 154(b) and this subpart, 
the term of an original patent shall be adjusted if 
the issuance of the patent was delayed due to the 
application being placed under a secrecy order under 
35 U.S.C. 181. 
(e) Delays caused by successful appellate 
review. Subject to the provisions of 35 U.S.C. 154(b) 
and this subpart, the term of an original patent shall be 
adjusted if the issuance of the patent was delayed due 
to review by the Board of Patent Appeals and Interferences 
under 35 U.S.C. 134 or by a Federal court under 
35 U.S.C. 141 or 145, if the patent was issued under a 
decision in the review reversing an adverse determination 
of patentability. If an application is remanded 
by a panel of the Board of Patent Appeals and Interferences 
and the remand is the last action by a panel 
of the Board of Patent Appeals and Interferences prior 
to the mailing of a notice of allowance under 35 


U.S.C. 151 in the application, the remand shall be 
considered a decision by the Board of Patent Appeals 
and Interferences as that phrase is used in 35 U.S.C. 
154(b)(1)(A)(iii), a decision in the review reversing 
an adverse determination of patentability as that 
phrase is used in 35 U.S.C. 154(b)(1)(C)(iii), and a 
final decision in favor of the applicant under § 
1.703(e). A remand by a panel of the Board of Patent 
Appeals and Interferences shall not be considered a 
decision in the review reversing an adverse determination 
of patentability as provided in this paragraph if 
there is filed a request for continued examination 
under 35 U.S.C. 132(b) that was not first preceded by 
the mailing, after such remand, of at least one of an 
action under 35 U.S.C. 132 or a notice of allowance 
under 35 U.S.C. 151. 

(f) The provisions of this section and §§1.703 
through 1.705 apply only to original applications, 
except applications for a design patent, filed on or 
after May 29, 2000, and patents issued on such applications. 


[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 
18, 2000; para. (e) revised, 69 FR 21704, Apr. 22, 2004, 
effective May 24, 2004] 

§ 1.703 Period of adjustment of patent term due 
to examination delay. 

(a) The period of adjustment under § 1.702(a) 
is the sum of the following periods: 
(1) The number of days, if any, in the period 
beginning on the day after the date that is fourteen 
months after the date on which the application was 
filed under 35 U.S.C. 111(a) or fulfilled the requirements 
of 35 U.S.C. 371 and ending on the date of 
mailing of either an action under 35 U.S.C. 132, or a 
notice of allowance under 35 U.S.C. 151, whichever 
occurs first; 
(2) The number of days, if any, in the period 
beginning on the day after the date that is four months 
after the date a reply under § 1.111 was filed and ending 
on the date of mailing of either an action under 
35 U.S.C. 132, or a notice of allowance under 35 


U.S.C. 151, whichever occurs first; 

(3) The number of days, if any, in the period 
beginning on the day after the date that is four months 
after the date a reply in compliance with § 1.113(c) 
was filed and ending on the date of mailing of either 
an action under 35 U.S.C. 132, or a notice of allowance 
under 35 U.S.C. 151, whichever occurs first; 

 

(4) The number of days, if any, in the period 
beginning on the day after the date that is four months 
after the date an appeal brief in compliance with § 

41.37 of this title was filed and ending on the date of 
mailing of any of an examiner’s answer under § 41.39 
of this title, an action under 35 U.S.C. 132, or a notice 
of allowance under 35 U.S.C. 151, whichever occurs 
first; 

(5) The number of days, if any, in the period 
beginning on the day after the date that is four months 
after the date of a final decision by the Board of 
Patent Appeals and Interferences or by a Federal court 
in an appeal under 35 U.S.C. 141 or a civil action 
under 35 U.S.C. 145 or 146 where at least one allowable 
claim remains in the application and ending on 
the date of mailing of either an action under 35 U.S.C. 
132 or a notice of allowance under 35 U.S.C. 151, 
whichever occurs first; and 
(6) The number of days, if any, in the period 
beginning on the day after the date that is four months 
after the date the issue fee was paid and all outstanding 
requirements were satisfied and ending on the 
date a patent was issued. 
(b) The period of adjustment under § 1.702(b) 
is the number of days, if any, in the period beginning 
on the day after the date that is three years after the 
date on which the application was filed under 
35 U.S.C. 111(a) or the national stage commenced 
under 35 U.S.C. 371(b) or (f) in an international 
application and ending on the date a patent was 
issued, but not including the sum of the following 
periods: 
(1) The number of days, if any, in the period 
beginning on the date on which a request for continued 
examination of the application under 35 U.S.C. 
132(b) was filed and ending on the date the patent was 
issued; 
(2)(i) The number of days, if any, in the 
period beginning on the date an interference was 
declared or redeclared to involve the application in 
the interference and ending on the date that the interference 
was terminated with respect to the application; 
and 


(ii) The number of days, if any, in 
the period beginning on the date prosecution in the 
application was suspended by the Office due to interference 
proceedings under 35 U.S.C. 135(a) not 


involving the application and ending on the date of 
the termination of the suspension; 

(3)(i) The number of days, if any, the application 
was maintained in a sealed condition under 
35 U.S.C. 181; 

(ii) The number of days, if any, in the 
period beginning on the date of mailing of an examiner’s 
answer under § 41.39 of this title in the application 
under secrecy order and ending on the date the 
secrecy order was removed; 

(iii) The number of days, if any, in the 
period beginning on the date applicant was notified 
that an interference would be declared but for the 
secrecy order and ending on the date the secrecy order 
was removed; and 

(iv) The number of days, if any, in the 
period beginning on the date of notification under 
§ 5.3(c) of this chapter and ending on the date of mailing 
of the notice of allowance under 35 U.S.C. 151; 
and, 
(4) The number of days, if any, in the period 
beginning on the date on which a notice of appeal to 
the Board of Patent Appeals and Interferences was 
filed under 35 U.S.C. 134 and § 41.31 of this title and 
ending on the date of the last decision by the Board of 
Patent Appeals and Interferences or by a Federal court 
in an appeal under 35 U.S.C. 141 or a civil action 
under 35 U.S.C. 145, or on the date of mailing of 
either an action under 35 U.S.C. 132, or a notice of 
allowance under 35 U.S.C. 151, whichever occurs 
first, if the appeal did not result in a decision by the 
Board of Patent Appeals and Interferences. 
(c) The period of adjustment under § 1.702(c) 
is the sum of the following periods, to the extent that 
the periods are not overlapping: 
(1) The number of days, if any, in the period 
beginning on the date an interference was declared or 
redeclared to involve the application in the interference 
and ending on the date that the interference was 
terminated with respect to the application; and 
(2) The number of days, if any, in the period 
beginning on the date prosecution in the application 
was suspended by the Office due to interference proceedings 
under 35 U.S.C. 135(a) not involving the 
application and ending on the date of the termination 
of the suspension. 


 

(d) The period of adjustment under § 1.702(d) 
is the sum of the following periods, to the extent that 
the periods are not overlapping: 
(1) The number of days, if any, the application 
was maintained in a sealed condition under 
35 U.S.C. 181; 
(2) The number of days, if any, in the period 
beginning on the date of mailing of an examiner’s 
answer under § 41.39 of this title in the application 
under secrecy order and ending on the date the 
secrecy order was removed; 
(3) The number of days, if any, in the period 
beginning on the date applicant was notified that an 
interference would be declared but for the secrecy 
order and ending on the date the secrecy order was 
removed; and 
(4) The number of days, if any, in the period 
beginning on the date of notification under § 5.3(c) of 
this chapter and ending on the date of mailing of the 
notice of allowance under 35 U.S.C. 151. 
(e) The period of adjustment under § 1.702(e) 
is the sum of the number of days, if any, in the period 
beginning on the date on which a notice of appeal to 
the Board of Patent Appeals and Interferences was 
filed under 35 U.S.C. 134 and § 41.31 of this title and 
ending on the date of a final decision in favor of the 
applicant by the Board of Patent Appeals and Interferences 
or by a Federal court in an appeal under 35 


U.S.C. 141 or a civil action under 35 U.S.C. 145. 

(f) The adjustment will run from the expiration 
date of the patent as set forth in 35 U.S.C. 154(a)(2). 
To the extent that periods of delay attributable to the 
grounds specified in §1.702 overlap, the period of 
adjustment granted under this section shall not exceed 
the actual number of days the issuance of the patent 
was delayed. The term of a patent entitled to adjustment 
under § 1.702 and this section shall be adjusted 
for the sum of the periods calculated under paragraphs 
(a) through (e) of this section, to the extent that such 
periods are not overlapping, less the sum of the periods 
calculated under § 1.704. The date indicated on 
any certificate of mailing or transmission under § 1.8 
shall not be taken into account in this calculation. 
(g) No patent, the term of which has been disclaimed 
beyond a specified date, shall be adjusted 
under § 1.702 and this section beyond the expiration 
date specified in the disclaimer. 


[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 
18, 2000; para. (f) revised, 69 FR 21704, Apr. 22, 2004, 
effective May 24, 2004; paras. (a)(4), (b)(3)(ii), (b)(4), 
(d)(2), and (e) revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004] 

§ 1.704 Reduction of period of adjustment of 
patent term. 

(a) The period of adjustment of the term of a 
patent under § 1.703(a) through (e) shall be reduced 
by a period equal to the period of time during which 
the applicant failed to engage in reasonable efforts to 
conclude prosecution (processing or examination) of 
the application. 
(b) With respect to the grounds for adjustment 
set forth in §§ 1.702(a) through (e), and in particular 
the ground of adjustment set forth in § 1.702(b), an 
applicant shall be deemed to have failed to engage in 
reasonable efforts to conclude processing or examination 
of an application for the cumulative total of any 
periods of time in excess of three months that are 
taken to reply to any notice or action by the Office 
making any rejection, objection, argument, or other 
request, measuring such three-month period from the 
date the notice or action was mailed or given to the 
applicant, in which case the period of adjustment set 
forth in § 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date that is 
three months after the date of mailing or transmission 
of the Office communication notifying the applicant 
of the rejection, objection, argument, or other request 
and ending on the date the reply was filed. The period, 
or shortened statutory period, for reply that is set in 
the Office action or notice has no effect on the three-
month period set forth in this paragraph. 
(c) Circumstances that constitute a failure of 
the applicant to engage in reasonable efforts to conclude 
processing or examination of an application 
also include the following circumstances, which will 
result in the following reduction of the period of 
adjustment set forth in § 1.703 to the extent that the 
periods are not overlapping: 
(1) Suspension of action under § 1.103 at the 
applicant’s request, in which case the period of adjustment 
set forth in § 1.703 shall be reduced by the number 
of days, if any, beginning on the date a request for 
suspension of action under § 1.103 was filed and ending 
on the date of the termination of the suspension; 


 

(2) Deferral of issuance of a patent under 
§ 1.314, in which case the period of adjustment set 
forth in § 1.703 shall be reduced by the number of 
days, if any, beginning on the date a request for deferral 
of issuance of a patent under § 1.314 was filed and 
ending on the date the patent was issued; 
(3) Abandonment of the application or late 
payment of the issue fee, in which case the period of 
adjustment set forth in §1.703 shall be reduced by the 
number of days, if any, beginning on the date of abandonment 
or the date after the date the issue fee was 
due and ending on the earlier of: 
(i) The date of mailing of the decision 
reviving the application or accepting late payment of 
the issue fee; or 
(ii) The date that is four months after the 
date the grantable petition to revive the application or 
accept late payment of the issue fee was filed; 
(4) Failure to file a petition to withdraw the 
holding of abandonment or to revive an application 
within two months from the mailing date of a notice 
of abandonment, in which case the period of adjustment 
set forth in § 1.703 shall be reduced by the number 
of days, if any, beginning on the day after the 
date two months from the mailing date of a notice of 
abandonment and ending on the date a petition to 
withdraw the holding of abandonment or to revive the 
application was filed; 
(5) Conversion of a provisional application 
under 35 U.S.C. 111(b) to a nonprovisional application 
under 35 U.S.C. 111(a) pursuant to 35 U.S.C. 
111(b)(5), in which case the period of adjustment set 
forth in § 1.703 shall be reduced by the number of 
days, if any, beginning on the date the application was 
filed under 35 U.S.C. 111(b) and ending on the date a 
request in compliance with §1.53(c)(3) to convert the 
provisional application into a nonprovisional application 
was filed; 
(6) Submission of a preliminary amendment 
or other preliminary paper less than one month before 
the mailing of an Office action under 35 U.S.C. 132 or 
notice of allowance under 35 U.S.C. 151 that requires 
the mailing of a supplemental Office action or notice 
of allowance, in which case the period of adjustment 
set forth in § 1.703 shall be reduced by the lesser of: 
(i) The number of days, if any, beginning 
on the day after the mailing date of the original Office 
action or notice of allowance and ending on the date 


of mailing of the supplemental Office action or notice 
of allowance; or 

(ii) Four months; 

(7) Submission of a reply having an omission 
(§1.135(c)), in which case the period of adjustment 
set forth in § 1.703 shall be reduced by the number of 
days, if any, beginning on the day after the date the 
reply having an omission was filed and ending on the 
date that the reply or other paper correcting the omission 
was filed; 
(8) Submission of a supplemental reply or 
other paper, other than a supplemental reply or other 
paper expressly requested by the examiner, after a 
reply has been filed, in which case the period of 
adjustment set forth in § 1.703 shall be reduced by the 
number of days, if any, beginning on the day after the 
date the initial reply was filed and ending on the date 
that the supplemental reply or other such paper was 
filed; 
(9) Submission of an amendment or other 
paper after a decision by the Board of Patent Appeals 
and Interferences, other than a decision designated as 
containing a new ground of rejection under § 41.50 
(b) of this title or statement under § 41.50(c) of this 
title, or a decision by a Federal court, less than one 
month before the mailing of an Office action under 35 


U.S.C. 132 or notice of allowance under 35 U.S.C. 
151 that requires the mailing of a supplemental Office 
action or supplemental notice of allowance, in which 
case the period of adjustment set forth in § 1.703 shall 
be reduced by the lesser of: 

(i) The number of days, if any, beginning 
on the day after the mailing date of the original Office 
action or notice of allowance and ending on the mailing 
date of the supplemental Office action or notice of 
allowance; or 
(ii) Four months; 


(10) Submission of an amendment under 
§ 1.312 or other paper after a notice of allowance has 
been given or mailed, in which case the period of 
adjustment set forth in § 1.703 shall be reduced by the 
lesser of: 
(i) The number of days, if any, beginning 
on the date the amendment under § 1.312 or other 
paper was filed and ending on the mailing date of the 
Office action or notice in response to the amendment 
under § 1.312 or such other paper; or 


 

(ii) Four months; and 

(11) Further prosecution via a continuing 
application, in which case the period of adjustment set 
forth in § 1.703 shall not include any period that is 
prior to the actual filing date of the application that 
resulted in the patent. 
(d) A paper containing only an information disclosure 
statement in compliance with §§ 1.97 and 


1.98 will not be considered a failure to engage in reasonable 
efforts to conclude prosecution (processing or 
examination) of the application under paragraphs 
(c)(6), (c)(8), (c)(9), or (c)(10) of this section if it is 
accompanied by a statement that each item of information 
contained in the information disclosure statement 
was first cited in any communication from a 
foreign patent office in a counterpart application and 
that this communication was not received by any individual 
designated in § 1.56(c) more than thirty days 
prior to the filing of the information disclosure statement. 
This thirty-day period is not extendable. 

(e) Submission of an application for patent term 
adjustment under § 1.705(b) (with or without request 
under § 1.705(c) for reinstatement of reduced patent 
term adjustment) will not be considered a failure to 
engage in reasonable efforts to conclude prosecution 
(processing or examination) of the application under 
paragraph (c)(10) of this section. 

[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 
18, 2000; para. (d) revised, 69 FR 21704, Apr. 22, 2004, 
effective May 24, 2004; para. (c)(9) revised, 69 FR 49959, 
Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.705 Patent term adjustment determination. 

(a) The notice of allowance will include notification 
of any patent term adjustment under 35 U.S.C. 
154(b). 
(b) Any request for reconsideration of the 
patent term adjustment indicated in the notice of 
allowance, except as provided in paragraph (d) of this 
section, and any request for reinstatement of all or 
part of the term reduced pursuant to § 1.704(b) must 
be by way of an application for patent term adjustment. 
An application for patent term adjustment under 
this section must be filed no later than the payment of 
the issue fee but may not be filed earlier than the date 
of mailing of the notice of allowance. An application 
for patent term adjustment under this section must be 
accompanied by: 


(1) The fee set forth in § 1.18(e); and 

(2) A statement of the facts involved, specifying: 
(i) The correct patent term adjustment and 
the basis or bases under § 1.702 for the adjustment; 
(ii) The relevant dates as specified in §§ 
1.703(a) through (e) for which an adjustment is 
sought and the adjustment as specified in § 1.703(f) to 
which the patent is entitled; 


(iii) Whether the patent is subject to a terminal 
disclaimer and any expiration date specified in 
the terminal disclaimer; and 

(iv)(A) Any circumstances during the prosecution 
of the application resulting in the patent that 
constitute a failure to engage in reasonable efforts to 
conclude processing or examination of such application 
as set forth in § 1.704; or 

(B) That there were no circumstances 
constituting a failure to engage in reasonable efforts to 
conclude processing or examination of such application 
as set forth in § 1.704. 
(c) Any application for patent term adjustment 
under this section that requests reinstatement of all or 
part of the period of adjustment reduced pursuant to § 
1.704(b) for failing to reply to a rejection, objection, 
argument, or other request within three months of the 
date of mailing of the Office communication notifying 
the applicant of the rejection, objection, argument, or 
other request must also be accompanied by: 
(1) The fee set forth in § 1.18(f); and 


(2) A showing to the satisfaction of the 
Director that, in spite of all due care, the applicant 
was unable to reply to the rejection, objection, argument, 
or other request within three months of the date 
of mailing of the Office communication notifying the 
applicant of the rejection, objection, argument, or 
other request. The Office shall not grant any request 
for reinstatement for more than three additional 
months for each reply beyond three months from the 
date of mailing of the Office communication notifying 
the applicant of the rejection, objection, argument, or 
other request. 
(d) If there is a revision to the patent term 
adjustment indicated in the notice of allowance, the 
patent will indicate the revised patent term adjustment. 
If the patent indicates or should have indicated 
a revised patent term adjustment, any request for 
reconsideration of the patent term adjustment indi-


 

cated in the patent must be filed within two months of 
the date the patent issued and must comply with the 
requirements of paragraphs (b)(1) and (b)(2) of this 
section. Any request for reconsideration under this 
section that raises issues that were raised, or could 
have been raised, in an application for patent term 
adjustment under paragraph (b) of this section shall be 
dismissed as untimely as to those issues. 

(e) The periods set forth in this section are not 
extendable. 
(f) No submission or petition on behalf of a 
third party concerning patent term adjustment under 
35 U.S.C. 154(b) will be considered by the Office. 
Any such submission or petition will be returned to 
the third party, or otherwise disposed of, at the convenience 
of the Office. 


[Added, 65 FR 56366, Sept. 18, 2000, effective Oct. 
18, 2000; para. (c)(2) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; para. (d) revised, 69 FR 21704, Apr. 
22, 2004, effective May 24, 2004] 

Subpart F — Adjustment and Extension of 
Patent Term 

EXTENSION OF PATENT TERM DUE TO
REGULATORY REVIEW


§ 1.710 Patents subject to extension of the patent 
term. 

(a) A patent is eligible for extension of the 
patent term if the patent claims a product as defined in 
paragraph (b) of this section, either alone or in combination 
with other ingredients that read on a composition 
that received permission for commercial 
marketing or use, or a method of using such a product, 
or a method of manufacturing such a product, and 
meets all other conditions and requirements of this 
subpart. 
(b) The term product referred to in paragraph 


(a) of this section means — 
(l) The active ingredient of a new human 
drug, antibiotic drug, or human biological product (as 
those terms are used in the Federal Food, Drug, and 
Cosmetic Act and the Public Health Service Act) 
including any salt or ester of the active ingredient, as a 
single entity or in combination with another active 
ingredient; or 


(2) The active ingredient of a new animal 
drug or veterinary biological product (as those terms 
are used in the Federal Food, Drug, and Cosmetic Act 
and the Virus-Serum-Toxin Act) that is not primarily 
manufactured using recombinant DNA, recombinant 
RNA, hybridoma technology, or other processes 
including site specific genetic manipulation techniques, 
including any salt or ester of the active ingredient, 
as a single entity or in combination with another 
active ingredient; or 
(3) Any medical device, food additive, or 
color additive subject to regulation under the Federal 
Food, Drug, and Cosmetic Act. 


[Added 52 FR 9394, Mar. 24, 1987, effective May 26, 
1987; amended, 54 FR 30375, July 20, 1989, effective Aug. 
22, 1989] 

§ 1.720 Conditions for extension of patent term. 

The term of a patent may be extended if: 

(a) The patent claims a product or a method of 
using or manufacturing a product as defined in 
§1.710; 
(b) The term of the patent has never been previously 
extended, except for extensions issued pursuant 
to §§ 1.701, 1.760, or 1.790; 
(c) An application for extension is submitted in 
compliance with § 1.740; 
(d) The product has been subject to a regulatory 
review period as defined in 35 U.S.C. 156(g) before 
its commercial marketing or use; 
(e) The product has received permission for 
commercial marketing or use and — 
(1) The permission for the commercial marketing 
or use of the product is the first received permission 
for commercial marketing or use under the 
provision of law under which the applicable regulatory 
review occurred, or 
(2) In the case of a patent other than one 
directed to subject matter within § 1.710(b)(2) claiming 
a method of manufacturing the product that primarily 
uses recombinant DNA technology in the 
manufacture of the product, the permission for the 
commercial marketing or use is the first received permission 
for the commercial marketing or use of a 
product manufactured under the process claimed in 
the patent, or 
(3) In the case of a patent claiming a new animal 
drug or a veterinary biological product that is not 


 

covered by the claims in any other patent that has 
been extended, and has received permission for the 
commercial marketing or use in non-food-producing 
animals and in food-producing animals, and was not 
extended on the basis of the regulatory review period 
for use in non-food-producing animals, the permission 
for the commercial marketing or use of the drug 
or product after the regulatory review period for use 
in food-producing animals is the first permitted commercial 
marketing or use of the drug or product for 
administration to a food-producing animal. 

(f) The application is submitted within the 
sixty-day period beginning on the date the product 
first received permission for commercial marketing or 
use under the provisions of law under which the applicable 
regulatory review period occurred; or in the case 
of a patent claiming a method of manufacturing the 
product which primarily uses recombinant DNA technology 
in the manufacture of the product, the application 
for extension is submitted within the sixty-day 
period beginning on the date of the first permitted 
commercial marketing or use of a product manufactured 
under the process claimed in the patent; or in the 
case of a patent that claims a new animal drug or a 
veterinary biological product that is not covered by 
the claims in any other patent that has been extended, 
and said drug or product has received permission for 
the commercial marketing or use in non-food-producing 
animals, the application for extension is submitted 
within the sixty-day period beginning on the date of 
the first permitted commercial marketing or use of the 
drug or product for administration to a food-producing 
animal; 
(g) The term of the patent, including any 
interim extension issued pursuant to § 1.790, has not 
expired before the submission of an application in 
compliance with § 1.741; and 
(h) No other patent term has been extended for 
the same regulatory review period for the product. 


[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 
1987; paras. (e) & (f) amended, 54 FR 30375, July 20, 
1989, effective Aug. 22, 1989; paras. (b) and (g) revised, 
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000] 

§ 1.730 Applicant for extension of patent term; 
signature requirements. 

(a) Any application for extension of a patent 
term must be submitted by the owner of record of the 
patent or its agent and must comply with the requirements 
of § 1.740. 

(b) If the application is submitted by the patent 
owner, the application must be signed either by: 
(1) The patent owner in compliance with § 
3.73(b) of this chapter; or 
(2) A registered practitioner on behalf of the 
patent owner. 
(c) If the application is submitted on behalf of 
the patent owner by an agent of the patent owner (e.g., 
a licensee of the patent owner), the application must 
be signed by a registered practitioner on behalf of the 
agent. The Office may require proof that the agent is 
authorized to act on behalf of the patent owner. 
(d) If the application is signed by a registered 
practitioner, the Office may require proof that the 
practitioner is authorized to act on behalf of the patent 
owner or agent of the patent owner. 


[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 
1987; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 
7, 2000] 

§ 1.740 Formal requirements for application for 
extension of patent term; correction of 
informalities. 

(a) An application for extension of patent term 
must be made in writing to the Director. A formal 
application for the extension of patent term must 
include: 
(1) A complete identification of the approved 
product as by appropriate chemical and generic name, 
physical structure or characteristics; 
(2) A complete identification of the Federal 
statute including the applicable provision of law 
under which the regulatory review occurred; 
(3) An identification of the date on which the 
product received permission for commercial marketing 
or use under the provision of law under which the 
applicable regulatory review period occurred; 
(4) In the case of a drug product, an identification 
of each active ingredient in the product and as 
to each active ingredient, a statement that it has not 
been previously approved for commercial marketing 
or use under the Federal Food, Drug, and Cosmetic 
Act, the Public Health Service Act, or the Virus-
Serum-Toxin Act, or a statement of when the active 
ingredient was approved for commercial marketing or 
use (either alone or in combination with other active 


 

ingredients), the use for which it was approved, and 
the provision of law under which it was approved. 

(5) A statement that the application is being 
submitted within the sixty day period permitted for 
submission pursuant to § l.720(f) and an identification 
of the date of the last day on which the application 
could be submitted; 
(6) A complete identification of the patent 
for which an extension is being sought by the name of 
the inventor, the patent number, the date of issue, and 
the date of expiration; 
(7) A copy of the patent for which an extension 
is being sought, including the entire specification 
(including claims) and drawings; 
(8) A copy of any disclaimer, certificate of 
correction, receipt of maintenance fee payment, or 
reexamination certificate issued in the patent; 
(9) A statement that the patent claims the 
approved product, or a method of using or manufacturing 
the approved product, and a showing which 
lists each applicable patent claim and demonstrates 
the manner in which at least one such patent claim 
reads on: 
(i) The approved product, if the listed 
claims include any claim to the approved product; 
(ii) The method of using the approved 
product, if the listed claims include any claim to the 
method of using the approved product; and 


(iii) The method of manufacturing the 
approved product, if the listed claims include any 
claim to the method of manufacturing the approved 
product; 

(10) A statement beginning on a new page of 
the relevant dates and information pursuant to 
35 U.S.C.156(g) in order to enable the Secretary of 
Health and Human Services or the Secretary of Agriculture, 
as appropriate, to determine the applicable 
regulatory review period as follows: 
(i) For a patent claiming a human drug, 
antibiotic, or human biological product: 
(A) The effective date of the investigational 
new drug (IND) application and the IND number; 
(B) The date on which a new drug application 
(NDA) or a Product License Application (PLA) 
was initially submitted and the NDA or PLA number; 
and 


(C) The date on which the NDA was 
approved or the Product License issued; 
(ii) For a patent claiming a new animal 
drug: 
(A) The date a major health or environmental 
effects test on the drug was initiated, and any 
available substantiation of that date, or the date of an 
exemption under subsection (j) of Section 512 of the 
Federal Food, Drug, and Cosmetic Act became effective 
for such animal drug; 
(B) The date on which a new animal 
drug application (NADA) was initially submitted and 
the NADA number; and 
(C) The date on which the NADA was 
approved; 


(iii) For a patent claiming a veterinary biological 
product: 

(A) The date the authority to prepare an 
experimental biological product under the Virus-
Serum-Toxin Act became effective; 
(B) The date an application for a license 
was submitted under the Virus-Serum-Toxin Act; and 
(C) The date the license issued; 


(iv) For a patent claiming a food or color 
additive: 
(A) The date a major health or environmental 
effects test on the additive was initiated and 
any available substantiation of that date; 
(B) The date on which a petition for 
product approval under the Federal Food, Drug and 
Cosmetic Act was initially submitted and the petition 
number; and 
(C) The date on which the FDA published 
a Federal Register notice listing the additive 
for use; 
(v) For a patent claiming a medical device: 


(A) The effective date of the investigational 
device exemption (IDE) and the IDE number, if 
applicable, or the date on which the applicant began 
the first clinical investigation involving the device, if 
no IDE was submitted, and any available substantiation 
of that date; 
(B) The date on which the application 
for product approval or notice of completion of a 
product development protocol under Section 515 of 
the Federal Food, Drug and Cosmetic Act was initially 
submitted and the number of the application; 
and 


 

(C) The date on which the application 
was approved or the protocol declared to be completed; 
(11) A brief description beginning on a new 
page of the significant activities undertaken by the 
marketing applicant during the applicable regulatory 
review period with respect to the approved product 
and the significant dates applicable to such activities; 
(12) A statement beginning on a new page that 
in the opinion of the applicant the patent is eligible for 
the extension and a statement as to the length of 
extension claimed, including how the length of extension 
was determined; 
(13) A statement that applicant acknowledges 
a duty to disclose to the Director of the United States 
Patent and Trademark Office and the Secretary of 
Health and Human Services or the Secretary of Agriculture 
any information which is material to the determination 
of entitlement to the extension sought (see 
§ 1.765); 
(14) The prescribed fee for receiving and acting 
upon the application for extension (see § 1.20(j)); 
and 
(15) The name, address, and telephone number 
of the person to whom inquiries and correspondence 
relating to the application for patent term 
extension are to be directed. 
(b) The application under this section must be 
accompanied by two additional copies of such application 
(for a total of three copies). 
(c) If an application for extension of patent 
term is informal under this section, the Office will so 
notify the applicant. The applicant has two months 
from the mail date of the notice, or such time as is set 
in the notice, within which to correct the informality. 
Unless the notice indicates otherwise, this time period 
may be extended under the provisions of § 1.136. 


[Added 52 FR 9395, Mar. 24, 1987, effective May 26, 
1987; para. (a) amended, 54 FR 30375, July 20, 1989, 
effective Aug. 22, 1989; para. (a)(14), 56 FR 65142, Dec. 
13, 1991, effective Dec. 16, 1991; heading, introductory 
text of paragraph (a), and paras. (a)(9), (a)(10), (a)(14), 
(a)(15), (b) and (c) revised, 65 FR 54604, Sept. 8, 2000, 
effective Sept. 8, 2000; paras. (a)(16) and (a)(17) removed, 
65 FR 54604, Sept. 8, 2000, effective Sept. 8, 2000; paras. 

(a) & (a)(13) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 1.741 Complete application given a filing date; 
petition procedure. 

(a) The filing date of an application for extension 
of a patent term is the date on which a complete 
application is received in the Office or filed pursuant 
to the procedures set forth in §1.8 or § 1.10. A complete 
application must include: 
under which regulatory review occurred; 


(3) An identification of the patent for which 
an extension is being sought; 
(4) An identification of each claim of the 
patent which claims the approved product or a method 
of using or manufacturing the approved product; 
(5) Sufficient information to enable the 
Director to determine under subsections (a) and (b) of 
35 U.S.C. 156 the eligibility of a patent for extension, 
and the rights that will be derived from the extension, 
and information to enable the Director and the Secretary 
of Health and Human Services or the Secretary of 
Agriculture to determine the length of the regulatory 
review period; and 
(6) A brief description of the activities undertaken 
by the marketing applicant during the applicable 
regulatory review period with respect to the 
approved product and the significant dates applicable 
to such activities. 
(b) If an application for extension of patent 
term is incomplete under this section, the Office will 
so notify the applicant. If applicant requests review of 
a notice that an application is incomplete, or review of 
the filing date accorded an application under this section, 
applicant must file a petition pursuant to this 
paragraph accompanied by the fee set forth in § 
1.17(f) within two months of the mail date of the 
notice that the application is incomplete, or the notice 
according the filing date complained of. Unless the 
notice indicates otherwise, this time period may be 
extended under the provisions of § 1.136. 


(1) An identification of the approved product; 
(2) An identification of each Federal statute 

[Added 52 FR 9396, Mar. 24, 1987, effective May 26, 
1987; para. (a) amended, 54 FR 30375, July 20, 1989, 
effective Aug. 22, 1989; para. (a) amended, 58 FR 54494, 
Oct. 22, 1993, effective Nov. 22, 1993; para. (a) correcting 
amendment, 61 FR 64027, Dec. 3, 1996; heading, introductory 
text of paragraph (a), and paras. (a)(5) and (b) revised, 
65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. 

 

(a)(5) revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003; para. (b) revised, 69 FR 56481, Sept. 21, 2004, 
effective Nov. 22, 2004] 

§ 1.750 Determination of eligibility for extension 
of patent term. 

A determination as to whether a patent is eligible 
for extension may be made by the Director solely on 
the basis of the representations contained in the application 
for extension filed in compliance with § 1.740 
or § 1.790. This determination may be delegated to 
appropriate Patent and Trademark Office officials and 
may be made at any time before the certificate of 
extension is issued. The Director or other appropriate 
officials may require from applicant further information 
or make such independent inquiries as desired 
before a final determination is made on whether a 
patent is eligible for extension. In an application for 
extension filed in compliance with § 1.740, a notice 
will be mailed to applicant containing the determination 
as to the eligibility of the patent for extension and 
the period of time of the extension, if any. This notice 
shall constitute the final determination as to the eligibility 
and any period of extension of the patent. A single 
request for reconsideration of a final 
determination may be made if filed by the applicant 
within such time as may be set in the notice of final 
determination or, if no time is set, within one month 
from the date of the final determination. The time 
periods set forth herein are subject to the provisions of 
§ 1.136. 

[Added 52 FR 9396, Mar. 24, 1987, effective May 26, 
1987; revised, 60 FR 25615, May 12, 1995, effective July 
11, 1995; revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 1.760 Interim extension of patent term under 
35 U.S.C. 156(e)(2). 

An applicant who has filed a formal application for 
extension in compliance with § 1.740 may request one 
or more interim extensions for periods of up to one 
year each pending a final determination on the application 
pursuant to § 1.750. Any such request should 
be filed at least three months prior to the expiration 
date of the patent. The Director may issue interim 
extensions, without a request by the applicant, for 
periods of up to one year each until a final determination 
is made. The patent owner or agent will be notified 
when an interim extension is granted and notice 
of the extension will be published in the Official 
Gazette of the United States Patent and Trademark 
Office. The notice will be recorded in the official file 
of the patent and will be considered as part of the 
original patent. In no event will the interim extensions 
granted under this section be longer than the maximum 
period for extension to which the applicant 
would be eligible. 

[Added, 52 FR 9396, Mar. 24, 1987, effective May 26, 
1987; heading revised, 60 FR 25615, May 12, 1995, effective 
July 11, 1995; revised, 65 FR 54604, Sept. 8, 2000, 
effective Sept. 8, 2000; revised, 68 FR 14332, Mar. 25, 
2003, effective May 1, 2003] 

§ 1.765 Duty of disclosure in patent term extension proceedings. 

(a) A duty of candor and good faith toward the 
Patent and Trademark Office and the Secretary of 
Health and Human Services or the Secretary of Agriculture 
rests on the patent owner or its agent, on each 
attorney or agent who represents the patent owner and 
on every other individual who is substantively 
involved on behalf of the patent owner in a patent 
term extension proceeding. All such individuals who 
are aware, or become aware, of material information 
adverse to a determination of entitlement to the extension 
sought, which has not been previously made of 
record in the patent term extension proceeding must 
bring such information to the attention of the Office or 
the Secretary, as appropriate, in accordance with paragraph 
(b) of this section, as soon as it is practical to do 
so after the individual becomes aware of the information. 
Information is material where there is a substantial 
likelihood that the Office or the Secretary would 
consider it important in determinations to be made in 
the patent term extension proceeding. 
(b) Disclosures pursuant to this section must be 
accompanied by a copy of each written document 
which is being disclosed. The disclosure must be 
made to the Office or the Secretary, as appropriate, 
unless the disclosure is material to determinations to 
be made by both the Office and the Secretary, in 
which case duplicate copies, certified as such, must be 
filed in the Office and with the Secretary. Disclosures 
pursuant to this section may be made to the Office or 
the Secretary, as appropriate, through an attorney or 
agent having responsibility on behalf of the patent 


 

owner or its agent for the patent term extension proceeding 
or through a patent owner acting on his or 
her own behalf. Disclosure to such an attorney, agent 
or patent owner shall satisfy the duty of any other 
individual. Such an attorney, agent or patent owner 
has no duty to transmit information which is not material 
to the determination of entitlement to the extension 
sought. 

(c) No patent will be determined eligible for 
extension and no extension will be issued if it is determined 
that fraud on the Office or the Secretary was 
practiced or attempted or the duty of disclosure was 
violated through bad faith or gross negligence in connection 
with the patent term extension proceeding. If 
it is established by clear and convincing evidence that 
any fraud was practiced or attempted on the Office or 
the Secretary in connection with the patent term 
extension proceeding or that there was any violation 
of the duty of disclosure through bad faith or gross 
negligence in connection with the patent term extension 
proceeding, a final determination will be made 
pursuant to § 1.750 that the patent is not eligible for 
extension. 
(d) The duty of disclosure pursuant to this section 
rests on the individuals identified in paragraph (a) 
of this section and no submission on behalf of third 
parties, in the form of protests or otherwise, will be 
considered by the Office. Any such submissions by 
third parties to the Office will be returned to the party 
making the submission, or otherwise disposed of, 
without consideration by the Office. 


[Added, 52 FR 9396, Mar. 24 1987, effective May 26, 
1987, para. (a) amended, 54 FR 30375, July 20, 1989, 
effective Aug. 22, 1989; para. (a) revised, 60 FR 25615, 
May 12, 1995, effective July 11, 1995] 

§ 1.770 Express withdrawal of application for 
extension of patent term. 

An application for extension of patent term may be 
expressly withdrawn before a determination is made 
pursuant to § 1.750 by filing in the Office, in duplicate, 
a written declaration of withdrawal signed by the 
owner of record of the patent or its agent. An application 
may not be expressly withdrawn after the date 
permitted for reply to the final determination on the 
application. An express withdrawal pursuant to this 
section is effective when acknowledged in writing by 
the Office. The filing of an express withdrawal pursuant 
to this section and its acceptance by the Office 
does not entitle applicant to a refund of the filing fee 
(§ 1.20(j)) or any portion thereof. 

[Added 52 FR 9397, Mar. 24 1987, effective May 26, 
1987; 56 FR 65142, Dec. 13, 1991, effective Dec. 16, 1991; 
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997] 

§ 1.775 Calculation of patent term extension for a 

human drug, antibiotic drug, or human 

biological product. 

(a) If a determination is made pursuant to 
§ 1.750 that a patent for a human drug, antibiotic 
drug, or human biological product is eligible for 
extension, the term shall be extended by the time as 
calculated in days in the manner indicated by this section. 
The patent term extension will run from the original 
expiration date of the patent or any earlier date set 
by terminal disclaimer (§ 1.321). 
(b) The term of the patent for a human drug, 
antibiotic drug or human biological product will be 
extended by the length of the regulatory review period 
for the product as determined by the Secretary of 
Health and Human Services, reduced as appropriate 
pursuant to paragraphs (d)(1) through (d)(6) of this 
section. 
(c) The length of the regulatory review period 
for a human drug, antibiotic drug or human biological 
product will be determined by the Secretary of Health 
and Human Services. Under 35 U.S.C. 156(g)(1)(B), 
it is the sum of — 
(1) The number of days in the period beginning 
on the date an exemption under subsection (i) of 
section 505 or subsection (d) of section 507 of the 
Federal Food, Drug, and Cosmetic Act became effective 
for the approved product and ending on the date 
an application was initially submitted for such product 
under those sections or under section 351 of the 
Public Health Service Act; and 
(2) The number of days in the period beginning 
on the date the application was initially submitted 
for the approved product under section 351 of the 
Public Health Service Act, subsection (b) of section 
505 or section 507 of the Federal Food, Drug, and 
Cosmetic Act and ending on the date such application 
was approved under such section. 


 

(d) The term of the patent as extended for a 
human drug, antibiotic drug or human biological 
product will be determined by— 
(1) Subtracting from the number of days 
determined by the Secretary of Health and Human 
Services to be in the regulatory review period: 
(i) The number of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section which 
were on and before the date on which the patent 
issued; 
(ii) The number of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section during 
which it is determined under 35 U.S.C. 156(d)(2)(B) 
by the Secretary of Health and Human Services that 
applicant did not act with due diligence; 


(iii) One-half the number of days remaining 
in the period defined by paragraph (c)(1) of this section 
after that period is reduced in accordance with 
paragraphs (d)(1)(i) and (ii) of this section; half days 
will be ignored for purposes of subtraction; 

(2) By adding the number of days determined 
in paragraph (d)(1) of this section to the original term 
of the patent as shortened by any terminal disclaimer; 
(3) By adding 14 years to the date of 
approval of the application under section 351 of the 
Public Health Service Act, or subsection (b) of section 
505 or section 507 of the Federal Food, Drug, and 
Cosmetic Act; 
(4) By comparing the dates for the ends of 
the periods obtained pursuant to paragraphs (d)(2) and 
(d)(3) of this section with each other and selecting the 
earlier date; 
(5) If the original patent was issued after 
September 24, 1984, 
(i) By adding 5 years to the original expiration 
date of the patent or any earlier date set by terminal 
disclaimer; and 
(ii) By comparing the dates obtained pursuant 
to paragraphs (d)(4) and (d)(5)(i) of this section 
with each other and selecting the earlier date; 
(6) If the original patent was issued before 
September 24, 1984, and 
(i) If no request was submitted for an 
exemption under subsection (i) of section 505 or subsection 
(d) of section 507 of the Federal Food, Drug, 
and Cosmetic Act before September 24, 1984, by— 


(A) Adding 5 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer; and 
(B) By comparing the dates obtained 
pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this 
section with each other and selecting the earlier date; 
or 
(ii) If a request was submitted for an 
exemption under subsection (i) of section 505 or subsection 
(d) of section 507 of the Federal Food, Drug, 
or Cosmetic Act before September 24, 1984 and the 
commercial marketing or use of the product was not 
approved before September 24, 1984, by (
A) Adding 2 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer, and 
(B) By comparing the dates obtained 
pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this 
section with each other and selecting the earlier filing 
date. 


[Added, 52 FR 9397, Mar. 24 1987, effective May 26, 
1987] 

§ 1.776 Calculation of patent term extension for a 
food additive or color additive. 

(a) If a determination is made pursuant to 
§ 1.750 that a patent for a food additive or color additive 
is eligible for extension, the term shall be 
extended by the time as calculated in days in the manner 
indicated by this section. The patent term extension 
will run from the original expiration date of the 
patent or earlier date set by terminal disclaimer 
(§ 1.321). 
(b) The term of the patent for a food additive or 
color additive will be extended by the length of the 
regulatory review period for the product as determined 
by the Secretary of Health and Human Services, 
reduced as appropriate pursuant to paragraphs 
(d)(1) through (d)(6) of this section. 
(c) The length of the regulatory review period 
for a food additive or color additive will be determined 
by the Secretary of Health and Human Services. 
Under 35 U.S.C. 156(g)(2)(B), it is the sum of (
1) The number of days in the period beginning 
on the date a major health or environmental 
effects test on the additive was initiated and ending on 
the date a petition was initially submitted with respect 
to the approved product under the Federal Food, 


 

Drug, and Cosmetic Act requesting the issuance of a 
regulation for use of the product; and 

(2) The number of days in the period beginning 
on the date a petition was initially submitted with 
respect to the approved product under the Federal 
Food, Drug and Cosmetic Act requesting the issuance 
of a regulation for use of the product, and ending on 
the date such regulation became effective or, if objections 
were filed to such regulation, ending on the date 
such objections were resolved and commercial marketing 
was permitted or, if commercial marketing was 
permitted and later revoked pending further proceedings 
as a result of such objections, ending on the date 
such proceedings were finally resolved and commercial 
marketing was permitted. 
(d) The term of the patent as extended for a 
food additive or color additive will be determined by 
(1) Subtracting from the number of days 
determined by the Secretary of Health and Human 
Services to be in the regulatory review period: 
(i) The number of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section which 
were on and before the date on which the patent 
issued; 
(ii) The number of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section during 
which it is determined under 35 U.S.C. 156(d)(2)(B) 
by the Secretary of Health and Human Services that 
applicant did not act with due diligence; 


(iii) The number of days equal to one-half 
the number of days remaining in the period defined by 
paragraph (c)(1) of this section after that period is 
reduced in accordance with paragraphs (d)(1) (i) and 

(ii) of this section; half days will be ignored for purposes 
of subtraction; 
(2) By adding the number of days determined 
in paragraph (d)(1) of this section to the original term 
of the patent as shortened by any terminal disclaimer; 
(3) By adding 14 years to the date a regulation 
for use of the product became effective or, if 
objections were filed to such regulation, to the date 
such objections were resolved and commercial marketing 
was permitted or, if commercial marketing was 
permitted and later revoked pending further proceedings 
as a result of such objections, to the date such 
proceedings were finally resolved and commercial 
marketing was permitted; 


(4) By comparing the dates for the ends of 
the periods obtained pursuant to paragraphs (d)(2) and 
(d)(3) of this section with each other and selecting the 
earlier date; 
(5) If the original patent was issued after 
September 24, 1984, 
(i) By adding 5 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer; and 
(ii) By comparing the dates obtained pursuant 
to paragraphs (d)(4) and (d)(5)(i) of this section 
with each other and selecting the earlier date; 
(6) If the original patent was issued before 
September 24, 1984, and 
(i) If no major health or environmental 
effects test was initiated and no petition for a regulation 
or application for registration was submitted 
before September 24, 1984, by 
(A) Adding 5 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer, and 
(B) By comparing the dates obtained 
pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this 
section with each other and selecting the earlier date; 
or 
(ii) If a major health or environmental 
effects test was initiated or a petition for a regulation 
or application for registration was submitted by September 
24, 1984, and the commercial marketing or 
use of the product was not approved before September 
24, 1984, by — 
(A) Adding 2 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer, and 
(B) By comparing the dates obtained 
pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this 
section with each other and selecting the earlier date. 


[Added, 52 FR 9397, Mar. 24, 1987, effective May 26, 
1987] 

§ 1.777 Calculation of patent term extension for a 
medical device. 

(a) If a determination is made pursuant to 
§ 1.750 that a patent for a medical device is eligible 
for extension, the term shall be extended by the time 
as calculated in days in the manner indicated by this 
section. The patent term extension will run from the 

 

original expiration date of the patent or earlier date as 
set by terminal disclaimer (§ 1.321). 

(b) The term of the patent for a medical device 
will be extended by the length of the regulatory 
review period for the product as determined by the 
Secretary of Health and Human Services, reduced as 
appropriate pursuant to paragraphs (d)(1) through 
(d)(6) of this section. 
(c) The length of the regulatory review period 
for a medical device will be determined by the Secretary 
of Health and Human Services. Under 35 U.S.C. 
156(g)(3)(B), it is the sum of 
(1) The number of days in the period beginning 
on the date a clinical investigation on humans 
involving the device was begun and ending on the 
date an application was initially submitted with 
respect to the device under section 515 of the Federal 
Food, Drug, and Cosmetic Act; and 
(2) The number of days in the period beginning 
on the date the application was initially submitted 
with respect to the device under section 515 of the 
Federal Food, Drug, and Cosmetic Act, and ending on 
the date such application was approved under such 
Act or the period beginning on the date a notice of 
completion of a product development protocol was 
initially submitted under section 515(f)(5) of the Act 
and ending on the date the protocol was declared 
completed under section 515(f)(6) of the Act. 
(d) The term of the patent as extended for a 
medical device will be determined by — 
(1) Subtracting from the number of days 
determined by the Secretary of Health and Human 
Services to be in the regulatory review period pursuant 
to paragraph (c) of this section: 
(i) The number of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section which 
were on and before the date on which the patent 
issued; 
(ii) The number of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section during 
which it is determined under 35 U.S.C. 156(d)(2)(B) 
by the Secretary of Health and Human Services that 
applicant did not act with due diligence; 


(iii) One-half the number of days remaining 
in the period defined by paragraph (c)(1) of this section 
after that period is reduced in accordance with 
paragraphs (d)(1) (i) and (ii) of this section; half days 
will be ignored for purposes of subtraction; 

(2) By adding the number of days determined 
in paragraph (d)(1) of this section to the original term 
of the patent as shortened by any terminal disclaimer; 
(3) By adding 14 years to the date of 
approval of the application under section 515 of the 
Federal Food, Drug, and Cosmetic Act or the date a 
product development protocol was declared completed 
under section 515(f)(6) of the Act; 
(4) By comparing the dates for the ends of 
the periods obtained pursuant to paragraphs (d)(2) and 
(d)(3) of this section with each other and selecting the 
earlier date; 
(5) If the original patent was issued after 
September 24, 1984, 
(i) By adding 5 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer; and 
(ii) By comparing the dates obtained pursuant 
to paragraphs (d)(4) and (d)(5)(i) of this section 
with each other and selecting the earlier date; 
(6) If the original patent was issued before 
September 24, 1984, and 
(i) If no clinical investigation on 
humans involving the device was begun or no product 
development protocol was submitted under section 
515(f)(5) of the Federal Food, Drug, and Cosmetic 
Act before September 24, 1984, by — 
(A) Adding 5 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer and 
(B) By comparing the dates obtained 
pursuant to paragraphs (d)(4) and (d)(6)(i)(A) of this 
section with each other and selecting the earlier date; 
or 
(ii) If a clinical investigation on humans 
involving the device was begun or a product development 
protocol was submitted under section 515(f)(5) 
of the Federal Food, Drug, and Cosmetic Act before 
September 24, 1984 and the commercial marketing or 
use of the product was not approved before September 
24, 1984, by 
(A) Adding 2 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer, and 
(B) By comparing the dates obtained 
pursuant to paragraphs (d)(4) and (d)(6)(ii)(A) of this 
section with each other and selecting the earlier date. 


 

[Added, 52 FR 9398, Mar. 24 1987, effective May 26, 
1987] 

§ 1.778 Calculation of patent term extension for 
an animal drug product. 

(a) If a determination is made pursuant to 
§ 1.750 that a patent for an animal drug is eligible for 
extension, the term shall be extended by the time as 
calculated in days in the manner indicated by this section. 
The patent term extension will run from the original 
expiration date of the patent or any earlier date set 
by terminal disclaimer (§ 1.321). 
(b) The term of the patent for an animal drug 
will be extended by the length of the regulatory 
review period for the drug as determined by the Secretary 
of Health and Human Services, reduced as 
appropriate pursuant to paragraphs (d)(1) through 
(d)(6) of this section. 
(c) The length of the regulatory review period 
for an animal drug will be determined by the Secretary 
of Health and Human Services. Under 35 U.S.C. 
156(g)(4)(B), it is the sum of — 
(1) The number of days in the period beginning 
on the earlier of the date a major health or environmental 
effects test on the drug was initiated or the 
date an exemption under subsection (j) of section 512 
of the Federal Food, Drug, and Cosmetic Act became 
effective for the approved animal drug and ending on 
the date an application was initially submitted for 
such animal drug under section 512 of the Federal 
Food, Drug, and Cosmetic Act; and 
(2) The number of days in the period beginning 
on the date the application was initially submitted 
for the approved animal drug under subsection (b) 
of section 512 of the Federal Food, Drug, and Cosmetic 
Act and ending on the date such application was 
approved under such section. 
(d) The term of the patent as extended for an 
animal drug will be determined by — 
(1) Subtracting from the number of days 
determined by the Secretary of Health and Human 
Services to be in the regulatory review period: 
(i) The number of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section that were 
on and before the date on which the patent issued; 
(ii) The number of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section during 
which it is determined under 35 U.S.C. 156(d)(2)(B) 


by the Secretary of Health and Human Services that 
applicant did not act with due diligence; 

(iii) One-half the number of days remaining 
in the period defined by paragraph (c)(1) of this section 
after that period is reduced in accordance with 
paragraphs (d)(1)(i) and (ii) of this section; half days 
will be ignored for purposes of subtraction; 

(2) By adding the number of days determined 
in paragraph (d)(1) of this section to the original term 
of the patent as shortened by any terminal disclaimer; 
(3) By adding 14 years to the date of 
approval of the application under section 512 of the 
Federal Food, Drug, and Cosmetic Act; 
(4) By comparing the dates for the ends of 
the periods obtained pursuant to paragraphs (d)(2) and 
(d)(3) of this section with each other and selecting the 
earlier date; 
(5) If the original patent was issued after 
November 16, 1988, by — 
(i) Adding 5 years to the original expiration 
date of the patent or any earlier date set by terminal 
disclaimer; and 
(ii) Comparing the dates obtained pursuant 
to paragraphs (d)(4) and (d)(5)(i) of this section with 
each other and selecting the earlier date; 
(6) If the original patent was issued before 
November 16, 1988, and 
(i) If no major health or environmental 
effects test on the drug was initiated and no request 
was submitted for an exemption under subsection 
(j) of section 512 of the Federal Food, Drug, and Cosmetic 
Act before November 16, 1988, by — 
(A) Adding 5 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer; and 
(B) Comparing the dates obtained pursuant 
to paragraphs (d)(4) and (d)(6)(i)(A) of this section 
with each other and selecting the earlier date; or 
(ii) If a major health or environmental 
effects test was initiated or a request for an exemption 
under subsection (j) of section 512 of the Federal 
Food, Drug, and Cosmetic Act was submitted before 
November 16, 1988, and the application for commercial 
marketing or use of the animal drug was not 
approved before November 16, 1988, by — 
(A) Adding 3 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer, and 


 

(B) Comparing the dates obtained pursuant 
to paragraphs (d)(4) and (d)(6)(ii)(A) of this section 
with each other and selecting the earlier date. 

[Added, 54 FR 30375, July 20, 1989, effective Aug. 
22, 1989] 

§ 1.779 Calculation of patent term extension for a 
veterinary biological product. 

(a) If a determination is made pursuant to 
§ 1.750 that a patent for a veterinary biological product 
is eligible for extension, the term shall be 
extended by the time as calculated in days in the manner 
indicated by this section. The patent term extension 
will run from the original expiration date of the 
patent or any earlier date set by terminal disclaimer 
(§ 1.321). 
(b) The term of the patent for a veterinary biological 
product will be extended by the length of the 
regulatory review period for the product as determined 
by the Secretary of Agriculture, reduced as 
appropriate pursuant to paragraphs (d)(1) through 
(d)(6) of this section. 
(c) The length of the regulatory review period 
for a veterinary biological product will be determined 
by the Secretary of Agriculture. Under 35 U.S.C. 
156(g)(5)(B), it is the sum of — 
(1) The number of days in the period beginning 
on the date the authority to prepare an experimental 
biological product under the Virus-Serum-
Toxin Act became effective and ending on the date an 
application for a license was submitted under the 
Virus-Serum-Toxin Act; and 
(2) The number of days in the period beginning 
on the date an application for a license was initially 
submitted for approval under the Virus-Serum-
Toxin Act and ending on the date such license was 
issued. 
(d) The term of the patent as extended for a veterinary 
biological product will be determined by — 
(1) Subtracting from the number of days 
determined by the Secretary of Agriculture to be in 
the regulatory review period: 
(i) The number of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section that were 
on and before the date on which the patent issued; 
(ii) The number of days in the periods of 
paragraphs (c)(1) and (c)(2) of this section during 
which it is determined under 35 U.S.C. 156(d)(2)(B) 


by the Secretary of Agriculture that applicant did not 
act with due diligence; 

(iii) One-half the number of days remaining 
in the period defined by paragraph (c)(1) of this section 
after that period is reduced in accordance with 
paragraphs (d)(1)(i) and (ii) of this section; half days 
will be ignored for purposes of subtraction; 

(2) By adding the number of days determined 
in paragraph (d)(1) of this section to the original term 
of the patent as shortened by any terminal disclaimer; 
(3) By adding 14 years to the date of the issuance 
of a license under the Virus-Serum-Toxin Act; 
(4) By comparing the dates for the ends of 
the periods obtained pursuant to paragraphs (d)(2) and 
(d)(3) of this section with each other and selecting the 
earlier date; 
(5) If the original patent was issued after 
November 16, 1988, by — 
(i) Adding 5 years to the original expiration 
date of the patent or any earlier date set by terminal 
disclaimer; and 
(ii) Comparing the dates obtained pursuant 
to paragraphs (d)(4) and (d)(5)(i) of this section with 
each other and selecting the earlier date; 
(6) If the original patent was issued before 
November 16, 1988, and 
(i) If no request for the authority to prepare 
an experimental biological product under the 
Virus-Serum-Toxin Act was submitted before 
November 16, 1988, by — 
(A) Adding 5 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer; and 
(B) Comparing the dates obtained pursuant 
to paragraphs (d)(4) and (d)(6)(i)(A) of this section 
with each other and selecting the earlier date; or 
(ii) If a request for the authority to prepare 
an experimental biological product under the Virus-
Serum-Toxin Act was submitted before November 16, 
1988, and the commercial marketing or use of the 
product was not approved before November 16, 1988, 
by — 
(A) Adding 3 years to the original expiration 
date of the patent or earlier date set by terminal 
disclaimer; and 
(B) Comparing the dates obtained pursuant 
to paragraphs (d)(4) and (d)(6)(ii)(A) of this section 
with each other and selecting the earlier date. 


 

[Added, 54 FR 30375, July 20, 1989, effective Aug. 
22, 1989] 

§ 1.780 Certificate or order of extension of patent 
term. 

If a determination is made pursuant to § 1.750 that 
a patent is eligible for extension and that the term of 
the patent is to be extended, a certificate of extension, 
under seal, or an order granting interim extension 
under 35 U.S.C. 156(d)(5), will be issued to the applicant 
for the extension of the patent term. Such certificate 
or order will be recorded in the official file of the 
patent and will be considered as part of the original 
patent. Notification of the issuance of the certificate 
or order of extension will be published in the Official 
Gazette of the United States Patent and Trademark 
Office. Notification of the issuance of the order granting 
an interim extension under 35 U.S.C. 156(d)(5), 
including the identity of the product currently under 
regulatory review, will be published in the Official 
Gazette of the United States Patent and Trademark 
Office and in the Federal Register. No certificate of, 
or order granting, an extension will be issued if the 
term of the patent cannot be extended, even though 
the patent is otherwise determined to be eligible for 
extension. In such situations, the final determination 
made pursuant to § 1.750 will indicate that no certificate 
or order will issue. 

[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 
1987; para. (a) revised, 60 FR 25615, May 12, 1995, effective 
July 11, 1995; revised, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000] 

§ 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. 

(a) Only one patent may be extended for a regulatory 
review period for any product § 1.720 (h). If 
more than one application for extension of the same 
patent is filed, the certificate of extension of patent 
term, if appropriate, will be issued based upon the 
first filed application for extension. 
(b) If more than one application for extension is 
filed by a single applicant which seeks the extension 
of the term of two or more patents based upon the 
same regulatory review period, and the patents are 
otherwise eligible for extension pursuant to the 


requirements of this subpart, in the absence of an election 
by the applicant, the certificate of extension of 
patent term, if appropriate, will be issued upon the 
application for extension of the patent term having the 
earliest date of issuance of those patents for which 
extension is sought. 

(c) If an application for extension is filed which 
seeks the extension of the term of a patent based upon 
the same regulatory review period as that relied upon 
in one or more applications for extension pursuant to 
the requirements of this subpart, the certificate of 
extension of patent term will be issued on the application 
only if the patent owner or its agent is the holder 
of the regulatory approval granted with respect to the 
regulatory review period. 
(d) An application for extension shall be considered 
complete and formal regardless of whether it 
contains the identification of the holder of the regulatory 
approval granted with respect to the regulatory 
review period. When an application contains such 
information, or is amended to contain such information, 
it will be considered in determining whether an 
application is eligible for an extension under this section. 
A request may be made of any applicant to supply 
such information within a non-extendable period 
of not less than one month whenever multiple applications 
for extension of more than one patent are 
received and rely upon the same regulatory review 
period. Failure to provide such information within the 
period for reply set shall be regarded as conclusively 
establishing that the applicant is not the holder of the 
regulatory approval. 
(e) Determinations made under this section 
shall be included in the notice of final determination 
of eligibility for extension of the patent term pursuant 
to § 1.750 and shall be regarded as part of that determination. 


[Added, 52 FR 9399, Mar. 24 1987, effective May 26, 
1987; para. (b) amended, 54 FR 30375, July 20, 1989, 
effective Aug. 22, 1989; revised, 60 FR 25615, May 12, 
1995, effective July 11, 1995; para. (d) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997] 

§ 1.790 Interim extension of patent term under 
35 U.S.C. 156(d)(5) 

(a) An owner of record of a patent or its agent 
who reasonably expects that the applicable regulatory 
review period described in paragraph (1)(B)(ii), 

 

(2)(B)(ii), (3)(B)(ii), (4)(B)(ii), or (5)(B)(ii) of subsection 
(g) that began for a product that is the subject 
of such patent may extend beyond the expiration of 
the patent term in effect may submit one or more 
applications for interim extensions for periods of up 
to one year each. The initial application for interim 
extension must be filed during the period beginning 6 
months and ending 15 days before the patent term is 
due to expire. Each subsequent application for interim 
extension must be filed during the period beginning 
60 days before and ending 30 days before the expiration 
of the preceding interim extension. In no event 
will the interim extensions granted under this section 
be longer than the maximum period of extension 
to which the applicant would be entitled under 
35 U.S.C. 156(c). 

(b) A complete application for interim extension 
under this section shall include all of the information 
required for a formal application under 
§ 1.740 and a complete application under § 1.741. 
Sections (a)(1), (a)(2), (a)(4), and (a)(6) - (a)(17) of 
§ 1.740 and § 1.741 shall be read in the context of a 
product currently undergoing regulatory review. Sections 
(a)(3) and (a)(5) of § 1.740 are not applicable to 
an application for interim extension under this section. 
(c) The content of each subsequent interim 
extension application may be limited to a request for a 
subsequent interim extension along with a statement 
that the regulatory review period has not been completed 
along with any materials or information 
required under §§ 1.740 and 1.741 that are not present 
in the preceding interim extension application. 


[Added, 60 FR 25615, May 12, 1995, effective July 11, 
1995] 

§ 1.791 Termination of interim extension granted 

prior to regulatory approval of a product 

for commercial marketing or use. 

Any interim extension granted under 35 U.S.C. 
156(d)(5) terminates at the end of the 60-day period 
beginning on the date on which the product involved 
receives permission for commercial marketing or use. 
If within that 60-day period the patent owner or its 
agent files an application for extension under §§ 1.740 
and 1.741 including any additional information 
required under 35 U.S.C. 156(d)(1) not contained in 
the application for interim extension, the patent shall 
be further extended in accordance with the provisions 
of 35 U.S.C. 156. 

[Added, 60 FR 25615, May 12, 1995, effective July 11, 
1995] 

Subpart G — Biotechnology Invention 
Disclosures 

DEPOSIT OF BIOLOGICAL MATERIAL 

§ 1.801 Biological material. 

For the purposes of these regulations pertaining to 
the deposit of biological material for purposes of patents 
for inventions under 35 U.S.C. 101, the term biological 
material shall include material that is capable 
of self-replication either directly or indirectly. Representative 
examples include bacteria, fungi including 
yeast, algae, protozoa, eukaryotic cells, cell lines, 
hybridomas, plasmids, viruses, plant tissue cells, 
lichens and seeds. Viruses, vectors, cell organelles 
and other non-living material existing in and reproducible 
from a living cell may be deposited by deposit 
of the host cell capable of reproducing the non-living 
material. 

[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 
1990] 

§ 1.802 Need or opportunity to make a deposit. 

(a) Where an invention is, or relies on, a biological 
material, the disclosure may include reference to 
a deposit of such biological material. 
(b) Biological material need not be deposited 
unless access to such material is necessary for the satisfaction 
of the statutory requirements for patentability 
under 35 U.S.C. 112. If a deposit is necessary, it 
shall be acceptable if made in accordance with these 
regulations. Biological material need not be deposited, 
inter alia, if it is known and readily available to 
the public or can be made or isolated without undue 
experimentation. Once deposited in a depository complying 
with these regulations, a biological material 
will be considered to be readily available even though 
some requirement of law or regulation of the United 
States or of the country in which the depository institution 
is located permits access to the material only 
under conditions imposed for safety, public health or 
similar reasons. 


 

(c) The reference to a biological material in a 
specification disclosure or the actual deposit of such 
material by an applicant or patent owner does not create 
any presumption that such material is necessary to 
satisfy 35 U.S.C. 112 or that deposit in accordance 
with these regulations is or was required. 

[Added, 54 FR 34880, Aug. 22, 1989, effective Jan. 1, 
1990] 

§ 1.803 Acceptable depository. 

(a) A deposit shall be recognized for the purposes 
of these regulations if made in 
(1) Any International Depositary Authority 
(IDA) as established under the Budapest Treaty on the 
International Recognition of the Deposit of Microorganisms 
for the Purposes of Patent Procedure, or 
(2) Any other depository recognized to be 
suitable by the Office. Suitability will be determined 
by the Director on the basis of the administrative and 
technical competence, and agreement of the depository 
to comply with the terms and conditions applicable 
to deposits for patent purposes. The Director may 
seek the advice of impartial consultants on the suitability 
of a depository. The depository must: 
(i) Have a continuous existence; 


(ii) Exist independent of the control of the 
depositor; 


(iii) Possess the staff and facilities sufficient 
to examine the viability of a deposit and store 
the deposit in a manner which ensures that it is kept 
viable and uncontaminated; 

(iv) Provide for sufficient safety measures 
to minimize the risk of losing biological material 
deposited with it; 
(v) Be impartial and objective; 


(vi) Furnish samples of the deposited material 
in an expeditious and proper manner; and 


(vii) Promptly notify depositors of its 
inability to furnish samples, and the reasons why. 

(b) A depository seeking status under paragraph 
(a)(2) of this section must direct a communication to 
the Director which shall: 
(1) Indicate the name and address of the 
depository to which the communication relates; 
(2) Contain detailed information as to the 
capacity of the depository to comply with the require


ments of paragraph (a)(2) of this section, including 
information on its legal status, scientific standing, 
staff, and facilities; 

(3) Indicate that the depository intends to be 
available, for the purposes of deposit, to any depositor 
under these same conditions; 
(4) Where the depository intends to accept 
for deposit only certain kinds of biological material, 
specify such kinds; 
(5) Indicate the amount of any fees that the 
depository will, upon acquiring the status of suitable 
depository under paragraph (a)(2) of this section, 
charge for storage, viability statements and furnishings 
of samples of the deposit. 
(c) A depository having status under paragraph 
(a)(2) of this section limited to certain kinds of biological 
material may extend such status to additional 
kinds of biological material by directing a communication 
to the Director in accordance with paragraph 
(b) of this section. If a previous communication under 
paragraph (b) of this section is of record, items in 
common with the previous communication may be 
incorporated by reference. 
(d) Once a depository is recognized to be suitable 
by the Director or has defaulted or discontinued 
its performance under this section, notice thereof will 
be published in the Official Gazette of the Patent and 
Trademark Office. 


[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 
199; paras. (a)(2) & (b)-(d) revised, 68 FR 14332, Mar. 25, 
2003, effective May 1, 2003] 

§ 1.804 Time of making an original deposit. 

(a) Whenever a biological material is specifically 
identified in an application for patent as filed, an 
original deposit thereof may be made at any time 
before filing the application for patent or, subject to 
§ 1.809, during pendency of the application for 
patent. 
(b) When the original deposit is made after the 
effective filing date of an application for patent, the 
applicant must promptly submit a statement from a 
person in a position to corroborate the fact, stating 
that the biological material which is deposited is a 
biological material specifically identified in the application 
as filed. 


 

[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 
1990; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997] 

§ 1.805 Replacement or supplement of deposit. 

(a) A depositor, after receiving notice during 
the pendency of an application for patent, application 
for reissue patent or reexamination proceeding, that 
the depository possessing a deposit either cannot furnish 
samples thereof or can furnish samples thereof 
but the deposit has become contaminated or has lost 
its capability to function as described in the specification, 
shall notify the Office in writing, in each application 
for patent or patent affected. In such a case, or 
where the Office otherwise learns, during the pendency 
of an application for patent, application for 
reissue patent or reexamination proceeding, that the 
depository possessing a deposit either cannot furnish 
samples thereof or can furnish samples thereof but the 
deposit has become contaminated or has lost its capability 
to function as described in the specification, the 
need for making a replacement or supplemental 
deposit will be governed by the same considerations 
governing the need for making an original deposit 
under the provisions set forth in § 1.802(b). 
A replacement or supplemental deposit made during 
the pendency of an application for patent shall not be 
accepted unless it meets the requirements for making 
an original deposit under these regulations, including 
the requirement set forth under § 1.804(b). A replacement 
or supplemental deposit made in connection 
with a patent, whether or not made during the pendency 
of an application for reissue patent or a reexamination 
proceeding or both, shall not be accepted 
unless a certificate of correction under § 1.323 is 
requested by the patent owner which meets the terms 
of paragraphs (b) and (c) of this section. 
(b) A request for certificate of correction under 
this section shall not be granted unless the certificate 
identifies: 
(1) The accession number for the replacement 
or supplemental deposit; 
(2) The date of the deposit; and 
(3) The name and address of the depository. 




(c) A request for a certificate of correction 
under this section shall not be granted unless the 
request is made promptly after the replacement or 
supplemental deposit has been made and the request: 


(1) Includes a statement of the reason for 
making the replacement or supplemental deposit; 
(2) Includes a statement from a person in a 
position to corroborate the fact, and stating that the 
replacement or supplemental deposit is of a biological 
material which is identical to that originally deposited; 
(3) Includes a showing that the patent owner 
acted diligently — 
(i) In the case of a replacement deposit, in 
making the deposit after receiving notice that samples 
could no longer be furnished from an earlier deposit; 
or 
(ii) In the case of a supplemental deposit, 
in making the deposit after receiving notice that the 
earlier deposit had become contaminated or had lost 
its capability to function as described in the specification; 
(4) Includes a statement that the term of the 
replacement or supplemental deposit expires no earlier 
than the term of the deposit being replaced or supplemented; 
and 
(5) Otherwise establishes compliance with 
these regulations. 
(d) A depositor’s failure to replace a deposit, or 
in the case of a patent, to diligently replace a deposit 
and promptly thereafter request a certificate of correction 
which meets the terms of paragraphs (b) and (c) 
of this section, after being notified that the depository 
possessing the deposit cannot furnish samples thereof, 
shall cause the application or patent involved to be 
treated in any Office proceeding as if no deposit were 
made. 
(e) In the event a deposit is replaced according 
to these regulations, the Office will apply a rebuttable 
presumption of identity between the original and the 
replacement deposit where a patent making reference 
to the deposit is relied upon during any Office proceeding. 
(f) A replacement or supplemental deposit 
made during the pendency of an application for patent 
may be made for any reason. 
(g) In no case is a replacement or supplemental 
deposit of a biological material necessary where the 
biological material, in accordance with § 1.802(b), 
need not be deposited. 
(h) No replacement deposit of a biological 
material is necessary where a depository can furnish 


 

samples thereof but the depository for national security, 
health or environmental safety reasons is unable 
to provide samples to requesters outside of the jurisdiction 
where the depository is located. 

(i) The Office will not recognize in any Office 
proceeding a replacement deposit of a biological 
material made by a patent owner where the depository 
could furnish samples of the deposit being replaced. 

[Added, 54 FR 34881, Aug. 22, 1989, effective Jan. 1, 
1990; para. (c) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997] 

§ 1.806 Term of deposit. 

A deposit made before or during pendency of an 
application for patent shall be made for a term of at 
least thirty (30) years and at least five (5) years after 
the most recent request for the furnishing of a sample 
of the deposit was received by the depository. In any 
case, samples must be stored under agreements that 
would make them available beyond the enforceable 
life of the patent for which the deposit was made. 

[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 
1990] 

§ 1.807 Viability of deposit. 

(a) A deposit of biological material that is capable 
of self-replication either directly or indirectly 
must be viable at the time of deposit and during the 
term of deposit. Viability may be tested by the depository. 
The test must conclude only that the deposited 
material is capable of reproduction. No evidence is 
necessarily required regarding the ability of the 
deposited material to perform any function described 
in the patent application. 
(b) A viability statement for each deposit of a 
biological material defined in paragraph (a) of this 
section not made under the Budapest Treaty on the 
International Recognition of the Deposit of Microorganisms 
for the Purposes of Patent Procedure must be 
filed in the application and must contain: 


(1) The name and address of the depository; 
(2) The name and address of the depositor; 
(3) The date of deposit; 
(4) The identity of the deposit and the acces


sion number given by the depository; 

(5) The date of the viability test; 

(6) The procedures used to obtain a sample if 
the test is not done by the depository; and 
(7) A statement that the deposit is capable of 
reproduction. 
(c) If a viability test indicates that the deposit is 
not viable upon receipt, or the examiner cannot, for 
scientific or other valid reasons, accept the statement 
of viability received from the applicant, the examiner 
shall proceed as if no deposit has been made. The 
examiner will accept the conclusion set forth in a viability 
statement issued by a depository recognized 
under § 1.803(a). 


[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 
1990] 

§ 1.808 Furnishing of samples. 

(a) A deposit must be made under conditions 
that assure that: 
(1) Access to the deposit will be available 
during pendency of the patent application making reference 
to the deposit to one determined by the Director 
to be entitled thereto under § 1.14 and 35 U.S.C. 
122, and 
(2) Subject to paragraph (b) of this section, 
all restrictions imposed by the depositor on the availability 
to the public of the deposited material will be 
irrevocably removed upon the granting of the patent. 
(b) The depositor may contract with the depository 
to require that samples of a deposited biological 
material shall be furnished only if a request for a sample, 
during the term of the patent: 
(1) Is in writing or other tangible form and 
dated; 
(2) Contains the name and address of the 
requesting party and the accession number of the 
deposit; and 
(3) Is communicated in writing by the depository 
to the depositor along with the date on which the 
sample was furnished and the name and address of the 
party to whom the sample was furnished. 
(c) Upon request made to the Office, the Office 
will certify whether a deposit has been stated to have 
been made under conditions which make it available 
to the public as of the issue date of the patent grant 
provided the request contains: 
(1) The name and address of the depository; 


(2) The accession number given to the 
deposit; 


 

(3) The patent number and issue date of the 
patent referring to the deposit; and 
(4) The name and address of the requesting 
party. 


[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 
199; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003] 

§ 1.809 Examination procedures. 

(a) The examiner shall determine pursuant to 
§ 1.104 in each application for patent, application for 
reissue patent or reexamination proceeding if a 
deposit is needed, and if needed, if a deposit actually 
made is acceptable for patent purposes. If a deposit is 
needed and has not been made or replaced or supplemented 
in accordance with these regulations, the 
examiner, where appropriate, shall reject the affected 
claims under the appropriate provision of 35 U.S.C. 
112, explaining why a deposit is needed and/or why a 
deposit actually made cannot be accepted. 
(b) The applicant for patent or patent owner 
shall reply to a rejection under paragraph (a) of this 
section by— 
(1) In the case of an applicant for patent, 
either making an acceptable original, replacement, or 
supplemental deposit, or assuring the Office in writing 
that an acceptable deposit will be made; or, in the 
case of a patent owner, requesting a certificate of correction 
of the patent which meets the terms of paragraphs 
(b) and (c) of § 1.805, or 
(2) Arguing why a deposit is not needed 
under the circumstances of the application or patent 
considered and/or why a deposit actually made should 
be accepted. Other replies to the examiner’s action 
shall be considered nonresponsive. The rejection will 
be repeated until either paragraph (b)(1) of this section 
is satisfied or the examiner is convinced that a 
deposit is not needed. 
(c) If an application for patent is otherwise in 
condition for allowance except for a needed deposit 
and the Office has received a written assurance that an 
acceptable deposit will be made, applicant will be 
notified and given a period of time within which the 
deposit must be made in order to avoid abandonment. 
This time period is not extendable under § 1.136(a) or 
(b) if set forth in a “Notice of Allowability” or in an 
Office action having a mail date on or after the mail 
date of a “Notice of Allowability” (see § 1.136(c)). 


(d) For each deposit made pursuant to these 
regulations, the specification shall contain: 
(1) The accession number for the deposit; 
(2) The date of the deposit; 




(3) A description of the deposited biological 
material sufficient to specifically identify it and to 
permit examination; and 
(4) The name and address of the depository. 


(e) Any amendment required by paragraphs 
(d)(1), (d)(2) or (d)(4) of this section must be filed 
before or with the payment of the issue fee (see 
§1.312). 


[Added, 54 FR 34882, Aug. 22, 1989, effective Jan. 1, 
1990; paras. (b) and (c) revised and para. (e) added, 66 FR 
21092, Apr. 27, 2001, effective May 29, 2001] 

APPLICATION DISCLOSURES 
CONTAINING NUCLEOTIDE AND/OR 
AMINO ACID SEQUENCES


§ 1.821 Nucleotide and/or amino acid sequence 
disclosures in patent applications. 

(a) Nucleotide and/or amino acid sequences as 
used in §§ 1.821 through 1.825 are interpreted to 
mean an unbranched sequence of four or more amino 
acids or an unbranched sequence of ten or more 
nucleotides. Branched sequences are specifically 
excluded from this definition. Sequences with fewer 
than four specifically defined nucleotides or amino 
acids are specifically excluded from this section. 
“Specifically defined” means those amino acids other 
than “Xaa” and those nucleotide bases other than 
“n” defined in accordance with the World Intellectual 
Property Organization (WIPO) Handbook on Industrial 
Property Information and Documentation, Standard 
ST.25: Standard for the Presentation of 
Nucleotide and Amino Acid Sequence Listings in 
Patent Applications (1998), including Tables 
1 through 6 in Appendix 2, herein incorporated by 
reference. (Hereinafter “WIPO Standard ST.25 
(1998)”). This incorporation by reference was 
approved by the Director of the Federal Register 
in accordance with 5 U.S.C. 552(a) and 1 CFR 
part 51. Copies of WIPO Standard ST.25 (1998) may 
be obtained from the World Intellectual Property 
Organization; 34 chemin des Colombettes; 1211 
Geneva 20 Switzerland. Copies may also be inspected 
at the National Archives and Records Administration 

 

(NARA). For information on the availability of this 
material at NARA, call 202-741-6030, or go to: http:/ 
/www.archives.gov/federal_register/ 
code_of_federal_regulations/ibr_locations.html. 
Nucleotides and amino acids are further defined as 
follows: 

(1) Nucleotides: Nucleotides are intended to 
embrace only those nucleotides that can be represented 
using the symbols set forth in WIPO Standard 
ST.25 (1998), Appendix 2, Table 1. Modifications, 
e.g., methylated bases, may be described as set forth 
in WIPO Standard ST.25 (1998), Appendix 2, Table 2, 
but shall not be shown explicitly in the nucleotide 
sequence. 
(2) Amino acids: Amino acids are those L-
amino acids commonly found in naturally occurring 
proteins and are listed in WIPO Standard ST.25 
(1998), Appendix 2, Table 3. Those amino acid 
sequences containing D-amino acids are not intended 
to be embraced by this definition. Any amino acid 
sequence that contains post-translationally modified 
amino acids may be described as the amino acid 
sequence that is initially translated using the symbols 
shown in WIPO Standard ST.25 (1998), Appendix 2, 
Table 3 with the modified positions; e.g., hydroxylations 
or glycosylations, being described as set forth in 
WIPO Standard ST.25 (1998), Appendix 2, Table 4, 
but these modifications shall not be shown explicitly 
in the amino acid sequence. Any peptide or protein 
that can be expressed as a sequence using the symbols 
in WIPO Standard ST.25 (1998), Appendix 2, Table 3 
in conjunction with a description in the Feature section 
to describe, for example, modified linkages, cross 
links and end caps, non-peptidyl bonds, etc., is 
embraced by this definition. 
(b) Patent applications which contain disclosures 
of nucleotide and/or amino acid sequences, in 
accordance with the definition in paragraph (a) of this 
section, shall, with regard to the manner in which the 
nucleotide and/or amino acid sequences are presented 
and described, conform exclusively to the requirements 
of §§ 1.821 through 1.825. 
(c) Patent applications which contain disclosures 
of nucleotide and/or amino acid sequences must 
contain, as a separate part of the disclosure, a paper or 
compact disc copy (see § 1.52(e)) disclosing the 
nucleotide and/or amino acid sequences and associated 
information using the symbols and format in 


accordance with the requirements of §§ 1.822 and 

1.823. This paper or compact disc copy is referred to 
elsewhere in this subpart as the “Sequence Listing.” 
Each sequence disclosed must appear separately in the 
“Sequence Listing.” Each sequence set forth in the 
“Sequence Listing” must be assigned a separate 
sequence identifier. The sequence identifiers must 
begin with 1 and increase sequentially by integers. If 
no sequence is present for a sequence identifier, the 
code “000” must be used in place of the sequence. 
The response for the numeric identifier <160> must 
include the total number of SEQ ID NOs, whether followed 
by a sequence or by the code “000.” 

(d) Where the description or claims of a 
patent application discuss a sequence that is set forth 
in the “Sequence Listing” in accordance with paragraph 
(c) of this section, reference must be made to 
the sequence by use of the sequence identifier, preceded 
by “SEQ ID NO:” in the text of the description 
or claims, even if the sequence is also embedded in 
the text of the description or claims of the patent 
application. 
(e) A copy of the “Sequence Listing” 
referred to in paragraph (c) of this section must also 
be submitted in computer readable form (CRF) in 
accordance with the requirements of § 1.824. The 
computer readable form must be a copy of the 
“Sequence Listing” and may not be retained as a part 
of the patent application file. If the computer readable 
form of a new application is to be identical with the 
computer readable form of another application of the 
applicant on file in the Office, reference may be made 
to the other application and computer readable form 
in lieu of filing a duplicate computer readable form in 
the new application if the computer readable form in 
the other application was compliant with all of the 
requirements of this subpart. The new application 
must be accompanied by a letter making such reference 
to the other application and computer readable 
form, both of which shall be completely identified. In 
the new application, applicant must also request the 
use of the compliant computer readable “Sequence 
Listing” that is already on file for the other application 
and must state that the paper or compact disc 
copy of the “Sequence Listing” in the new application 
is identical to the computer readable copy filed for the 
other application. 


 

(f) In addition to the paper or compact disc 
copy required by paragraph (c) of this section and the 
computer readable form required by paragraph (e) of 
this section, a statement that the “Sequence Listing” 
content of the paper or compact disc copy and the 
computer readable copy are the same must be submitted 
with the computer readable form, e.g., a statement 
that “the sequence listing information recorded in 
computer readable form is identical to the written (on 
paper or compact disc) sequence listing.” 
(g) If any of the requirements of paragraphs 


(b) through (f) of this section are not satisfied at the 
time of filing under 35 U.S.C. 111(a) or at the time of 
entering the national stage under 35 U.S.C. 371, 
applicant will be notified and given a period of time 
within which to comply with such requirements in 
order to prevent abandonment of the application. Any 
submission in reply to a requirement under this paragraph 
must be accompanied by a statement that the 
submission includes no new matter. 
(h) If any of the requirements of paragraphs 


(b) through (f) of this section are not satisfied at the 
time of filing an international application under the 
Patent Cooperation Treaty (PCT), which application 
is to be searched by the United States International 
Searching Authority or examined by the United States 
International Preliminary Examining Authority, applicant 
will be sent a notice necessitating compliance 
with the requirements within a prescribed time period. 
Any submission in reply to a requirement under this 
paragraph must be accompanied by a statement that 
the submission does not include matter which goes 
beyond the disclosure in the international application 
as filed. If applicant fails to timely provide the 
required computer readable form, the United States 
International Searching Authority shall search only to 
the extent that a meaningful search can be performed 
without the computer readable form and the United 
States International Preliminary Examining Authority 
shall examine only to the extent that a meaningful 
examination can be performed without the computer 
readable form. 


[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 
1990; para. (h) amended, 58 FR 9335, Jan. 14, 1993, effective 
May 1, 1993; revised, 63 FR 29620, June 1, 1998, 
effective July 1, 1998; paras. (c), (e), and (f) revised, 65 FR 
54604, Sept. 8, 2000, effective Sept. 8, 2000 (effective date 
corrected, 65 FR 78958, Dec. 18, 2000); para. (a) revised, 
70 FR 10488, Mar. 4, 2005, effective Mar. 4, 2005] 

§ 1.822 Symbols and format to be used for nucleotide and/or amino acid sequence data. 

(a) The symbols and format to be used for 
nucleotide and/or amino acid sequence data shall conform 
to the requirements of paragraphs (b) through (e) 
of this section. 
(b) The code for representing the nucleotide 
and/or amino acid sequence characters shall conform 
to the code set forth in the tables in WIPO Standard 
ST.25 (1998), Appendix 2, Tables 1 and 3. This incorporation 
by reference was approved by the Director of 
the Federal Register in accordance with 5 U.S.C. 
552(a) and 1 CFR part 51. Copies of ST.25 may be 
obtained from the World Intellectual Property Organization; 
34 chemin des Colombettes; 1211 Geneva 20 
Switzerland. Copies may also be inspected at the 
National Archives and Records Administration 
(NARA). For information on the availability of this 
material at NARA, call 202-741-6030, or go to: http:/ 
/www.archives.gov/federal_register/ 
code_of_federal_regulations/ibr_locations.html. No 
code other than that specified in these sections shall 
be used in nucleotide and amino acid sequences. A 
modified base or modified or unusual amino acid may 
be presented in a given sequence as the corresponding 
unmodified base or amino acid if the modified base or 
modified or unusual amino acid is one of those listed 
in WIPO Standard ST.25 (1998), Appendix 2, Tables 
2 and 4, and the modification is also set forth in the 
Feature section. Otherwise, each occurrence of a base 
or amino acid not appearing in WIPO Standard ST.25 
(1998), Appendix 2, Tables 1 and 3, shall be listed in a 
given sequence as “n” or “Xaa,” respectively, with 
further information, as appropriate, given in the Feature 
section, preferably by including one or more feature 
keys listed in WIPO Standard ST.25 (1998), 
Appendix 2, Tables 5 and 6. 
(c) Format representation of nucleotides. (1) A 
nucleotide sequence shall be listed using the lowercase 
letter for representing the one-letter code for the 
nucleotide bases set forth in WIPO Standard ST.25 
(1998), Appendix 2, Table 1. 
(2) The bases in a nucleotide sequence 
(including introns) shall be listed in groups of 
10 bases except in the coding parts of the sequence. 


 

Leftover bases, fewer than 10 in number, at the end of 
noncoding parts of a sequence shall be grouped 
together and separated from adjacent groups of 10 or 
3 bases by a space. 

(3) The bases in the coding parts of a nucleotide 
sequence shall be listed as triplets (codons). The 
amino acids corresponding to the codons in the coding 
parts of a nucleotide sequence shall be typed 
immediately below the corresponding codons. Where 
a codon spans an intron, the amino acid symbol shall 
be typed below the portion of the codon containing 
two nucleotides. 
(4) A nucleotide sequence shall be listed with 
a maximum of 16 codons or 60 bases per line, with a 
space provided between each codon or group of 10 
bases. 
(5) A nucleotide sequence shall be presented, 
only by a single strand, in the 5 to 3 direction, from 
left to right. 
(6) The enumeration of nucleotide bases 
shall start at the first base of the sequence with number 
1. The enumeration shall be continuous through 
the whole sequence in the direction 5 to 3. The enumeration 
shall be marked in the right margin, next to 
the line containing the one-letter codes for the bases, 
and giving the number of the last base of that line. 
(7) For those nucleotide sequences that are 
circular in configuration, the enumeration method set 
forth in paragraph (c)(6) of this section remains applicable 
with the exception that the designation of the 
first base of the nucleotide sequence may be made at 
the option of the applicant. 
(d) Representation of amino acids. (1) The 
amino acids in a protein or peptide sequence shall be 
listed using the three-letter abbreviation with the first 
letter as an upper case character, as in WIPO Standard 
ST.25 (1998), Appendix 2, Table 3. 
(2) A protein or peptide sequence shall be 
listed with a maximum of 16 amino acids per line, 
with a space provided between each amino acid. 
(3) An amino acid sequence shall be presented 
in the amino to carboxy direction, from left to 
right, and the amino and carboxy groups shall not be 
presented in the sequence. 
(4) The enumeration of amino acids may 
start at the first amino acid of the first mature protein, 
with the number 1. When presented, the amino acids 
preceding the mature protein, e.g., pre-sequences, 


pro-sequences, pre-pro-sequences and signal 
sequences, shall have negative numbers, counting 
backwards starting with the amino acid next to number 
1. Otherwise, the enumeration of amino acids 
shall start at the first amino acid at the amino terminal 
as number 1. It shall be marked below the sequence 
every 5 amino acids. The enumeration method for 
amino acid sequences that is set forth in this section 
remains applicable for amino acid sequences that are 
circular in configuration, with the exception that the 
designation of the first amino acid of the sequence 
may be made at the option of the applicant. 

(5) An amino acid sequence that contains 
internal terminator symbols (e.g., “Ter”, “*”, or “.”, 
etc.) may not be represented as a single amino acid 
sequence, but shall be presented as separate amino 
acid sequences. 
(e) A sequence with a gap or gaps shall be presented 
as a plurality of separate sequences, with separate 
sequence identifiers, with the number of separate 
sequences being equal in number to the number of 
continuous strings of sequence data. A sequence that 
is made up of one or more noncontiguous segments of 
a larger sequence or segments from different 
sequences shall be presented as a separate sequence. 


[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 
1990; revised, 63 FR 29620, June 1, 1998, effective, July 1, 
1998; para. (b) revised, 70 FR 10488, Mar. 4, 2005, effective 
Mar. 4, 2005] 

§ 1.823 Requirements for nucleotide and/or 

amino acid sequences as part of the appli

cation. 

(a)(1) If the “Sequence Listing” required by § 
1.821(c) is submitted on paper: The “Sequence Listing,” 
setting forth the nucleotide and/or amino acid 
sequence and associated information in accordance 
with paragraph (b) of this section, must begin on a 
new page and must be titled “Sequence Listing.” The 
pages of the “Sequence Listing” preferably should be 
numbered independently of the numbering of the 
remainder of the application. Each page of the 
“Sequence Listing” shall contain no more than 66 
lines and each line shall contain no more than 72 characters. 
The sheet or sheets presenting a sequence listing 
may not include material other than part of the 
sequence listing. A fixed-width font should be used 
exclusively throughout the “Sequence Listing.” 

 

(2) If the “Sequence Listing” required by 
§ 1.821(c) is submitted on compact disc: The 
“Sequence Listing” must be submitted on a compact 
disc in compliance with § 1.52(e). The compact disc 
may also contain table information if the application 
contains table information that may be submitted on a 
compact disc (§ 1.52(e)(1)(iii)). The specification 
must contain an incorporation-by-reference of the 
Sequence Listing as required by § 1.52(e)(5). The presentation 
of the “Sequence Listing” and other materials 
on compact disc under § 1.821(c) does not 
substitute for the Computer Readable Form that must 
be submitted on disk, compact disc, or tape in accordance 
with § 1.824. 
(b) The “Sequence Listing” shall, except as otherwise 
indicated, include the actual nucleotide and/or 


amino acid sequence, the numeric identifiers and their 
accompanying information as shown in the following 
table. The numeric identifier shall be used only in the 
“Sequence Listing.” The order and presentation of the 
items of information in the “Sequence Listing” shall 
conform to the arrangement given below. Each item 
of information shall begin on a new line and shall 
begin with the numeric identifier enclosed in angle 
brackets as shown. The submission of those items of 
information designated with an “M” is mandatory. 
The submission of those items of information designated 
with an “O” is optional. Numeric identifiers 

<110> through <170> shall only be set forth at the 
beginning of the “Sequence Listing.” The following 
table illustrates the numeric identifiers. 

 

Numeric 
Identifier Definition Comments and format Mandatory (M) or Optional (O) 
<110> Applicant...................... Preferably max. of 10 names; one 
name per line; preferable format: Surname, 
Other Names and/or Initials. 
M. 
<120> Title of Invention.......... ............................................................. M. 
<130> File Reference............... Personal file reference......................... M when filed prior to assignment or 
appl. number 
<140> Current Application 
Number. 
Specify as: US 07/999,999 or PCT/ 
US96/99999. 
M, if available. 
<141> Current Filing Date....... Specify as: yyyy-mm-dd...................... M, if available. 
<150> Prior Application 
Number. 
Specify as: US 07/999,999 or PCT/ 
US96/99999. 
M, if applicable include priority documents 
under 35 U.S.C. 119 and 120 
<151> Prior Application Filing 
Date. 
Specify as: yyyy-mm-dd ..................... M, if applicable 
<160> Number of SEQ ID 
NOs. 
Count includes total number of SEQ 
ID NOs................................................. 
M. 
<170> Software....................... Name of software used to create the 
Sequence Listing. 
O. 
<210> SEQ ID NO:#:.............. Response shall be an integer representing 
the SEQ ID NO shown. 
M. 
<211> Length........................... Respond with an integer expressing 
the number of bases or amino acid residues. 
M. 
<212> Type.............................. Whether presented sequence molecule 
is DNA, RNA, or PRT (protein). If a 
nucleotide sequence contains both 
DNA and RNA fragments, the type 
shall be “DNA.” In addition, the combined 
DNA/ RNA molecule shall be 
further described in the <220> to 
<223> feature section. 
M. 
<213> Organism...................... Scientific name, i.e. Genus/ species, 
Unknown or Artificial Sequence. In 
addition, the “Unknown” or “Artificial 
Sequence” organisms shall be further 
described in the <220> to <223> 
feature section. 
M. 

 

Numeric 
Identifier Definition Comments and format Mandatory (M) or Optional (O) 
<220> Feature.......................... Leave blank after <220>. <221-223> 
provide for a description of points of 
biological significance in the 
sequence. 
M, under the following conditions: if 
“n,” “Xaa,” or a modified or unusual 
L-amino acid or modified base was 
used in a sequence; if ORGANISM is 
“Artificial Sequence” or “Unknown”; 
if molecule is combined DNA/RNA. 
<221> Name/Key..................... Provide appropriate identifier for feature, 
preferably from WIPO Standard 
ST.25 (1998), Appendix 2, Tables 5 
and 6. 
M, under the following conditions: if 
“n,” “Xaa,” or a modified or unusual 
L-amino acid or modified base was 
used in a sequence. 
Numeric 
Identifier 
Definition Comments and format Mandatory (M) or Optional (O) 
<222> Location........................ Specify location within sequence; 
where appropriate state number of 
first and last bases/amino acids in feature. 
M, under the following conditions: if 
“n,” “Xaa,” or a modified or unusual 
L-amino acid or modified base was 
used in a sequence. 
<223> Other Information......... Other relevant information; four lines 
maximum............................................. 
M, under the following conditions: if 
“n,” “Xaa,” or a modified or unusual 
L-amino acid or modified base was 
used in a sequence; if ORGANISM is 
“Artificial Sequence” or “Unknown”; 
if molecule is combined DNA/RNA. 
<300> Publication Information Leave blank after <300> O. 
<301> Authors......................... Preferably max. of ten named authors 
of publication; specify one name per 
line; preferable format: Surname, 
Other Names and/or Initials. 
O. 
<302> Title............................... ............................................................. O. 
<303> Journal.......................... ............................................................. O. 
<304> Volume ......................... ............................................................. O. 
<305> Issue ............................. ............................................................. O. 
<306> Pages ............................ ............................................................. O. 
<307> Date.............. Journal date on which data published; 
specify as yyyy- mm-dd, MMM-yyyy 
or Season- yyyy. 
O. 
<308> Database Accession 
Number. 
Accession number assigned by database 
including database name. 
O. 
<309> Database Entry 
Date........ 
Date of entry in database; specify as 
yyyy-mm-dd or MMM-yyyy. 
O. 

 

Numeric 
Identifier Definition Comments and format Mandatory (M) or Optional (O) 
<310> Patent Document Number. 
Document number; for patent-type 
citations only. Specify as, for example, 
US 07/ 999,999. 
O. 
<311> Patent Filing 
Date.............. 
Document filing date, for patent-type 
citations only; specify as yyyy-mmdd. 
O. 
<312> Publication 
Date................ 
Document publication date, for 
patent-type citations only; specify as 
yyyy-mm-dd. 
O. 
<313> Relevant Residues............ 
FROM (position) TO (position)........... O. 
<400> Sequence....................... SEQ ID NO should follow the 
numeric identifier and should appear 
on the line preceding the actual 
sequence. 
M. 

[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 
1990; revised, 63 FR 29620, June 1, 1998, effective July 1, 
1998; heading and para. (a) revised, 65 FR 54604, Sept. 8, 
2000, effective Sept. 8, 2000 (effective date corrected, 
65 FR 78958, Dec. 18, 2000); para. (a)(1) revised, 68 FR 
38611, June 30, 2003, effective July 30, 2003] 

§ 1.824 Form and format for nucleotide and/or 
amino acid sequence submissions in computer readable form. 

(a) The computer readable form required by 
§ 1.821(e) shall meet the following requirements: 
(1) The computer readable form shall contain 
a single “Sequence Listing” as either a diskette, series 
of diskettes, or other permissible media outlined in 
paragraph (c) of this section. 
(2) The “Sequence Listing” in paragraph 
(a)(l) of this section shall be submitted in American 
Standard Code for Information Interchange (ASCII) 
text. No other formats shall be allowed. 
(3) The computer readable form may be created 
by any means, such as word processors, nucleotide/
amino acid sequence editors’ or other custom 
computer programs; however, it shall conform to all 
requirements detailed in this section. 
(4) File compression is acceptable when 
using diskette media, so long as the compressed file is 


in a self-extracting format that will decompress on 
one of the systems described in paragraph (b) of this 
section. 

(5) Page numbering must not appear within 
the computer readable form version of the “Sequence 
Listing” file. 
(6) All computer readable forms must have a 
label permanently affixed thereto on which has been 
hand-printed or typed: the name of the applicant, the 
title of the invention, the date on which the data were 
recorded on the computer readable form, the operating 
system used, a reference number, and an application 
number and filing date, if known. If multiple 
diskettes are submitted, the diskette labels must indicate 
their order (e.g., “1 of X”). 
(b) Computer readable form submissions must 
meet these format requirements: 
(1) Computer Compatibility: IBM PC/XT/ 
AT or Apple Macintosh; 
(2) Operating System Compatibility: MSDOS, 
MS-Windows, Unix or Macintosh; 
(3) Line Terminator: ASCII Carriage Return 
plus ASCII Line Feed; and 
(4) Pagination: Continuous file (no “hard 
page break” codes permitted). 
(c) Computer readable form files submitted 
may be in any of the following media: 


 

(1) Diskette: 3.50 inch, 1.44 Mb storage; 

3.50 inch, 720 Kb storage; 5.25 inch, 1.2 Mb storage; 

5.25 inch, 360 Kb storage. 

(2) Magnetic tape: 0.5 inch, up to 24000 feet; 
Density: 1600 or 6250 bits per inch, 9 track; Format: 
Unix tar command; specify blocking factor (not 
“block size”); Line Terminator: ASCII Carriage 
Return plus ASCII Line Feed. 
(3) 8mm Data Cartridge: Format: Unix tar 
command; specify blocking factor (not “block size”); 
Line Terminator: ASCII Carriage Return plus ASCII 
Line Feed. 
(4) Compact disc: Format: ISO 9660 or High 
Sierra Format. 
(5) Magneto Optical Disk: Size/Storage 
Specifications: 5.25 inch, 640 Mb. 
(d) Computer readable forms that are submitted 
to the Office will not be returned to the applicant. 


[Added, 55 FR 18230, May 1, 1990, effective Oct. 1, 
1990; revised, 63 FR 29620, June 1, 1998, effective July 1, 
1998; revised, 65 FR 54604, Sept. 8, 2000, effective Sept. 
8, 2000 (effective date corrected, 65 FR 78958, Dec. 18, 
2000)] 

§ 1.825 Amendments to or replacement of 
sequence listing and computer readable 
copy thereof. 

(a) Any amendment to a paper copy of the 
“Sequence Listing” (§ 1.821(c)) must be made by the 
submission of substitute sheets and include a statement 
that the substitute sheets include no new matter. 
Any amendment to a compact disc copy of the 
“Sequence Listing” (§ 1.821(c)) must be made by the 
submission of a replacement compact disc (2 copies) 
in compliance with § 1.52(e). Amendments must also 
be accompanied by a statement that indicates support 
for the amendment in the application, as filed, and a 
statement that the replacement compact disc includes 
no new matter. 

(b) Any amendment to the paper copy of the 
“Sequence Listing,” in accordance with paragraph (a) 
of this section, must be accompanied by a substitute 
copy of the computer readable form (§ 1.821(e)) 
including all previously submitted data with the 
amendment incorporated therein, accompanied by a 
statement that the copy in computer readable form is 
the same as the substitute copy of the “Sequence Listing.” 
(c) Any appropriate amendments to the 
“Sequence Listing” in a patent; e.g., by reason of reissue 
or certificate of correction, must comply with the 
requirements of paragraphs (a) and (b) of this section. 
(d) If, upon receipt, the computer readable form 
is found to be damaged or unreadable, applicant must 
provide, within such time as set by the Director, a substitute 
copy of the data in computer readable form 
accompanied by a statement that the substitute data is 
identical to that originally filed. 


[Added 55 FR 18230, May 1, 1990, effective Oct. 1, 
1990; revised, 63 FR 29620, June 1, 1998, effective July 1, 
1998; paras. (a) and (b) revised, 65 FR 54604, Sept. 8, 
2000, effective Sept. 8, 2000 (effective date corrected, 
65 FR 78958, Dec. 18, 2000); para. (d) revised, 68 FR 
14332, Mar. 25, 2003, effective May 1, 2003] 

 

Appendix A To Subpart G To Part 1 -
Sample Sequence Listing
 

Subpart H — Inter Partes Reexamination 
of Patents That Issued From an Original 
Application Filed in the United States on 
or After November 29, 1999 

PRIOR ART CITATIONS 

§ 1.902 Processing of prior art citations during 
an inter partes reexamination proceeding. 

Citations by the patent owner in accordance with 
§ 1.933 and by an inter partes reexamination third 
party requester under § 1.915 or § 1.948 will be 
entered in the inter partes reexamination file. The 
entry in the patent file of other citations submitted 
after the date of an order for reexamination pursuant 
to § 1.931 by persons other than the patent owner, or 
the third party requester under either § 1.915 or 
§ 1.948, will be delayed until the inter partes reexamination 
proceeding has been terminated. See § 1.502 
for processing of prior art citations in patent and reexamination 
files during an ex parte reexamination proceeding 
filed under § 1.510. 

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

REQUIREMENTS FOR INTER PARTES 
REEXAMINATION PROCEEDINGS 

§ 1.903 Service of papers on parties in inter partes 
reexamination. 

The patent owner and the third party requester will 
be sent copies of Office actions issued during the inter 
partes reexamination proceeding. After filing of a 
request for inter partes reexamination by a third party 
requester, any document filed by either the patent 
owner or the third party requester must be served on 
every other party in the reexamination proceeding in 
the manner provided in § 1.248. Any document must 
reflect service or the document may be refused consideration 
by the Office. The failure of the patent 
owner or the third party requester to serve documents 
may result in their being refused consideration. 

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.904 Notice of inter partes reexamination in 
Official Gazette. 

A notice of the filing of an inter partes reexamination 
request will be published in the Official Gazette. 
The notice published in the Official Gazette under 
§ 1.11(c) will be considered to be constructive notice 
of the inter partes reexamination proceeding and inter 
partes reexamination will proceed.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.905 Submission of papers by the public in 
inter partes reexamination.

 Unless specifically provided for, no submissions 
on behalf of any third parties other than third party 
requesters as defined in 35 U.S.C. 100(e) will be considered 
unless such submissions are in accordance 
with § 1.915 or entered in the patent file prior to the 
date of the order for reexamination pursuant to 
§ 1.931. Submissions by third parties, other than third 
party requesters, filed after the date of the order for 
reexamination pursuant to § 1.931, must meet the 
requirements of § 1.501 and will be treated in accordance 
with § 1.902. Submissions which do not meet 
the requirements of § 1.501 will be returned.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.906 Scope of reexamination in inter partes 
reexamination proceeding. 

(a) Claims in an inter partes reexamination proceeding 
will be examined on the basis of patents or 
printed publications and, with respect to subject matter 
added or deleted in the reexamination proceeding, 
on the basis of the requirements of 35 U.S.C. 112. 
(b) Claims in an inter partes reexamination proceeding 
will not be permitted to enlarge the scope of 
the claims of the patent. 
(c) Issues other than those indicated in paragraphs 
(a) and (b) of this section will not be resolved 
in an inter partes reexamination proceeding. If such 
issues are raised by the patent owner or the third party 
requester during a reexamination proceeding, the 
existence of such issues will be noted by the examiner 
in the next Office action, in which case the patent 
owner may desire to consider the advisability of filing 


 

a reissue application to have such issues considered 
and resolved.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.907 Inter partes reexamination prohibited. 

(a) Once an order to reexamine has been issued 
under § 1.931, neither the third party requester, nor its 
privies, may file a subsequent request for inter partes 
reexamination of the patent until an inter partes reexamination 
certificate is issued under § 1.997, unless 
authorized by the Director. 
(b) Once a final decision has been entered 
against a party in a civil action arising in whole or in 
part under 28 U.S.C. 1338 that the party has not sustained 
its burden of proving invalidity of any patent 
claim-in-suit, then neither that party nor its privies 
may thereafter request inter partes reexamination of 
any such patent claim on the basis of issues which that 
party, or its privies, raised or could have raised in such 
civil action, and an inter partes reexamination 
requested by that party, or its privies, on the basis of 
such issues may not thereafter be maintained by the 
Office. 
(c) If a final decision in an inter partes reexamination 
proceeding instituted by a third party requester 
is favorable to patentability of any original, proposed 
amended, or new claims of the patent, then neither 
that party nor its privies may thereafter request inter 
partes reexamination of any such patent claims on the 
basis of issues which that party, or its privies, raised 
or could have raised in such inter partes reexamination 
proceeding.


 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 1.913 Persons eligible to file request for inter 
partes reexamination. 

Except as provided for in § 1.907, any person other 
than the patent owner or its privies may, at any time 
during the period of enforceability of a patent which 
issued from an original application filed in the United 
States on or after November 29, 1999, file a request 
for inter partes reexamination by the Office of any 
claim of the patent on the basis of prior art patents or 
printed publications cited under § 1.501.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; revised, 68 FR 70996, Dec. 22, 2003, effective Jan. 
21, 2004] 

§ 1.915 Content of request for inter partes reexamination. 

(a) The request must be accompanied by the fee 
for requesting inter partes reexamination set forth in 
§ 1.20(c)(2). 
(b) A request for inter partes reexamination 
must include the following parts: 
(1) An identification of the patent by patent 
number and every claim for which reexamination is 
requested. 
(2) A citation of the patents and printed publications 
which are presented to provide a substantial 
new question of patentability. 
(3) A statement pointing out each substantial 
new question of patentability based on the cited patents 
and printed publications, and a detailed explanation 
of the pertinency and manner of applying the 
patents and printed publications to every claim for 
which reexamination is requested. 
(4) A copy of every patent or printed publication 
relied upon or referred to in paragraphs (b)(1) 
through (3) of this section, accompanied by an 
English language translation of all the necessary and 
pertinent parts of any non-English language document. 
(5) A copy of the entire patent including the 
front face, drawings, and specification/claims (in double 
column format) for which reexamination is 
requested, and a copy of any disclaimer, certificate of 
correction, or reexamination certificate issued in the 
patent. All copies must have each page plainly written 
on only one side of a sheet of paper. 
(6) A certification by the third party 
requester that a copy of the request has been served in 
its entirety on the patent owner at the address provided 
for in § 1.33(c). The name and address of the 
party served must be indicated. If service was not possible, 
a duplicate copy of the request must be supplied 
to the Office. 
(7) A certification by the third party 
requester that the estoppel provisions of § 1.907 do 
not prohibit the inter partes reexamination. 
(8) A statement identifying the real party 
in interest to the extent necessary for a subsequent 


 

person filing an inter partes reexamination request to 
determine whether that person is a privy. 

(c) If an inter partes request is filed by an attorney 
or agent identifying another party on whose 
behalf the request is being filed, the attorney or agent 
must have a power of attorney from that party or be 
acting in a representative capacity pursuant to 
§ 1.34(a). 
(d) If the inter partes request does not include 
the fee for requesting inter partes reexamination 
required by paragraph (a) of this section and meet all 
the requirements of paragraph (b) of this section, then 
the person identified as requesting inter partes reexamination 
will be so notified and will generally be 
given an opportunity to complete the request within a 
specified time. Failure to comply with the notice will 
result in the inter partes reexamination request not 
being granted a filing date, and will result in placement 
of the request in the patent file as a citation if it 
complies with the requirements of § 1.501.


 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (d) revised, 71 FR 9260, Feb. 23, 2006, effective 
Mar. 27, 2006; para. (d) revised, 71 FR 44219, Aug. 4, 
2006, effective Aug. 4, 2006] 

§ 1.919 Filing date of request for inter partes 
reexamination. 

(a) The filing date of a request for inter partes 
reexamination is the date on which the request satisfies 
all the requirements for the request set forth in § 
(b) If the request is not granted a filing date, the 
request will be placed in the patent file as a citation of 
prior art if it complies with the requirements of 
§ 1.501.


1.915. 

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (a) revised, 71 FR 9260, Feb. 23, 2006, effective 
Mar. 27, 2006] 

§ 1.923 Examiner’s determination on the request 
for inter partes reexamination.

 Within three months following the filing date of a 
request for inter partes reexamination under § 1.919, 
the examiner will consider the request and determine 
whether or not a substantial new question of patentability 
affecting any claim of the patent is raised by 
the request and the prior art citation. The examiner’s 
determination will be based on the claims in effect at 
the time of the determination, will become a part of 
the official file of the patent, and will be mailed to the 
patent owner at the address as provided for in 
§ 1.33(c) and to the third party requester. If the examiner 
determines that no substantial new question of 
patentability is present, the examiner shall refuse the 
request and shall not order inter partes reexamination.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.925 Partial refund if request for inter partes 
reexamination is not ordered.

 Where inter partes reexamination is not ordered, a 
refund of a portion of the fee for requesting inter 
partes reexamination will be made to the requester in 
accordance with § 1.26(c).

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.927 Petition to review refusal to order inter 
partes reexamination.

 The third party requester may seek review by a 
petition to the Director under § 1.181 within one 
month of the mailing date of the examiner’s determination 
refusing to order inter partes reexamination. 
Any such petition must comply with § 1.181(b). If no 
petition is timely filed or if the decision on petition 
affirms that no substantial new question of patentability 
has been raised, the determination shall be final 
and nonappealable.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003] 

INTER PARTES REEXAMINATION OF 
PATENTS 

§ 1.931 Order for inter partes reexamination. 

(a) If a substantial new question of patentability 
is found, the determination will include an order for 
inter partes reexamination of the patent for resolution 
of the question. 
(b) If the order for inter partes reexamination 
resulted from a petition pursuant to § 1.927, the inter 
partes reexamination will ordinarily be conducted by 


 

an examiner other than the examiner responsible for 
the initial determination under § 1.923.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

INFORMATION DISCLOSURE IN INTER 
PARTES REEXAMINATION


§ 1.933 Patent owner duty of disclosure in inter 
partes reexamination proceedings. 

(a) Each individual associated with the patent 
owner in an inter partes reexamination proceeding 
has a duty of candor and good faith in dealing with the 
Office, which includes a duty to disclose to the Office 
all information known to that individual to be material 
to patentability in a reexamination proceeding as set 
forth in § 1.555(a) and (b). The duty to disclose all 
information known to be material to patentability in 
an inter partes reexamination proceeding is deemed 
to be satisfied by filing a paper in compliance with the 
requirements set forth in § 1.555(a) and (b). 
(b) The responsibility for compliance with this 
section rests upon the individuals designated in paragraph 
(a) of this section, and no evaluation will be 
made by the Office in the reexamination proceeding 
as to compliance with this section. If questions of 
compliance with this section are raised by the patent 
owner or the third party requester during a reexamination 
proceeding, they will be noted as unresolved 
questions in accordance with § 1.906(c).


 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

OFFICE ACTIONS AND RESPONSES 
(BEFORE THE EXAMINER) IN INTER 
PARTES REEXAMINATION 

§ 1.935 Initial Office action usually accompanies 
order for inter partes reexamination. 

The order for inter partes reexamination will usually 
be accompanied by the initial Office action on the 
merits of the reexamination.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.937 Conduct of inter partes reexamination. 

(a) All inter partes reexamination proceedings, 
including any appeals to the Board of Patent Appeals 
and Interferences, will be conducted with special dispatch 
within the Office, unless the Director makes a 
determination that there is good cause for suspending 
the reexamination proceeding. 
(b) The inter partes reexamination proceeding 
will be conducted in accordance with §§ 1.104 
through 1.116, the sections governing the application 
examination process, and will result in the issuance of 
an inter partes reexamination certificate under 
§ 1.997, except as otherwise provided. 
(c) All communications between the Office and 
the parties to the inter partes reexamination which are 
directed to the merits of the proceeding must be in 
writing and filed with the Office for entry into the 
record of the proceeding.


 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 1.939 Unauthorized papers in inter partes reexamination 

(a) If an unauthorized paper is filed by any 
party at any time during the inter partes reexamination 
proceeding it will not be considered and may be 
returned. 
(b) Unless otherwise authorized, no paper shall 
be filed prior to the initial Office action on the merits 
of the inter partes reexamination.


 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.941 Amendments by patent owner in inter 
partes reexamination. 

Amendments by patent owner in inter partes reexamination 
proceedings are made by filing a paper in 
compliance with §§ 1.530(d)-(k) and 1.943.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

 

§ 1.943 Requirements of responses, written com

ments, and briefs in inter partes reexami

nation. 

(a) The form of responses, written comments, 
briefs, appendices, and other papers must be in accordance 
with the requirements of § 1.52. 
(b) Responses by the patent owner and written 
comments by the third party requester shall not 
exceed 50 pages in length, excluding amendments, 
appendices of claims, and reference materials such as 
prior art references. 
(c) Appellant’s briefs filed by the patent owner 
and the third party requester shall not exceed thirty 
pages or 14,000 words in length, excluding appendices 
of claims and reference materials such as prior art 
references. All other briefs filed by any party shall not 
exceed fifteen pages in length or 7,000 words. If the 
page limit for any brief is exceeded, a certificate is 
required stating the number of words contained in the 
brief.


 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.945 Response to Office action by patent 
owner in inter partes reexamination. 

The patent owner will be given at least thirty days 
to file a response to any Office action on the merits of 
the inter partes reexamination.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.947 Comments by third party requester to 

patent owner’s response in inter partes 

reexamination. 

Each time the patent owner files a response to an 
Office action on the merits pursuant to § 1.945, a third 
party requester may once file written comments 
within a period of 30 days from the date of service of 
the patent owner’s response. These comments shall be 
limited to issues raised by the Office action or the 
patent owner’s response. The time for submitting 
comments by the third party requester may not be 
extended. For the purpose of filing the written comments 
by the third party requester, the comments will 
be considered as having been received in the Office as 
of the date of deposit specified in the certificate under 
§ 1.8.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.948 Limitations on submission of prior art by 

third party requester following the order 

for inter partes reexamination. 

(a) After the inter partes reexamination order, 
the third party requester may only cite additional prior 
art as defined under § 1.501 if it is filed as part of a 
comments submission under § 1.947 or § 1.951(b) 
and is limited to prior art: 
(1) which is necessary to rebut a finding of 
fact by the examiner; 
(2) which is necessary to rebut a response of 
the patent owner; or 
(3) which for the first time became known or 
available to the third party requester after the filing of 
the request for inter partes reexamination proceeding. 
Prior art submitted under paragraph (a)(3) of this section 
must be accompanied by a statement as to when 
the prior art first became known or available to the 
third party requester and must include a discussion of 
the pertinency of each reference to the patentability of 
at least one claim. 


(b) [Reserved].

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.949 Examiner’s Office action closing prosecution in inter partes reexamination. 

Upon consideration of the issues a second or subsequent 
time, or upon a determination of patentability of 
all claims, the examiner shall issue an Office action 
treating all claims present in the inter partes reexamination, 
which may be an action closing prosecution. 
The Office action shall set forth all rejections and 
determinations not to make a proposed rejection, and 
the grounds therefor. An Office action will not usually 
close prosecution if it includes a new ground of rejection 
which was not previously addressed by the patent 
owner, unless the new ground was necessitated by an 
amendment.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

 

§ 1.951 Options after Office action closing prosecution in inter partes reexamination. 

(a) After an Office action closing prosecution 
in an inter partes reexamination, the patent owner 
may once file comments limited to the issues raised in 
the Office action closing prosecution. The comments 
can include a proposed amendment to the claims, 
which amendment will be subject to the criteria of 
§ 1.116 as to whether or not it shall be admitted. The 
comments must be filed within the time set for 
response in the Office action closing prosecution. 
(b) When the patent owner does file comments, 
a third party requester may once file comments 
responsive to the patent owner’s comments within 
30 days from the date of service of patent owner’s 
comments on the third party requester.


 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.953 Examiner’s Right of Appeal Notice in 
inter partes reexamination. 

(a) Upon considering the comments of the 
patent owner and the third party requester subsequent 
to the Office action closing prosecution in an inter 
partes reexamination, or upon expiration of the time 
for submitting such comments, the examiner shall 
issue a Right of Appeal Notice, unless the examiner 
reopens prosecution and issues another Office action 
on the merits. 
(b) Expedited Right of Appeal Notice: At any 
time after the patent owner’s response to the initial 
Office action on the merits in an inter partes reexamination, 
the patent owner and all third party requesters 
may stipulate that the issues are appropriate for a final 
action, which would include a final rejection and/or a 
final determination favorable to patentability, and 
may request the issuance of a Right of Appeal Notice. 
The request must have the concurrence of the patent 
owner and all third party requesters present in the proceeding 
and must identify all the appealable issues 
and the positions of the patent owner and all third 
party requesters on those issues. If the examiner determines 
that no other issues are present or should be 
raised, a Right of Appeal Notice limited to the identified 
issues shall be issued. Any appeal by the 
parties shall be conducted in accordance with §§ 
1.959-1.983. 


(c) The Right of Appeal Notice shall be a final 
action, which comprises a final rejection setting forth 
each ground of rejection and/or final decision favorable 
to patentability including each determination not 
to make a proposed rejection, an identification of the 
status of each claim, and the reasons for decisions 
favorable to patentability and/or the grounds of rejection 
for each claim. No amendment can be made in 
response to the Right of Appeal Notice. The Right of 
Appeal Notice shall set a one-month time period for 
either party to appeal. If no notice of appeal is filed, 
the inter partes reexamination proceeding will be terminated, 
and the Director will proceed to issue a certificate 
under § 1.997 in accordance with the Right of 
Appeal Notice.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

INTERVIEWS PROHIBITED IN INTER 
PARTES REEXAMINATION 

§ 1.955 Interviews prohibited in inter partes reexamination proceedings. 

There will be no interviews in an inter partes reexamination 
proceeding which discuss the merits of the 
proceeding.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

EXTENSIONS OF TIME, TERMINATION OF 
PROCEEDINGS, AND PETITIONS TO
REVIVE IN INTER PARTES
REEXAMINATION


§ 1.956 Patent owner extensions of time in inter 
partes reexamination. 

The time for taking any action by a patent owner in 
an inter partes reexamination proceeding will be 
extended only for sufficient cause and for a reasonable 
time specified. Any request for such extension 
must be filed on or before the day on which action by 
the patent owner is due, but in no case will the mere 
filing of a request effect any extension. Any request 
for such extension must be accompanied by the petition 
set forth in § 1.17(g). See § 1.304(a) for exten-

 

sions of time for filing a notice of appeal to the U.S. 
Court of Appeals for the Federal Circuit.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; revised, 69 FR 56481, Sept. 21, 2004, effective Nov. 
22, 2004] 

§ 1.957 Failure to file a timely, appropriate or 
complete response or comment in inter 
partes reexamination. 

(a) If the third party requester files an untimely 
or inappropriate comment, notice of appeal or brief in 
an inter partes reexamination, the paper will be 
refused consideration. 
(b) If no claims are found patentable, and the 
patent owner fails to file a timely and appropriate 
response in an inter partes reexamination proceeding, 
the reexamination proceeding will be terminated and 
the Director will proceed to issue a certificate under § 


1.997 in accordance with the last action of the Office. 

(c) If claims are found patentable and the patent 
owner fails to file a timely and appropriate response 
to any Office action in an inter partes reexamination 
proceeding, further prosecution will be limited to the 
claims found patentable at the time of the failure to 
respond, and to any claims added thereafter which do 
not expand the scope of the claims which were found 
patentable at that time. 
(d) When action by the patent owner is a bona 
fide attempt to respond and to advance the prosecution 
and is substantially a complete response to the 
Office action, but consideration of some matter or 
compliance with some requirement has been inadvertently 
omitted, an opportunity to explain and supply 
the omission may be given.


 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 1.958 Petition to revive terminated inter partes 
reexamination or claims terminated for 
lack of patent owner response. 

(a) If a response by the patent owner is not 
timely filed in the Office, the delay in filing such 
response may be excused if it is shown to the satisfaction 
of the Director that the delay was unavoidable. A 
grantable petition to accept an unavoidably delayed 
response must be filed in compliance with § 1.137(a). 

(b) Any response by the patent owner not 
timely filed in the Office may be accepted if the delay 
was unintentional. A grantable petition to accept an 
unintentionally delayed response must be filed in 
compliance with § 1.137(b). 

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

APPEAL TO THE BOARD OF PATENT 
APPEALS AND INTERFERENCES IN INTER 
PARTES REEXAMINATION


§ 1.959 Appeal in inter partes reexamination. 

Appeals to the Board of Patent Appeals and 
Interferences under 35 U.S.C. 134(c) are conducted 
according to part 41 of this title.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para (f) added, 68 FR 70996, Dec. 22, 2003, effective 
Jan. 21, 2004; revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004] 

§ 1.961 - 1.977 [Reserved] 

§ 1.979 Return of Jurisdiction from the Board of 

Patent Appeals and Interferences; termi

nation of proceedings. 

(a) Jurisdiction over an inter partes reexamination 
proceeding passes to the examiner after a decision 
by the Board of Patent Appeals and Interferences 
upon transmittal of the file to the examiner, subject to 
each appellant’s right of appeal or other review, for 
such further action as the condition of the inter partes 
reexamination proceeding may require, to carry into 
effect the decision of the Board of Patent Appeals and 
Interferences. 
(b) Upon judgment in the appeal before the 
Board of Patent Appeals and Interferences, if no further 
appeal has been taken (§ 1.983), the inter partes 
reexamination proceeding will be terminated and the 
Director will issue a certificate under § 1.997 terminating 
the proceeding. If an appeal to the U.S. Court 
of Appeals for the Federal Circuit has been filed, that 
appeal is considered terminated when the mandate is 
issued by the Court. 


 

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (f) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; paras. (e) & (f) revised, 68 FR 70996, 
Dec. 22, 2003, effective Jan. 21, 2004; revised, 69 FR 
49959, Aug. 12, 2004, effective Sept. 13, 2004] 

§ 1.981 Reopening after a final decision of the 

Board of Patent Appeals and Interfer

ences.

 When a decision by the Board of Patent Appeals 
and Interferences on appeal has become final for judicial 
review, prosecution of the inter partes reexamination 
proceeding will not be reopened or reconsidered 
by the primary examiner except under the provisions 
of § 41.77 of this title without the written authority of 
the Director, and then only for the consideration of 
matters not already adjudicated, sufficient cause being 
shown.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004] 

APPEAL TO THE UNITED STATES COURT 
OF APPEALS FOR THE FEDERAL CIRCUIT 
IN INTER PARTES REEXAMINATION


§ 1.983 Appeal to the United States Court of 

Appeals for the Federal Circuit in inter 

partes reexamination. 

(a) The patent owner or third party requester in 
an inter partes reexamination proceeding who is a 
party to an appeal to the Board of Patent Appeals and 
Interferences and who is dissatisfied with the decision 
of the Board of Patent Appeals and Interferences may, 
subject to § 1.979(e), appeal to the U.S. Court of 
Appeals for the Federal Circuit and may be a party to 
any appeal thereto taken from a reexamination decision 
of the Board of Patent Appeals and Interferences. 
(b) The appellant must take the following steps 
in such an appeal: 
(1) In the U.S. Patent and Trademark Office, 
timely file a written notice of appeal directed to the 
Director in accordance with §§ 1.302 and 1.304; 
(2) In the U.S. Court of Appeals for the Federal 
Circuit, file a copy of the notice of appeal and pay 
the fee, as provided for in the rules of the U.S. Court 
of Appeals for the Federal Circuit; and 


(3) Serve a copy of the notice of appeal on 
every other party in the reexamination proceeding in 
the manner provided in § 1.248. 
(c) If the patent owner has filed a notice of 
appeal to the U.S. Court of Appeals for the Federal 
Circuit, the third party requester may cross appeal to 
the U.S. Court of Appeals for the Federal Circuit if 
also dissatisfied with the decision of the Board of 
Patent Appeals and Interferences. 
(d) If the third party requester has filed a notice 
of appeal to the U.S. Court of Appeals for the Federal 
Circuit, the patent owner may cross appeal to the U.S. 
Court of Appeals for the Federal Circuit if also dissatisfied 
with the decision of the Board of Patent 
Appeals and Interferences. 
(e) A party electing to participate in an appellant’s 
appeal must, within fourteen days of service of 
the appellant’s notice of appeal under paragraph (b) of 
this section, or notice of cross appeal under paragraphs 
(c) or (d) of this section, take the following 
steps: 
(1) In the U.S. Patent and Trademark Office, 
timely file a written notice directed to the Director 
electing to participate in the appellant’s appeal to the 


U.S. Court of Appeals for the Federal Circuit by mail 
to, or hand service on, the General Counsel as provided 
in § 104.2; 

(2) In the U.S. Court of Appeals for the Federal 
Circuit, file a copy of the notice electing to participate 
in accordance with the rules of the U.S. Court of 
Appeals for the Federal Circuit; and 
(3) Serve a copy of the notice electing to participate 
on every other party in the reexamination proceeding 
in the manner provided in § 1.248. 
(f) Notwithstanding any provision of the rules, 
in any reexamination proceeding commenced prior to 
November 2, 2002, the third party requester is precluded 
from appealing and cross appealing any decision 
of the Board of Patent Appeals and Interferences 
to the U.S. Court of Appeals for the Federal Circuit, 
and the third party requester is precluded from participating 
in any appeal taken by the patent owner to the 


U.S. Court of Appeals for the Federal Circuit. 

[Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (a)(1) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003; revised, 68 FR 70996, Dec. 22, 
2003, effective Jan. 21, 2004] 

 

CONCURRENT PROCEEDINGS INVOLVING 
SAME PATENT IN INTER PARTES
REEXAMINATION


§ 1.985 Notification of prior or concurrent proceedings in inter partes reexamination. 

(a) In any inter partes reexamination proceeding, 
the patent owner shall call the attention of the 
Office to any prior or concurrent proceedings in 
which the patent is or was involved, including but not 
limited to interference, reissue, reexamination, or litigation 
and the results of such proceedings. 
(b) Notwithstanding any provision of the rules, 
any person at any time may file a paper in an inter 
partes reexamination proceeding notifying the Office 
of a prior or concurrent proceedings in which 
the same patent is or was involved, including but 
not limited to interference, reissue, reexamination, or 
litigation and the results of such proceedings. Such 
paper must be limited to merely providing notice of 
the other proceeding without discussion of issues of 
the current inter partes reexamination proceeding. 
Any paper not so limited will be returned to the 
sender.


 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.987 Suspension of inter partes reexamination 
proceeding due to litigation. 

If a patent in the process of inter partes reexamination 
is or becomes involved in litigation, the Director 
shall determine whether or not to suspend the inter 
partes reexamination proceeding.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003] 

§ 1.989 Merger of concurrent reexamination proceedings. 

(a) If any reexamination is ordered while a 
prior inter partes reexamination proceeding is pending 
for the same patent and prosecution in the prior 
inter partes reexamination proceeding has not been 
terminated, a decision may be made to merge the two 
proceedings or to suspend one of the two proceedings. 
Where merger is ordered, the merged examination 
will normally result in the issuance of a single reexamination 
certificate under § 1.997. 

(b) An inter partes reexamination proceeding 
filed under § 1.913 which is merged with an ex parte 
reexamination proceeding filed under § 1.510 will 
result in the merged proceeding being governed by 
§§ 1.902 through 1.997, except that the rights of any 
third party requester of the ex parte reexamination 
shall be governed by §§ 1.510 through 1.560.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.991 Merger of concurrent reissue application 

and inter partes reexamination proceed

ing. 

If a reissue application and an inter partes reexamination 
proceeding on which an order pursuant to 
§ 1.931 has been mailed are pending concurrently on 
a patent, a decision may be made to merge the two 
proceedings or to suspend one of the two proceedings. 
Where merger of a reissue application and an inter 
partes reexamination proceeding is ordered, the 
merged proceeding will be conducted in accordance 
with §§ 1.171 through 1.179, and the patent owner 
will be required to place and maintain the same claims 
in the reissue application and the inter partes reexamination 
proceeding during the pendency of the merged 
proceeding. In a merged proceeding the third party 
requester may participate to the extent provided under 
§§ 1.902 through 1.997, except that such participation 
shall be limited to issues within the scope of inter 
partes reexamination. The examiner’s actions and any 
responses by the patent owner or third party requester 
in a merged proceeding will apply to both the reissue 
application and the inter partes reexamination proceeding 
and be physically entered into both files. Any 
inter partes reexamination proceeding merged with a 
reissue application shall be terminated by the grant of 
the reissued patent.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

§ 1.993 Suspension of concurrent interference 

and inter partes reexamination proceed

ing. 

If a patent in the process of inter partes reexamination 
is or becomes involved in an interference, the 

 

Director may suspend the inter partes reexamination 
or the interference. The Director will not consider a 
request to suspend an interference unless a motion 
under § 41.121(a)(3) of this title to suspend the interference 
has been presented to, and denied by, an 
administrative patent judge and the request is filed 
within ten (10) days of a decision by an administrative 
patent judge denying the motion for suspension or 
such other time as the administrative patent judge 
may set.

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003; revised, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004] 

§ 1.995 Third party requester’s participation 
rights preserved in merged proceeding. 

When a third party requester is involved in one or 
more proceedings, including an inter partes reexamination 
proceeding, the merger of such proceedings 
will be accomplished so as to preserve the third party 
requester’s right to participate to the extent specifically 
provided for in these regulations. In merged proceedings 
involving different requesters, any paper 
filed by one party in the merged proceeding shall be 
served on all other parties of the merged proceeding. 

 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001] 

REEXAMINATION CERTIFICATE IN INTER 
PARTES REEXAMINATION 

§ 1.997 Issuance of inter partes reexamination 
certificate. 

(a) Upon the conclusion of an inter partes reexamination 
proceeding, the Director will issue a certificate 
in accordance with 35 U.S.C. 316 setting forth 
the results of the inter partes reexamination proceeding 
and the content of the patent following the inter 
partes reexamination proceeding. 
(b) A certificate will be issued in each patent in 
which an inter partes reexamination proceeding has 
been ordered under § 1.931. Any statutory disclaimer 
filed by the patent owner will be made part of the certificate. 


(c) The certificate will be sent to the patent 
owner at the address as provided for in § 1.33(c). A 
copy of the certificate will also be sent to the third 
party requester of the inter partes reexamination proceeding. 
(d) If a certificate has been issued which cancels 
all of the claims of the patent, no further Office 
proceedings will be conducted with that patent or any 
reissue applications or any reexamination requests 
relating thereto. 
(e) If the inter partes reexamination proceeding 
is terminated by the grant of a reissued patent as provided 
in § 1.991, the reissued patent will constitute 
the reexamination certificate required by this section 
and 35 U.S.C. 316. 
(f) A notice of the issuance of each certificate 
under this section will be published in the Official 
Gazette.


 [Added, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 
2001; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

PART 3 — ASSIGNMENT, RECORDING 
AND RIGHTS OF ASSIGNEE 

Sec. 

3.1 Definitions. 

DOCUMENTS ELIGIBLE FOR RECORDING 

3.11 Documents which will be recorded. 

3.16 Assignability of trademarks prior to filing an 
allegation of use. 

REQUIREMENTS FOR RECORDING 

3.21 Identification of patents and patent applications. 

3.24 Requirements for documents and cover sheets 
relating to patents and patent applications. 

3.25 Recording requirements for trademark applications 
and registrations. 

3.26 English language requirement. 

3.27 Mailing address for submitting documents to be 
recorded. 

3.28 Requests for recording. 

 

COVER SHEET REQUIREMENTS 

3.31 Cover sheet content. 

3.34 Correction of cover sheet errors. 

FEES 

3.41 Recording fees. 

DATE AND EFFECT OF RECORDING 

3.51 Recording date. 

3.54 Effect of recording. 

3.56 Conditional assignments. 

3.58 Governmental registers. 

DOMESTIC REPRESENTATIVE 

3.61 Domestic representative. 

ACTION TAKEN BY ASSIGNEE 

3.71 Prosecution by assignee. 

3.73 Establishing right of assignee to take action. 

ISSUANCE TO ASSIGNEE 

3.81 Issue of patent to assignee. 

3.85 Issue of registration to assignee. 

§ 3.1 Definitions. 

For purposes of this part, the following definitions 
shall apply: 

Application means a national application for patent, 
an international patent application that designates the 
United States of America, or an application to register 
a trademark under section 1 or 44 of the Trademark 
Act, 15 U.S.C. 1051 or 15 U.S.C. 1126, unless otherwise 
indicated. 

Assignment means a transfer by a party of all or part 
of its right, title and interest in a patent, patent application, 
registered mark or a mark for which an application 
to register has been filed. 

Document means a document which a party 
requests to be recorded in the Office pursuant to § 

3.11 and which affects some interest in an application, 
patent, or registration. 
Office means the United States Patent and Trademark 
Office. 
Recorded document means a document which has 
been recorded in the Office pursuant to § 3.11. 

Registration means a trademark registration issued 
by the Office. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; revised, 69 FR 29865, May 26, 2004, effective June 
25, 2004] 

DOCUMENTS ELIGIBLE FOR RECORDING 

§ 3.11 Documents which will be recorded. 

(a) Assignments of applications, patents, and 
registrations, accompanied by completed cover sheets 
as specified in §§ 3.28 and 3.31, will be recorded in 
the Office. Other documents, accompanied by completed 
cover sheets as specified in §§ 3.28 and 3.31, 
affecting title to applications, patents, or registrations, 
will be recorded as provided in this part or at the discretion 
of the Director. 
(b) Executive Order 9424 of February 18, 1944 
(9 FR 1959, 3 CFR 1943-1948 Comp., p. 303) 
requires the several departments and other executive 
agencies of the Government, including Government-
owned or Government-controlled corporations, to forward 
promptly to the Director for recording all 
licenses, assignments, or other interests of the Government 
in or under patents or patent applications. 
Assignments and other documents affecting title to 
patents or patent applications and documents not 
affecting title to patents or patent applications 
required by Executive Order 9424 to be filed will be 
recorded as provided in this part. 
(c) A joint research agreement or an excerpt of 
a joint research agreement will also be recorded as 
provided in this part. 


[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; para. (c) added, 70 FR 1818, Jan. 11, 2005, 
effective Dec. 10, 2004; para. (c) revised, 70 FR 54259, 
Sept. 14, 2005, effective Sept. 14, 2005] 

 

§ 3.16 Assignability of trademarks prior to filing an allegation of use.

 Before an allegation of use under either 15 U.S.C. 
1051(c) or 15 U.S.C. 1051(d) is filed, an applicant 
may only assign an application to register a mark 
under 15 U.S.C. 1051(b) to a successor to the applicant’s 
business, or portion of the business to which the 
mark pertains, if that business is ongoing and existing. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 
30, 1999] 

REQUIREMENTS FOR RECORDING 

§ 3.21 Identification of patents and patent applications.

 An assignment relating to a patent must identify 
the patent by the patent number. An assignment relating 
to a national patent application must identify the 
national patent application by the application number 
(consisting of the series code and the serial number, 
e.g., 07/123,456). An assignment relating to an international 
patent application which designates the 
United States of America must identify the international 
application by the international application 
number (e.g., PCT/US90/01234). If an assignment of 
a patent application filed under § 1.53(b) is executed 
concurrently with, or subsequent to, the execution of 
the patent application, but before the patent application 
is filed, it must identify the patent application by 
the name of each inventor and the title of the invention 
so that there can be no mistake as to the patent 
application intended. If an assignment of a provisional 
application under § 1.53(c) is executed before the provisional 
application is filed, it must identify the provisional 
application by the name of each inventor and 
the title of the invention so that there can be no mistake 
as to the provisional application intended. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; amended, 60 FR 20195, Apr. 25, 1995, effective June 
8, 1995; revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; revised, 69 FR 29865, May 26, 2004, effective 
June 25, 2004] 

§ 3.24 Requirements for documents and cover 
sheets relating to patents and patent 
applications. 

(a) For electronic submissions: Either a copy of 
the original document or an extract of the original 
document may be submitted for recording. All documents 
must be submitted as digitized images in 
Tagged Image File Format (TIFF) or another form as 
prescribed by the Director. When printed to a paper 
size of either 21.6 by 27.9 cm (8 1/2 inches by 11 
inches) or 21.0 by 29.7 cm (DIN size A4), the document 
must be legible and a 2.5 cm (one-inch) margin 
must be present on all sides. 
(b) For paper or facsimile submissions: Either a 
copy of the original document or an extract of the 
original document must be submitted for recording. 
Only one side of each page may be used. The paper 
size must be either 21.6 by 27.9 cm (8 1/2 inches by 
11 inches) or 21.0 by 29.7 cm (DIN size A4), and in 
either case, a 2.5 cm (one-inch) margin must be 
present on all sides. For paper submissions, the paper 
used should be flexible, strong white, non-shiny, and 
durable. The Office will not return recorded documents, 
so original documents must not be submitted 
for recording. 


[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; heading revised, 64 FR 48900, Sept. 8, 1999, effective 
Oct. 30, 1999; revised, 69 FR 29865, May 26, 2004, 
effective June 25, 2004; revised, 69 FR 29865, May 26, 
2004, effective June 25, 2004] 

§ 3.25 Recording requirements for trademark 
applications and registrations. 

(a) Documents affecting title. To record documents 
affecting title to a trademark application or registration, 
a legible cover sheet (see § 3.31) and one of 
the following must be submitted: 
(1) A copy of the original document; 


(2) A copy of an extract from the document 
evidencing the effect on title; or 
(3) A statement signed by both the party conveying 
the interest and the party receiving the interest 
explaining how the conveyance affects title. 
(b) Name changes. Only a legible cover sheet is 
required (See § 3.31). 
(c) All documents. (1) For electronic submissions: All documents must be submitted as digitized 
images in Tagged Image File Format (TIFF) or 


 

another form as prescribed by the Director. When 
printed to a paper size of either 21.6 by 27.9 cm (8 1/2 
by 11 inches) or 21.0 by 29.7 cm (DIN size A4), a 2.5 
cm (one-inch) margin must be present on all sides. 

(2) For paper or facsimile submissions: All 
documents should be submitted on white and non-
shiny paper that is either 8 1/2 by 11 inches (21.6 by 

27.9 cm) or DIN size A4 (21.0 by 29.7 cm) with a 
one-inch (2.5 cm) margin on all sides in either case. 
Only one side of each page may be used. The Office 
will not return recorded documents, so original documents 
should not be submitted for recording. 

[Added, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 
1999; revised, 69 FR 29865, May 26, 2004, effective June 
25, 2004] 

§ 3.26 English language requirement. 

The Office will accept and record non-English language 
documents only if accompanied by an English 
translation signed by the individual making the translation. 


[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997] 

§ 3.27 Mailing address for submitting documents to be recorded.

 Documents and cover sheets submitted by mail for 
recordation should be addressed to Mail Stop Assignment 
Recordation Services, Director of the United 
States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450, unless they are 
filed together with new applications. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; revised, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; revised, 69 FR 29865, May 26, 2004, 
effective June 25, 2004] 

§ 3.28 Requests for recording. 

Each document submitted to the Office for recording 
must include a single cover sheet (as specified in § 
3.31) referring either to those patent applications and 
patents, or to those trademark applications and registrations, 
against which the document is to be 
recorded. If a document to be recorded includes interests 
in, or transactions involving, both patents and 
trademarks, then separate patent and trademark cover 
sheets, each accompanied by a copy of the document 
to be recorded, must be submitted. If a document to be 
recorded is not accompanied by a completed cover 
sheet, the document and the incomplete cover sheet 
will be returned pursuant to § 3.51 for proper completion, 
in which case the document and a completed 
cover sheet should be resubmitted. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; revised, 64 FR 48900, Sept. 8, 1999, effective Oct. 
30, 1999; revised, 70 FR 56119, Sept. 26, 2005, effective 
Nov. 25, 2005] 

COVER SHEET REQUIREMENTS 

§ 3.31 Cover sheet content. 

(a) Each patent or trademark cover sheet 
required by § 3.28 must contain: 
(1) The name of the party conveying the 
interest; 
(2) The name and address of the party receiving 
the interest; 
(3) A description of the interest conveyed or 
transaction to be recorded; 
(4) Identification of the interests involved: 


(i) For trademark assignments and trademark 
name changes: Each trademark registration 
number and each trademark application number, if 
known, against which the Office is to record the document. 
If the trademark application number is not 
known, a copy of the application or a reproduction of 
the trademark must be submitted, along with an estimate 
of the date that the Office received the application; 
or 
(ii) For any other document affecting 
title to a trademark or patent application, registration 
or patent: Each trademark or patent application number 
or each trademark registration number or patent 
against which the document is to be recorded, or an 
indication that the document is filed together with a 
patent application; 
(5) The name and address of the party to 
whom correspondence concerning the request to 
record the document should be mailed; 
(6) The date the document was executed; 


(7) The signature of the party submitting the 
document. For an assignment document or name 


 

change filed electronically, the person who signs the 
cover sheet must either: 

(i) Place a symbol comprised of letters, 
numbers, and/or punctuation marks between forward 
slash marks (e.g. /Thomas O’ Malley III/) in the signature 
block on the electronic submission; or 
(ii) Sign the cover sheet using some other 
form of electronic signature specified by the Director. 
(b) A cover sheet should not refer to both patents 
and trademarks, since any information, including 
information about pending patent applications, submitted 
with a request for recordation of a document 
against a trademark application or trademark registration 
will become public record upon recordation. 
(c) Each patent cover sheet required by § 3.28 
seeking to record a governmental interest as provided 
by § 3.11(b) must: 
(1) Indicate that the document relates to a 
Government interest; and 
(2) Indicate, if applicable, that the document 
to be recorded is not a document affecting title (see § 
3.41(b)). 
(d) Each trademark cover sheet required by 
§ 3.28 seeking to record a document against a trademark 
application or registration should include, in 
addition to the serial number or registration number of 
the trademark, identification of the trademark or a 
description of the trademark, against which the Office 
is to record the document. 
(e) Each patent or trademark cover sheet 
required by § 3.28 should contain the number of 
applications, patents or registrations identified in the 
cover sheet and the total fee. 
(f) Each trademark cover sheet should include 
the citizenship of the party conveying the interest and 
the citizenship of the party receiving the interest. In 
addition, if the party receiving the interest is a partnership 
or joint venture, the cover sheet should set forth 
the names, legal entities, and national citizenship (or 
the state or country of organization) of all general 
partners or active members that compose the partnership 
or joint venture. 
(g) The cover sheet required by § 3.28 seeking 
to record a joint research agreement or an excerpt of a 
joint research agreement as provided by § 3.11(c) 
must: 
(1) Identify the document as a “joint research 
agreement” (in the space provided for the description 


of the interest conveyed or transaction to be recorded 
if using an Office-provided form); 

(2) Indicate the name of the owner of the 
application or patent (in the space provided for the 
name and address of the party receiving the interest if 
using an Office-provided form); 
(3) Indicate the name of each other party to 
the joint research agreement party (in the space provided 
for the name of the party conveying the interest 
if using an Office-provided form); and 
(4) Indicate the date the joint research agreement 
was executed. 


[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; para. (c) added, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; paras. (a)-(b) revised, paras. (d)-(e) 
added, 64 FR 48900, Sept. 8, 1999, effective Oct. 30, 1999; 
para. (a)(7) deleted and para. (a)(8) redesignated as para. 
(a)(7), 67 FR 79520, Dec. 30, 2002, effective Dec. 30, 
2002; paras. (a)(7) & (c)(1) revised and para. (f) added, 69 
FR 29865, May 26, 2004, effective June 25, 2004; para (g) 
added, 70 FR 1818, Jan. 11, 2005, effective Dec. 10, 2004; 
para. (a)(7)(i) revised, 70 FR 56119, Sept. 26, 2005, effective 
Nov. 25, 2005] 

§ 3.34 Correction of cover sheet errors. 

(a) An error in a cover sheet recorded pursuant 
to § 3.11 will be corrected only if: 
(1) The error is apparent when the cover 
sheet is compared with the recorded document to 
which it pertains and 
(2) A corrected cover sheet is filed for recordation. 
(b) The corrected cover sheet must be accompanied 
by a copy of the document originally submitted 
for recording and by the recording fee as set forth in § 


3.41. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; para. (b) revised, 69 FR 29865, May 26, 2004, effective 
June 25, 2004] 

FEES 

§ 3.41 Recording fees. 

(a) All requests to record documents must be 
accompanied by the appropriate fee. Except as provided 
in paragraph (b) of this section, a fee is required 
for each application, patent and registration against 
which the document is recorded as identified in the 

 

cover sheet. The recording fee is set in § 1.21(h) of 
this chapter for patents and in § 2.6(b)(6) of this chapter 
for trademarks. 

(b) No fee is required for each patent application 
and patent against which a document required by 
Executive Order 9424 is to be filed if: 
(1) The document does not affect title and is 
so identified in the cover sheet (see § 3.31(c)(2)); and 
(2) The document and cover sheet are either: 
Faxed or electronically submitted as prescribed by the 
Director, or mailed to the Office in compliance with § 


3.27. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997; para. (a) amended, 63 FR 48081, Sept. 9, 1998, 
effective October 9, 1998; para. (a) corrected, 63 FR 
52158, Sept. 10, 1998; para. (b)(2) revised, 69 FR 29865, 
May 26, 2004, effective June 25, 2004] 

DATE AND EFFECT OF RECORDING 

§ 3.51 Recording date. 

The date of recording of a document is the date the 
document meeting the requirements for recording set 
forth in this part is filed in the Office. A document 
which does not comply with the identification 
requirements of § 3.21 will not be recorded. Documents 
not meeting the other requirements for recording, 
for example, a document submitted without a 
completed cover sheet or without the required fee, 
will be returned for correction to the sender where a 
correspondence address is available. The returned 
papers, stamped with the original date of receipt by 
the Office, will be accompanied by a letter which will 
indicate that if the returned papers are corrected and 
resubmitted to the Office within the time specified in 
the letter, the Office will consider the original date of 
filing of the papers as the date of recording of the document. 
The procedure set forth in § 1.8 or § 1.10 of 
this chapter may be used for resubmissions of 
returned papers to have the benefit of the date of 
deposit in the United States Postal Service. If the 
returned papers are not corrected and resubmitted 
within the specified period, the date of filing of the 
corrected papers will be considered to be the date of 
recording of the document. The specified period to 
resubmit the returned papers will not be extended. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997] 

§ 3.54 Effect of recording. 

The recording of a document pursuant to § 3.11 is 
not a determination by the Office of the validity of the 
document or the effect that document has on the title 
to an application, a patent, or a registration. When 
necessary, the Office will determine what effect a document 
has, including whether a party has the authority 
to take an action in a matter pending before the 
Office. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992] 

§ 3.56 Conditional assignments. 

Assignments which are made conditional on 
the performance of certain acts or events, such as the 
payment of money or other condition subsequent, if 
recorded in the Office, are regarded as absolute 
assignments for Office purposes until cancelled with 
the written consent of all parties or by the decree of a 
court of competent jurisdiction. The Office does not 
determine whether such conditions have been fulfilled. 


[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992] 

§ 3.58 Governmental registers. 

(a) The Office will maintain a Departmental 
Register to record governmental interests required to 
be recorded by Executive Order 9424. This Departmental 
Register will not be open to public inspection 
but will be available for examination and inspection 
by duly authorized representatives of the Government. 
Governmental interests recorded on the Departmental 
Register will be available for public inspection 
as provided in § 1.12. 
(b) The Office will maintain a Secret Register 
to record governmental interests required to be 
recorded by Executive Order 9424. Any instrument to 
be recorded will be placed on this Secret Register at 
the request of the department or agency submitting 
the same. No information will be given concerning 
any instrument in such record or register, and no 
examination or inspection thereof or of the index 


 

thereto will be permitted, except on the written 
authority of the head of the department or agency 
which submitted the instrument and requested 
secrecy, and the approval of such authority by the 
Director. No instrument or record other than the one 
specified may be examined, and the examination must 
take place in the presence of a designated official of 
the Patent and Trademark Office. When the department 
or agency which submitted an instrument no 
longer requires secrecy with respect to that instrument, 
it must be recorded anew in the Departmental 
Register. 

[Added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

DOMESTIC REPRESENTATIVE 

§ 3.61 Domestic representative. 

If the assignee of a patent, patent application, trademark 
application or trademark registration is not 
domiciled in the United States, the assignee may designate 
a domestic representative in a document filed 
in the United States Patent and Trademark Office. The 
designation should state the name and address of a 
person residing within the United States on whom 
may be served process or notice of proceedings affecting 
the application, patent or registration or rights 
thereunder. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; revised, 67 FR 79520, Dec. 30, 2002, effective Dec. 
30, 2002] 

ACTION TAKEN BY ASSIGNEE 

§ 3.71 Prosecution by assignee. 

(a) Patents — conducting of prosecution. One 
or more assignees as defined in paragraph (b) of this 
section may, after becoming of record pursuant to 
paragraph (c) of this section, conduct prosecution of a 
national patent application or a reexamination proceeding 
to the exclusion of either the inventive entity, 
or the assignee(s) previously entitled to conduct prosecution. 
(b) Patents — assignee(s) who can prosecute. 
The assignee(s) who may conduct either the prosecu


tion of a national application for patent or a reexamination 
proceeding are: 

(1) A single assignee. An assignee of the 
entire right, title and interest in the application or 
patent being reexamined who is of record, or 
(2) Partial assignee(s) together or with 
inventor(s). All partial assignees, or all partial assignees 
and inventors who have not assigned their right, 
title and interest in the application or patent being 
reexamined, who together own the entire right, title 
and interest in the application or patent being reexamined. 
A partial assignee is any assignee of record having 
less than the entire right, title and interest in the 
application or patent being reexamined. 
(c) Patents — Becoming of record. An assignee 
becomes of record either in a national patent application 
or a reexamination proceeding by filing a statement 
in compliance with § 3.73(b) that is signed by a 
party who is authorized to act on behalf of the 
assignee. 
(d) Trademarks. The assignee of a trademark 
application or registration may prosecute a trademark 
application, submit documents to maintain a trademark 
registration, or file papers against a third party 
in reliance on the assignee’s trademark application or 
registration, to the exclusion of the original applicant 
or previous assignee. The assignee must establish 
ownership in compliance with § 3.73(b). 


[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 
7, 2000] 

§ 3.73 Establishing right of assignee to take 
action. 

(a) The inventor is presumed to be the owner of 
a patent application, and any patent that may issue 
therefrom, unless there is an assignment. The original 
applicant is presumed to be the owner of a trademark 
application or registration, unless there is an assignment. 


(b)(1) In order to request or take action in a 
patent or trademark matter, the assignee must establish 
its ownership of the patent or trademark property 
of paragraph (a) of this section to the satisfaction of 
the Director. The establishment of ownership by the 
assignee may be combined with the paper that 
requests or takes the action. Ownership is established 

 

by submitting to the Office a signed statement identifying 
the assignee, accompanied by either: 

(i) Documentary evidence of a chain of 
title from the original owner to the assignee (e.g., 
copy of an executed assignment). For trademark matters 
only, the documents submitted to establish ownership 
may be required to be recorded pursuant to § 3.11 
in the assignment records of the Office as a condition 
to permitting the assignee to take action in a matter 
pending before the Office. For patent matters only, the 
submission of the documentary evidence must be 
accompanied by a statement affirming that the documentary 
evidence of the chain of title from the original 
owner to the assignee was or concurrently is being 
submitted for recordation pursuant to § 3.11; or 
(ii) A statement specifying where documentary 
evidence of a chain of title from the original 
owner to the assignee is recorded in the assignment 
records of the Office (e.g., reel and frame number). 
(2) The submission establishing ownership 
must show that the person signing the submission is a 
person authorized to act on behalf of the assignee by: 
(i) Including a statement that the person 
signing the submission is authorized to act on behalf 
of the assignee; or 
(ii) Being signed by a person having 
apparent authority to sign on behalf of the assignee, 
e.g., an officer of the assignee. 
(c) For patent matters only: 


(1) Establishment of ownership by the 
assignee must be submitted prior to, or at the same 
time as, the paper requesting or taking action is submitted. 
(2) If the submission under this section is by 
an assignee of less than the entire right, title and interest, 
such assignee must indicate the extent (by percentage) 
of its ownership interest, or the Office may 
refuse to accept the submission as an establishment of 
ownership. 


[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; para. (b) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; revised, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000; para. (b)(1) revised, 68 FR 14332, 
Mar. 25, 2003, effective May 1, 2003; para. (b)(1)(i) 
revised, 70 FR 56119, Sept. 26, 2005, effective Nov. 25, 
2005.] 

ISSUANCE TO ASSIGNEE 

§ 3.81 Issue of patent to assignee. 

(a) With payment of the issue fee: An application 
may issue in the name of the assignee consistent 
with the application’s assignment where a request for 
such issuance is submitted with payment of the issue 
fee, provided the assignment has been previously 
recorded in the Office. If the assignment has not been 
previously recorded, the request must state that the 
document has been filed for recordation as set forth in 
§ 3.11. 
(b) After payment of the issue fee: Any request 
for issuance of an application in the name of the 
assignee submitted after the date of payment of the 
issue fee, and any request for a patent to be corrected 
to state the name of the assignee, must state that the 
assignment was submitted for recordation as set forth 
in § 3.11 before issuance of the patent, and must 
include a request for a certificate of correction under § 


1.323 of this chapter (accompanied by the fee set forth 
in § 1.20(a)) and the processing fee set forth in § 1.17 

(i) of this chapter. 
(c) Partial assignees. (1) If one or more 
assignee, together with one or more inventor, holds 
the entire right, title, and interest in the application, 
the patent may issue in the names of the assignee and 
the inventor. 
(2) If multiple assignees hold the entire right, 
title, and interest to the exclusion of all the inventors, 
the patent may issue in the names of the multiple 
assignees. 


[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992; amended, 60 FR 20195, Apr. 25, 1995, effective June 
8, 1995; revised, 65 FR 54604, Sept. 8, 2000, effective 
Nov. 7, 2000; revised, 69 FR 29865, May 26, 2004, effective 
June 25, 2004] 

§ 3.85 Issue of registration to assignee. 

The certificate of registration may be issued to the 
assignee of the applicant, or in a new name of the 
applicant, provided that the party files a written 
request in the trademark application by the time the 
application is being prepared for issuance of the certificate 
of registration, and the appropriate document 
is recorded in the Office. If the assignment or name 
change document has not been recorded in the Office, 
then the written request must state that the document 

 

has been filed for recordation. The address of the 
assignee must be made of record in the application 
file. 

[Added, 57 FR 29634, July 6, 1992, effective Sept. 4, 
1992] 

PART 4 — COMPLAINTS REGARDING 
INVENTION PROMOTERS 

Sec. 

4.1 Complaints Regarding Invention Promoters. 

4.2 Definitions. 

4.3 Submitting Complaints 

4.4 Invention Promoter Reply. 

4.5 Notice by Publication. 

4.6 Attorneys and Agents 

§ 4.1 Complaints Regarding Invention Promoters. 

These regulations govern the Patent and Trademark 
Office’s (Office) responsibilities under the Inventors’ 
Rights Act of 1999, which can be found in the U.S. 
Code at 35 U.S.C. 297. The Act requires the Office to 
provide a forum for the publication of complaints 
concerning invention promoters. The Office will not 
conduct any independent investigation of the invention 
promoter. Although the Act provides additional 
civil remedies for persons injured by invention promoters, 
those remedies must be pursued by the injured 
party without the involvement of the Office. 

[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 
2000] 

§ 4.2 Definitions. 

(a) Invention Promoter means any person, firm, 
partnership, corporation, or other entity who offers to 
perform or performs invention promotion services for, 
or on behalf of, a customer, and who holds itself out 
through advertising in any mass media as providing 
such services, but does not include— 
(1) Any department or agency of the Federal 
Government or of a State or local government; 
(2) Any nonprofit, charitable, scientific, or 
educational organization qualified under applicable 
State law or described under section 170(b)(1)(A) of 
the Internal Revenue Code of 1986; 


(3) Any person or entity involved in the evaluation 
to determine commercial potential of, or offering 
to license or sell, a utility patent or a previously 
filed nonprovisional utility patent application; 
(4) Any party participating in a transaction 
involving the sale of the stock or assets of a business; 
or 
(5) Any party who directly engages in the 
business of retail sales of products or the distribution 
of products. 
(b) Customer means any individual who enters 
into a contract with an invention promoter for invention 
promotion services. 
(c) Contract for Invention Promotion Services 
means a contract by which an invention promoter 
undertakes invention promotion services for a customer. 
(d) Invention Promotion Services means the 
procurement or attempted procurement for a customer 
of a firm, corporation, or other entity to develop and 
market products or services that include the invention 
of the customer. 


[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 
2000] 

§ 4.3 Submitting Complaints. 

(a) A person may submit a complaint concerning 
an invention promoter with the Office. A person 
submitting a complaint should understand that the 
complaint may be forwarded to the invention promoter 
and may become publicly available. The Office 
will not accept any complaint that requests that it be 
kept confidential. 
(b) A complaint must be clearly marked, or otherwise 
identified, as a complaint under these rules. 
The complaint must include: 
(1) The name and address of the complainant; 
(2) The name and address of the invention 
promoter; 
(3) The name of the customer; 


(4) The invention promotion services offered 
or performed by the invention promoter; 
(5) The name of the mass media in which the 
invention promoter advertised providing such services; 
(6) An explanation of the relationship 
between the customer and the invention promoter, and 


 

(7) A signature of the complainant. 

(c) The complaint should fairly summarize the 
action of the invention promoter about which the person 
complains. Additionally, the complaint should 
include names and addresses of persons believed to be 
associated with the invention promoter. Complaints, 
and any replies, must be addressed to: Mail Stop 24, 
Commissioner for Patents, P.O. Box 1450, Alexandria, 
Virginia 22313-1450. 
(d) Complaints that do not provide the information 
requested in paragraphs (b) and (c) of this section 
will be returned. If complainant’s address is not provided, 
the complaint will be destroyed. 
(e) No originals of documents should be 
included with the complaint. 
(f) A complaint can be withdrawn by the complainant 
or the named customer at any time prior to its 
publication. 


[Para. (c) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 4.4 Invention Promoter Reply. 

(a) If a submission appears to meet the requirements 
of a complaint, the invention promoter named 
in the complaint will be notified of the complaint and 
given 30 days to respond. The invention promoter’s 
response will be made available to the public along 
with the complaint. If the invention promoter fails to 
reply within the 30-day time period set by the Office, 
the complaint will be made available to the public. 
Replies sent after the complaint is made available to 
the public will also be published. 
(b) A response must be clearly marked, or otherwise 
identified, as a response by an invention promoter. 
The response must contain: 
(1) The name and address of the invention 
promoter; 
(2) A reference to a complaint forwarded to 
the invention promoter or a complaint previously published; 
(3) The name of the individual signing the 
response; and 
(4) The title or authority of the individual 
signing the response. 


[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 
2000] 

§ 4.5 Notice by Publication. 

If the copy of the complaint that is mailed to the 
invention promoter is returned undelivered, then the 
Office will publish a Notice of Complaint Received in 
the Official Gazette, the Federal Register, or on the 
Office’s Internet home page. The invention promoter 
will be given 30 days from such notice to submit a 
reply to the complaint. If the Office does not receive a 
reply from the invention promoter within 30 days, the 
complaint alone will become publicly available. 

[Added, 65 FR 3127, Jan. 20, 2000, effective Jan. 28, 
2000] 

§ 4.6 Attorneys and Agents. 

Complaints against registered patent attorneys and 
agents will not be treated under this section, unless a 
complaint fairly demonstrates that invention promotion 
services are involved. Persons having complaints 
about registered patent attorneys or agents should 
contact the Office of Enrollment and Discipline at 
Mail Stop OED, Director of the United States Patent 
and Trademark Office, PO Box 1450, Alexandria, 
Virginia 22313-1450, and the attorney discipline section 
of the attorney’s state licensing bar if an attorney 
is involved. 

[Added, 65 FR 3127, Jan. 20, 2000, effective Jan.28, 
2000; revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003] 

PART 5 — SECRECY OF CERTAIN 
INVENTIONS AND LICENSES TO
EXPORT AND FILE APPLICATIONS IN 
FOREIGN COUNTRIES


SECRECY 

Sec. 

5.1 Applications and correspondence involving national 
security. 

5.2 Secrecy order. 

5.3 Prosecution of application under secrecy orders; 
withholding patent. 

5.4 Petition for rescission of secrecy order. 

5.5 Permit to disclose or modification of secrecy order. 

5.6 [Reserved] 

5.7 [Reserved] 

 

5.8 [Reserved] 
LICENSES FOR FOREIGN 
EXPORTING AND FILING 
5.11 License for filing in a foreign country an application 
on an invention made in the United States or for 
transmitting international application. 
5.12 Petition for license. 
5.13 Petition for license; no corresponding application. 
5.14 Petition for license; corresponding U.S. application. 
5.15 Scope of license. 
5.16 [Reserved] 
5.17 [Reserved] 
5.18 Arms, ammunition, and implements of war. 
5.19 Export of technical data. 
5.20 Export of technical data relating to sensitive nuclear 
technology. 
5.25 Petition for retroactive license. 
GENERAL 
5.31 [Reserved] 
5.32 [Reserved] 
5.33 [Reserved] 

SECRECY 

§ 5.1 Applications and correspondence involving national security. 

(a) All correspondence in connection with this 
part, including petitions, should be addressed to: Mail 
Stop L&R, Commissioner for Patents, P.O. Box 1450, 
Alexandria, Virginia 22313-1450. 
(b) Application as used in this part includes 
provisional applications filed under 35 U.S.C. 111(b) 
(§ 1.9(a)(2) of this chapter), nonprovisional applications 
filed under 35 U.S.C. 111(a) or entering the 
national stage from an international application after 
compliance with 35 U.S.C. 371 (§ 1.9(a)(3)), or international 
applications filed under the Patent Cooperation 
Treaty prior to entering the national stage of 
processing (§ 1.9(b)). 
(c) Patent applications and documents relating 
thereto that are national security classified (see § 
1.9(i) of this chapter) and contain authorized national 
security markings (e.g., “Confidential,” “Secret” or 
“Top Secret”) are accepted by the Office. National 
security classified documents filed in the Office must 


be either hand-carried to Licensing and Review or 
mailed to the Office in compliance with paragraph (a) 
of this section. 

(d) The applicant in a national security classified 
patent application must obtain a secrecy order 
pursuant to § 5.2(a). If a national security classified 
patent application is filed without a notification pursuant 
to § 5.2(a), the Office will set a time period 
within which either the application must be declassified, 
or the application must be placed under a secrecy 
order pursuant to § 5.2(a), or the applicant must submit 
evidence of a good faith effort to obtain a secrecy 
order pursuant to § 5.2(a) from the relevant department 
or agency in order to prevent abandonment of 
the application. If evidence of a good faith effort to 
obtain a secrecy order pursuant to § 5.2(a) from the 
relevant department or agency is submitted by the 
applicant within the time period set by the Office, but 
the application has not been declassified or placed 
under a secrecy order pursuant to § 5.2(a), the Office 
will again set a time period within which either the 
application must be declassified, or the application 
must be placed under a secrecy order pursuant 
to § 5.2(a), or the applicant must submit evidence 
of a good faith effort to again obtain a secrecy order 
pursuant to § 5.2(a) from the relevant department or 
agency in order to prevent abandonment of the application. 
(e) An application will not be published under 
§ 1.211 of this chapter or allowed under § 1.311 of 
this chapter if publication or disclosure of the application 
would be detrimental to national security. An 
application under national security review will not be 
published at least until six months from its filing date 
or three months from the date the application was 
referred to a defense agency, whichever is later. A 
national security classified patent application will not 
be published under § 1.211 of this chapter or allowed 
under § 1.311 of this chapter until the application is 
declassified and any secrecy order under § 5.2(a) has 
been rescinded. 
(f) Applications on inventions made outside the 
United States and on inventions in which a U.S. Government 
defense agency has a property interest will 
not be made available to defense agencies. 


[43 FR 20470, May 11, 1978; revised, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 
54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (e) 

 

revised, 65 FR 57024, Sept. 20, 2000, effective Nov. 29, 
2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; para. (a) revised, 69 FR 29865, May 26, 
2004, effective June 25, 2004] 

§ 5.2 Secrecy order. 

(a) When notified by the chief officer of a 
defense agency that publication or disclosure of the 
invention by the granting of a patent would be detrimental 
to the national security, an order that the 
invention be kept secret will be issued by the Commissioner 
for Patents. 
(b) Any request for compensation as provided 
in 35 U.S.C. 183 must not be made to the Patent and 
Trademark Office, but directly to the department or 
agency which caused the secrecy order to be issued. 
(c) An application disclosing any significant 
part of the subject matter of an application under a 
secrecy order pursuant to paragraph (a) of this section 
also falls within the scope of such secrecy order. Any 
such application that is pending before the Office 
must be promptly brought to the attention of Licensing 
and Review, unless such application is itself under 
a secrecy order pursuant to paragraph (a) of this section. 
Any subsequently filed application containing 
any significant part of the subject matter of an application 
under a secrecy order pursuant to paragraph (a) 
of this section must either be hand-carried to Licensing 
and Review or mailed to the Office in compliance 
with § 5.1(a). 


[24 FR 10381, Dec. 22, 1959; para. (b) revised, paras. 

(c) and (d) removed, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; para. (c) added, 65 FR 54604, Sept. 8, 2000, 
effective Nov. 7, 2000; para. (a) revised, 68 FR 14332, Mar. 
25, 2003, effective May 1, 2003; revised, 69 FR 49959, 
Aug. 12, 2004, effective Sept. 13, 2004] 

§ 5.3 Prosecution of application under secrecy 
orders; withholding patent. 

Unless specifically ordered otherwise, action on the 
application by the Office and prosecution by the 
applicant will proceed during the time an application 
is under secrecy order to the point indicated in this 
section: 

(a) National applications under secrecy order 
which come to a final rejection must be appealed or 
otherwise prosecuted to avoid abandonment. Appeals 
in such cases must be completed by the applicant but 
unless otherwise specifically ordered by the Commissioner 
for Patents will not be set for hearing until the 
secrecy order is removed. 

(b) An interference will not be declared involving 
a national application under secrecy order. An 
applicant whose application is under secrecy order 
may suggest an interference (§ 41.202(a) of this title), 
but the Office will not act on the request while the 
application remains under a secrecy order. 
(c) When the national application is found to be 
in condition for allowance except for the secrecy 
order the applicant and the agency which caused the 
secrecy order to be issued will be notified. This notice 
(which is not a notice of allowance under § 1.311 of 
this chapter) does not require reply by the applicant 
and places the national application in a condition of 
suspension until the secrecy order is removed. When 
the secrecy order is removed the Patent and Trademark 
Office will issue a notice of allowance under 
§ 1.311 of this chapter, or take such other action as 
may then be warranted. 
(d) International applications under secrecy 
order will not be mailed, delivered, or otherwise 
transmitted to the international authorities or the 
applicant. International applications under secrecy 
order will be processed up to the point where, if it 
were not for the secrecy order, record and search copies 
would be transmitted to the international authorities 
or the applicant. 


[43 FR 20470, May 11, 1978; amended 43 FR 28479, 
June 30, 1978; para. (b) amended 53 FR 23736, June 23, 
1988, effective Sept. 12, 1988; para. (c) revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a) 
revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 
2003; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 5.4 Petition for rescission of secrecy order. 

(a) A petition for rescission or removal of a 
secrecy order may be filed by, or on behalf of, any 
principal affected thereby. Such petition may be in letter 
form, and it must be in duplicate. 
(b) The petition must recite any and all facts 
that purport to render the order ineffectual or futile if 
this is the basis of the petition. When prior publications 
or patents are alleged the petition must give 
complete data as to such publications or patents and 
should be accompanied by copies thereof. 


 

(c) The petition must identify any contract 
between the Government and any of the principals 
under which the subject matter of the application or 
any significant part thereof was developed or to which 
the subject matter is otherwise related. If there is no 
such contract, the petition must so state. 
(d) Appeal to the Secretary of Commerce, as 
provided by 35 U.S.C. 181, from a secrecy order cannot 
be taken until after a petition for rescission of the 
secrecy order has been made and denied. Appeal must 
be taken within sixty days from the date of the denial, 
and the party appealing, as well as the department or 
agency which caused the order to be issued, will be 
notified of the time and place of hearing. 


[24 FR 10381, Dec. 22, 1959; paras. (a) and (d) 
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 5.5 Permit to disclose or modification of 
secrecy order. 

(a) Consent to disclosure, or to the filing of an 
application abroad, as provided in 35 U.S.C. 182, 
shall be made by a “permit” or “modification” of the 
secrecy order. 
(b) Petitions for a permit or modification must 
fully recite the reason or purpose for the proposed disclosure. 
Where any proposed disclose is known to be 
cleared by a defense agency to receive classified 
information, adequate explanation of such clearance 
should be made in the petition including the name of 
the agency or department granting the clearance and 
the date and degree thereof. The petition must be filed 
in duplicate. 
(c) In a petition for modification of a secrecy 
order to permit filing abroad, all countries in which it 
is proposed to file must be made known, as well as all 
attorneys, agents and others to whom the material will 
be consigned prior to being lodged in the foreign 
patent office. The petition should include a statement 
vouching for the loyalty and integrity of the proposed 
disclosees and where their clearance status in this or 
the foreign country is known all details should be 
given. 
(d) Consent to the disclosure of subject matter 
from one application under secrecy order may be 
deemed to be consent to the disclosure of common 


subject matter in other applications under secrecy 
order so long as the subject matter is not taken out of 
context in a manner disclosing material beyond the 
modification granted in the first application. 

(e) Organizations requiring consent for disclosure 
of applications under secrecy order to persons or 
organizations in connection with repeated routine 
operation may petition for such consent in the form of 
a general permit. To be successful such petitions must 
ordinarily recite the security clearance status of the 
disclosees as sufficient for the highest classification of 
material that may be involved. 

[24 FR 10381, Dec. 22, 1959; paras. (b) and (e) 
revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997] 

§ 5.6 [Reserved] 

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997] 

§ 5.7 [Reserved] 

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997] 

§ 5.8 [Reserved] 

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997] 

LICENSES FOR FOREIGN EXPORTING AND 
FILING 

§ 5.11 License for filing in a foreign country an 
application on an invention made in the 
United States or for transmitting international application. 

(a) A license from the Commissioner for Patents 
under 35 U.S.C. 184 is required before filing any 
application for patent including any modifications, 
amendments, or supplements thereto or divisions 
thereof or for the registration of a utility model, industrial 
design, or model, in a foreign patent office or any 
foreign patent agency or any international agency 
other than the United States Receiving Office, if the 
invention was made in the United States and: 

 

(1) An application on the invention has been 
filed in the United States less than six months prior to 
the date on which the application is to be filed, or 
(2) No application on the invention has been 
filed in the United States. 
(b) The license from the Commissioner for Patents 
referred to in paragraph (a) would also authorize 
the export of technical data abroad for purposes relating 
to the preparation, filing or possible filing and 
prosecution of a foreign patent application without 
separately complying with the regulations contained 
in 22 CFR parts 121 through 130 (International Traffic 
in Arms Regulations of the Department of State), 
15 CFR parts 730-774 (Regulations of the Bureau of 
Industry and Security, Department of Commerce) and 
10 CFR part 810 (Foreign Atomic Energy Programs 
of the Department of Energy). 
(c) Where technical data in the form of a patent 
application, or in any form, are being exported for 
purposes related to the preparation, filing or possible 
filing and prosecution of a foreign patent application, 
without the license from the Commissioner for Patents 
referred to in paragraphs (a) or (b) of this section, 
or on an invention not made in the United States, the 
export regulations contained in 22 CFR parts 120 
through 130 (International Traffic in Arms Regulations 
of the Department of State), 15 CFR parts 730774 
(Bureau of Industry and Security Regulations, 
Department of Commerce) and 10 CFR part 810 
(Assistance to Foreign Atomic Energy Activities Regulations 
of the Department of Energy) must be complied 
with unless a license is not required because a 
United States application was on file at the time of 
export for at least six months without a secrecy order 
under § 5.2 being placed thereon. The term 
“exported” means export as it is defined in 22 CFR 
part 120, 15 CFR part 734 and activities covered by 
10 CFR part 810. 
(d) If a secrecy order has been issued under 
§ 5.2, an application cannot be exported to, or filed in, 
a foreign country (including an international agency 
in a foreign country), except in accordance with § 5.5. 
(e) No license pursuant to paragraph (a) of this 
section is required: 
(1) If the invention was not made in the 
United States, or 
(2) If the corresponding United States application 
is not subject to a secrecy order under § 5.2, 


and was filed at least six months prior to the date on 
which the application is filed in a foreign country, or 

(3) For subsequent modifications, amendments 
and supplements containing additional subject 
matter to, or divisions of, a foreign patent application 
if: 
(i) A license is not, or was not, required 
under paragraph (e)(2) of this section for the foreign 
patent application; 
(ii) The corresponding United States application 
was not required to be made available for 
inspection under 35 U.S.C. 181; and 


(iii) Such modifications, amendments, and 
supplements do not, or did not, change the general 
nature of the invention in a manner which would 
require any corresponding United States application 
to be or have been available for inspection under 
35 U.S.C. 181. 

(f) A license pursuant to paragraph (a) of this 
section can be revoked at any time upon written notification 
by the Patent and Trademark Office. An 
authorization to file a foreign patent application 
resulting from the passage of six months from the date 
of filing of a United States patent application may be 
revoked by the imposition of a secrecy order. 

[49 FR 13461, Apr. 4, 1984; paras. (a) and (e), 56 FR 
1924, Jan. 18, 1991, effective Feb. 19, 1991; paras. (b), (c), 
and (e)(3) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; paras. (a)-(c) revised, 68 FR 14332, Mar. 25, 
2003, effective May 1, 2003; paras. (b) and (c) revised, 70 
FR 56119, Sept. 26, 2005, effective Nov. 25, 2005] 

§ 5.12 Petition for license. 

(a) Filing of an application for patent for inventions 
made in the United States will be considered to 
include a petition for license under 35 U.S.C. 184 for 
the subject matter of the application. The filing receipt 
will indicate if a license is granted. If the initial automatic 
petition is not granted, a subsequent petition 
may be filed under paragraph (b) of this section. 
(b) A petition for license must include the fee 
set forth in § 1.17(g) of this chapter, the petitioner’s 
address, and full instructions for delivery of the 
requested license when it is to be delivered to other 
than the petitioner. The petition should be presented in 
letter form. 


[48 FR 2714, Jan. 20, 1983; amended 49 FR 13462, 
Apr. 4, 1984; para. (b) revised, 62 FR 53131, Oct. 10, 1997, 

 

effective Dec. 1, 1997; para. (b) revised, 65 FR 54604, 
Sept. 8, 2000, effective Nov. 7, 2000; para. (b) revised, 69 
FR 56481, Sept. 21, 2004, effective Nov. 22, 2004] 

§ 5.13 Petition for license; no corresponding 
application. 

If no corresponding national or international application 
has been filed in the United States, the petition 
for license under § 5.12(b) must also be accompanied 
by a legible copy of the material upon which a license 
is desired. This copy will be retained as a measure of 
the license granted. 

[43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 
1984; revised, 62 FR 53131, Oct. 10, 1997, effective Dec. 
1, 1997] 

§ 5.14 Petition for license; corresponding U.S. 
application. 

(a) When there is a corresponding United States 
application on file, a petition for license under 
§ 5.12(b) must also identify this application by application 
number, filing date, inventor, and title, but 
a copy of the material upon which the license is 
desired is not required. The subject matter licensed 
will be measured by the disclosure of the United 
States application. 
(b) Two or more United States applications 
should not be referred to in the same petition for 
license unless they are to be combined in the foreign 
or international application, in which event the petition 
should so state and the identification of each 
United States application should be in separate paragraphs. 
(c) Where the application to be filed or 
exported abroad contains matter not disclosed in the 
United States application or applications, including 
the case where the combining of two or more United 
States applications introduces subject matter not disclosed 
in any of them, a copy of the application as it is 
to be filed in the foreign country or international 
application which is to be transmitted to a foreign 
international or national agency for filing in the 
Receiving Office, must be furnished with the petition. 
If however, all new matter in the foreign or international 
application to be filed is readily identifiable, the 
new matter may be submitted in detail and the 
remainder by reference to the pertinent United States 
application or applications. 


[43 FR 20471, May 11, 1978; 49 FR 13462, Apr. 4, 
1984; para. (a) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997] 

§ 5.15 Scope of license. 

(a) Applications or other materials reviewed 
pursuant to §§ 5.12 through 5.14, which were not 
required to be made available for inspection by 
defense agencies under 35 U.S.C. 181, will be eligible 
for a license of the scope provided in this paragraph. 
This license permits subsequent modifications, 
amendments, and supplements containing additional 
subject matter to, or divisions of, a foreign patent 
application, if such changes to the application do not 
alter the general nature of the invention in a manner 
which would require the United States application to 
have been made available for inspection under 
35 U.S.C. 181. Grant of this license authorizing the 
export and filing of an application in a foreign country 
or the transmitting of an international application to 
any foreign patent agency or international patent 
agency when the subject matter of the foreign or international 
application corresponds to that of the domestic 
application. This license includes authority: 
(1) To export and file all duplicate and formal 
application papers in foreign countries or with 
international agencies; 
(2) To make amendments, modifications, and 
supplements, including divisions, changes or supporting 
matter consisting of the illustration, exemplification, 
comparison, or explanation of subject matter 
disclosed in the application; and 
(3) To take any action in the prosecution of 
the foreign or international application provided that 
the adding of subject matter or taking of any action 
under paragraphs (a)(1) or (2) of this section does not 
change the general nature of the invention disclosed 
in the application in a manner which would require 
such application to have been made available for 
inspection under 35 U.S.C. 181 by including technical 
data pertaining to: 
(i) Defense services or articles designated 
in the United States Munitions List applicable at the 
time of foreign filing, the unlicensed exportation 
of which is prohibited pursuant to the Arms Export 
Control Act, as amended, and 22 CFR parts 121 
through 130; or 


 

(ii) Restricted Data, sensitive nuclear technology 
or technology useful in the production or utilization 
of special nuclear material or atomic energy, 
dissemination of which is subject to restrictions of the 
Atomic Energy Act of 1954, as amended, and the 
Nuclear Non-Proliferation Act of 1978, as implemented 
by the regulations for Unclassified Activities 
in Foreign Atomic Energy Programs, 10 CFR part 
810, in effect at the time of foreign filing. 
(b) Applications or other materials which were 
required to be made available for inspection under 
35 U.S.C. 181 will be eligible for a license of the 
scope provided in this paragraph. Grant of this license 
authorizes the export and filing of an application in a 
foreign country or the transmitting of an international 
application to any foreign patent agency or international 
patent agency. Further, this license includes 
authority to export and file all duplicate and formal 
papers in foreign countries or with foreign and international 
patent agencies and to make amendments, 
modifications, and supplements to, file divisions of, 
and take any action in the prosecution of the foreign 
or international application, provided subject matter 
additional to that covered by the license is not 
involved. 
(c) A license granted under § 5.12(b) pursuant 
to § 5.13 or § 5.14 shall have the scope indicated in 
paragraph (a) of this section, if it is so specified in the 
license. A petition, accompanied by the required fee 
(§ 1.17(g) of this chapter), may also be filed to change 
a license having the scope indicated in paragraph (b) 
of this section to a license having the scope indicated 
in paragraph (a) of this section. No such petition will 
be granted if the copy of the material filed pursuant to 
§ 5.13 or any corresponding United States application 
was required to be made available for inspection 
under 35 U.S.C. 181. The change in the scope of a 
license will be effective as of the date of the grant of 
the petition. 
(d) In those cases in which no license is 
required to file the foreign application or transmit the 
international application, no license is required to file 
papers in connection with the prosecution of the foreign 
or international application not involving the disclosure 
of additional subject matter. 
(e) Any paper filed abroad or transmitted to an 
international patent agency following the filing of a 
foreign or international application which changes the 


general nature of the subject matter disclosed at the 
time of filing in a manner which would require such 
application to have been made available for inspection 
under 35 U.S.C. 181 or which involves the disclosure 
of subject matter listed in paragraphs (a)(3)(i) or (ii) 
of this section must be separately licensed in the same 
manner as a foreign or international application. Further, 
if no license has been granted under § 5.12(a) on 
filing the corresponding United States application, 
any paper filed abroad or with an international patent 
agency which involves the disclosure of additional 
subject matter must be licensed in the same manner as 
a foreign or international application. 

(f) Licenses separately granted in connection 
with two or more United States applications may be 
exercised by combining or dividing the disclosures, as 
desired, provided: 
(1) Subject matter which changes the general 
nature of the subject matter disclosed at the time of 
filing or which involves subject matter listed in paragraphs 
(a)(3) (i) or (ii) of this section is not introduced 
and, 
(2) In the case where at least one of the 
licenses was obtained under § 5.12(b), additional subject 
matter is not introduced. 
(g) A license does not apply to acts done before 
the license was granted. See § 5.25 for petitions for 
retroactive licenses. 


[49 FR 13462, Apr. 4, 1984; paras. (a) - (c), (e) and (f), 
56 FR 1924, Jan. 18, 1991, effective Feb. 19, 1991; paras. 
(a)-(c) and (e) revised, 62 FR 53131, Oct. 10, 1997, effective 
Dec. 1, 1997; para. (c) revised, 69 FR 56481, Sept. 21, 
2004, effective Nov. 22, 2004] 

§ 5.16 [Reserved] 

[Removed and reserved, 62 FR 53131, Oct. 10, 1997, 
effective Dec. 1, 1997] 

§ 5.17 [Reserved] 

[49 FR 13463, Apr. 4, 1984; removed and reserved, 
62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997] 

§ 5.18 Arms, ammunition, and implements of 
war. 
(a) The exportation of technical data relating to 

arms, ammunition, and implements of war generally 

 

is subject to the International Traffic in Arms Regulations 
of the Department of State (22 CFR parts 120 
through 130); the articles designated as arms, ammunitions, 
and implements of war are enumerated in the 

U.S. Munitions List (22 CFR part 121). However, if a 
patent applicant complies with regulations issued by 
the Commissioner for Patents under 35 U.S.C. 184, 
no separate approval from the Department of State is 
required unless the applicant seeks to export technical 
data exceeding that used to support a patent application 
in a foreign country. This exemption from 
Department of State regulations is applicable regardless 
of whether a license from the Commissioner for 
Patents is required by the provisions of §§ 5.11 and 

5.12 (22 CFR part 125). 

(b) When a patent application containing subject 
matter on the Munitions List (22 CFR part 121) is 
subject to a secrecy order under § 5.2 and a petition is 
made under § 5.5 for a modification of the secrecy 
order to permit filing abroad, a separate request to the 
Department of State for authority to export classified 
information is not required (22 CFR part 125). 

[35 FR 6430., Apr. 22, 1970; revised, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997; para. (a) revised, 68 
FR 14332, Mar. 25, 2003, effective May 1, 2003] 

§ 5.19 Export of technical data. 

(a) Under regulations (15 CFR 734.3(b)(1)(v)) 
established by the Department of Commerce, a 
license is not required in any case to file a patent 
application or part thereof in a foreign country if the 
foreign filing is in accordance with the regulations (§§ 

5.11 through 5.25) of the U.S. Patent and Trademark 
Office. 

(b) An export license is not required for data 
contained in a patent application prepared wholly 
from foreign-origin technical data where such application 
is being sent to the foreign inventor to be executed 
and returned to the United States for subsequent 
filing in the U.S. Patent and Trademark Office (15 
CFR 734.10(a)). 

[45 FR 72654, Nov. 3, 1980; para. (a) revised, 58 FR 
54504, Oct. 22, 1993, effective Jan. 3, 1994; revised, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; revised, 70 
FR 56119, Sept. 26, 2005, effective Nov. 25, 2005] 

§ 5.20 Export of technical data relating to sensitive nuclear technology. 

Under regulations (10 CFR 810.7) established by 
the United States Department of Energy, an application 
filed in accordance with the regulations (§§ 5.11 
through 5.25) of the Patent and Trademark Office and 
eligible for foreign filing under 35 U.S.C. 184, is considered 
to be information available to the public in 
published form and a generally authorized activity for 
the purposes of the Department of Energy regulations. 

[49 FR 13463, Apr. 4, 1984; revised, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997] 

§ 5.25 Petition for retroactive license. 

(a) A petition for retroactive license under 
35 U.S.C. 184 shall be presented in accordance with 
§ 5.13 or § 5.14(a), and shall include: 
(1) A listing of each of the foreign countries 
in which the unlicensed patent application material 
was filed, 
(2) The dates on which the material was filed 
in each country, 
(3) A verified statement (oath or declaration) 
containing: 
(i) An averment that the subject matter in 
question was not under a secrecy order at the time it 
was filed abroad, and that it is not currently under a 
secrecy order, 
(ii) A showing that the license has been 
diligently sought after discovery of the proscribed foreign 
filing, and 


(iii) An explanation of why the material 
was filed abroad through error and without deceptive 
intent without the required license under § 5.11 first 
having been obtained, and 

(4) The required fee (§ 1.17(g) of this chapter). 
(b) The explanation in paragraph (a) of this section 
must include a showing of facts rather than a 
mere allegation of action through error and without 
deceptive intent. The showing of facts as to the nature 
of the error should include statements by those persons 
having personal knowledge of the acts regarding 
filing in a foreign country and should be accompanied 
by copies of any necessary supporting documents 
such as letters of transmittal or instructions for filing. 
The acts which are alleged to constitute error without 


 

deceptive intent should cover the period leading up to 
and including each of the proscribed foreign filings. 

(c) If a petition for a retroactive license is 
denied, a time period of not less than thirty days shall 
be set, during which the petition may be renewed. 
Failure to renew the petition within the set time period 
will result in a final denial of the petition. A final 
denial of a petition stands unless a petition is filed 
under § 1.181 within two months of the date of the 
denial. If the petition for a retroactive license is 
denied with respect to the invention of a pending 
application and no petition under § 1.181 has been 
filed, a final rejection of the application under 
35 U.S.C. 185 will be made. 

[49 FR 13463, Apr. 4, 1984; para. (a), 56 FR 1924, Jan. 
18, 1991, effective Feb. 19, 1991; para. (c) removed, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (a)(4) 
revised, para. (b) redesignated as para. (c) and para. (b) 
added, 69 FR 56481, Sept. 21, 2004, effective Nov. 22, 
2004] 

GENERAL 

§ 5.31 [Reserved] 

[24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR 
13463, Apr. 4, 1984; removed and reserved, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997] 

§ 5.32 [Reserved] 

[24 FR 10381, Dec. 22, 1959; Redesignated at 49 FR 
13463, Apr. 4, 1984; removed and reserved, 62 FR 53131, 
Oct. 10, 1997, effective Dec. 1, 1997] 

§ 5.33 [Reserved] 

[49 FR 13463, Apr. 4, 1984; amended, 61 FR 56439, 
Nov. 1, 1996, effective Dec. 2, 1996; removed and 
reserved, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 
1997] 

 

Index I – RULES RELATING TO PATENTS 

A 

Abandoned applications: 
Abandonment by failure to reply. . . . . . . . . . . . 1.135 
Abandonment during interference . . . . . . . . . . 41.127 
Abandonment for failure to pay issue fee . . . . . 1.316 
Express abandonment . . . . . . . . . . . . . . . . . . . . 1.138 
Processing and retention fee . . . . . . . . . . . . . .1.21(1) 
Referredtoin issued patents . . . . . . . . . . . . . . . . 1.14 
Revival of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.137 
When open to public inspection . . . . . . . . . . . . . 1.14 

Abandonment of application. (See Abandoned 
applications.) 

Abstract of the disclosure . . . . . . . . . . . 1.72, 1.77, 1.163 

Access to pending applications (limited) . . . . . . . . . 1.14 

Action by applicant.. . . . . . . . . . . . . . . . . . 1.111 - 1.138 

Addresses for correspondence with the 
United States Patent and Trademark Office. . . . . . . 1.1 
Board of Patent Appeals and Interferences . 1.1(a)(1), 

41.10 
Deposit account replenishment . . . . . . . . . 1.25(c)(3), 
1.25(c)(4) 
Director of the United States Patent and 

Trademark Office . . . . . . . . . . . . . . . . . . . . . . 1.1(a) 
FOIA Officer . . . . . . . . . . . . . . . . 102.1(b), 102.4(a) 
Generally. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.1(a) 
Licensing and Review. . . . . . . . . . . . . . . . . . . . 5.1(a) 
Office of the General Counsel . . . . . . . . . . . 1.1(a)(3), 

102.10(b), 102.29(b) 
Office of the Solicitor . . . . . . . . . . . . . . . . . 1.1(a)(3), 
Mail Stops 

Mail Stop 4. . . . . . . . . . . . . . . . . . . . . . . . . . . 150.6 
Mail Stop 8. . . . . . . . . . . . . . . . . . . . . . . . .1.1(a)(3) 
Mail Stop 24 . . . . . . . . . . . . . . . . . . . . . . . . . 4.3(c) 
Mail Stop Assignment Recordation 

Services . . . . . . . . . . . . . . . . . . . . . 1.1(a)(4), 3.27 
Mail Stop CPA . . . . . . . . . . . . . . . . . . . . .1.53(d)(9) 
Mail Stop Document Services . . . . . . . . . . 1.1(a)(4) 
Mail Stop Ex parte Reexam. . . . . . . . . . . .1.1(c)(1) 
Mail Stop Inter partes Reexam . . . . . . . . .1.1(c)(2) 
Mail Stop Interference . . . . . . . . . . . . . . . . 41.10(b) 
Mail Stop M Correspondence . . . . . . . . . .1.1(d)(2) 
Mail Stop OED.. . . . . . . . . . . . . . . . . . . . . . . . . 4.6 
Mail Stop Patent Ext . . . . . . . . . . . . . . . . . . . 1.1(e) 
Mail Stop PCT . . . 1.1(b), 1.417, 1.434(a), 1.480(b) 
Maintenance fee payments . . . . . . . . . . . . . .1.1(d)(1) 
Patent correspondence. . . . . . . . . . . . . . . . . .1.1(a)(1) 
Privacy Officer. . . . . . . . . . . . . . 102.23(a), 102.24(a) 
Trademark correspondence . . . . . . . . . . . . . . . . 2.190 

Adjustment of patent term. (see Patent term 
adjustment due to examination delay.) 

Administrator, executor, or other legal representative 
may make 
application and receive patent. . . . . . . . 1.42, 1.43, 1.64 

Admission to practice. (See Attorneys and 
agents.) 

Affidavit (See also Oath in patent application): 
After appeal . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.33 
As evidence in a contested case . . . . . . . . . . . .41.154 
To disqualify commonly owned patent or 
published application as prior art . . . . . . . . . . 1.130 
Traversing rejections or objections. . . . . . . . . . . 1.132 

Agents. (See Attorneys and agents.) 

Allowance and issue of patent: 
Amendment after allowance. . . . . . . . . . . . . . . .1.312 
Application abandoned for nonpayment 
of issue fee . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.316 
Deferral of issuance . . . . . . . . . . . . . . . . . . . . . .1.314 
Delayed payment of issue fee. . . . . . . . . . . . . . .1.137 
Delivery of patent. . . . . . . . . . . . . . . . . . . . . . . .1.315 
Failure to pay issue fee. . . . . . . . . . . . 1.137(c), 1.316 
Issuance of patent. . . . . . . . . . . . . . . . . . . . . . . .1.314 
Notice of allowance . . . . . . . . . . . . . . . . . . . . . .1.311 
Patent to issue upon payment of issue fee1.311, 1.314 
Patent to lapse if issue fee is not paid in full . . . 1.317 
Reasons for.. . . . . . . . . . . . . . . . . . . . . . . . . . . .1.104 
Withdrawal from issue . . . . . . . . . . . . . . . . . . . .1.313 

Allowed claims, rejection of by Board of 
Patent Appeals and Interferences . . . . . . . . . . .41.50(b) 

Amendment: 
Adding or substituting claims. . . . . . . . . . . . . . .1.121 
After appeal . . . . . . . . . . . . . . . . . . . . . . 41.33, 41.63 
After decision on appeal, based on new 
rejection of Board of Patent Appeals 
and Interferences . . . . . . . . . . . . . . . . . .41.50(b)(1) 
After final action.. . . . . . . . . . . . . . . . . . . . . . . .1.116 
After final action (transitional procedures) . . . . 1.129 
After notice of allowance.. . . . . . . . . . . . . . . . .1.312 
Copying claim of another application 
for interference. . . . . . . . . . . . . . . . . . . . . . . .41.202 
Copying claim of issued patent . . . . . . . . . . . .41.202 
Deletions and insertions . . . . . . . . . . . . . . . . . . .1.121 
Drawings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.121 
Manner of making . . . . . . . . . . . . . . . . . . . . . . .1.121 
Not covered by original oath . . . . . . . . . . . . . . . .1.67 
Numbering of claims . . . . . . . . . . . . . . . . . . . . .1.126 
Of amendments. . . . . . . . . . . . . . . . . . . . . . . . . .1.121 
Of claims. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.121 
Of disclosure. . . . . . . . . . . . . . . . . . . . . . . . . . . .1.121 
Of drawing . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.121 
Of specification. . . . . . . . . . . . . . . . . . . . . . . . . .1.121 
Paper and writing . . . . . . . . . . . . . . . . . . . . . . . . .1.52 
Petition from refusal to admit.. . . . . . . . . . . . . .1.127 

 

Preliminary. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.115 
Proposed during interference. . . . . . . . . . . . . . 41.121 
Provisional application . . . . . . . . . . . . . . . . . .1.53(c) 
Reexamination proceedings. . . 1.121(j), 1.530, 1.941 
Reissue. . . . . . . . . . . . . . . . . . . . . . . . .1.121(i), 1.173 
Requisites of . . . . . . 1.33, 1.111, 1.116, 1.121, 1.125 
Right to amend. . . . . . . . . . . . . . . 1.111, 1.116, 1.127 
Signature to . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.33 
Substitute specification . . . . . . . . . . . . . . . . . . . 1.125 
Time for.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.134 
To applications in interference. . . . . . . . . . . . . 41.121 
To correct inaccuracies . . . . . . . . . . . . . . . . . . . 1.121 
To correspond to original drawing or specifica


tion. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.121 
To reissues.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.173 
To save from abandonment . . . . . . . . . . . . . . . . 1.135 

Amino acid sequences. (See Nucleotide and/or 
amino acid sequences.) 
Appeals: 
Civil Actions under 35 U.S.C. 145, 146, 306 . . 1.303, 

1.304
To the Board of Patent Appeals and 


Interferences . . . . . . . . . . . . . . . . . . . . . 41.30-41.54 
Affidavits after appeal . . . . . . . . . . . . . . . . . . 41.33 
Brief . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.37 
Decision/Action by Board . . . . . . . . . . . . . . . 41.50 

Return of jurisdiction to examiner . . . . . 1.197(a) 

Termination of proceedings . . . . . . . . . . 1.197(b) 
Examiner’sanswer. . . . . . . . . . . . . . . . . . . . . 41.39 
Fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.20 
Hearing of. . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.47 
Inter partes reexamination. . . . . . . . . . . . . . . 41.61 
New grounds of rejection . . . . 41.39(a)(2), 41.50(b) 
Notice of appeal . . . . . . . . . . . . . . . . . . . . . . . 41.31 
Public inspection or publication of decisions. . 1.14 
Rehearing .. . . . . . . . . . . . . . . . . 41.50(b)(2), 41.52 
Reopening after final Board decision. . . . . . . 1.198 
Reply brief. . . . . . . . . . . . . . . . . . . . . . . . . . . 41.41 
Sanctions . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.128 
What may be appealed. . . . . . . . . . . . . . . . . . 41.31 
Who may appeal. . . . . . . . . . . . . . . . . . . . . . . 41.31 

To Court of Appeals for the Federal Circuit: 
Fee provided by rules of court . . . . . . . . . . . . 1.301 
From Board of Patent Appeals and Interfer


ences. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.301 
Notice and reasons of appeal. . . . . . . . . . . . . 1.302 
Time for filing notice of appeal . . . . . . 1.302, 1.304 

Applicant for patent: 
Actual inventor or inventors to make 

application for patent . . . . . . . . . . . . . . . .1.41, 1.45 
Assignee . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.47(b) 
Change of (see Correction of inventorship) 

Correspondence address . . . . . . . . . . . . . . . . . . .1.33 
Daytime telephone number . . . . . . . . . . . . . . . . .1.33 
Deceased or insane inventor . . . . . . . . . . . . 1.42, 1.43 
Executor or administrator. . . . . . . . . . . . . . . . . . .1.42 
In a continued prosecution application . . .1.53(b)(1), 

1.53(d)(4) 
In an international application . . . . . . . .1.421-1.425 
Informed of application number . . . . . . . . . . . . .1.54 
Inventorship in a provisional application . 1.41(a)(2) 
Mailing address and residence of inventors 

may be provided in oath/declaration or in 

application data sheet . . . . . . . . . . . . . . . 1.63, 1.76 
May be represented by an attorney or agent . . . . 1.31 
Person making oath or declaration . . . . . . . . . . . 1.64 
Personal attendance unnecessary . . . . . . . . . . . . . . 1.2 
Required to conduct business with decorum 

and courtesy . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.3 
Required to report assistance received . . . . . . . . . . 1.4 
Who may apply for a patent . . . . . . . . . . . .1.41-1.48 

Application Data sheet. . . . . . . . . . . . . . . . . . . . . . . .1.76 

Application for patent (See also Abandoned 
applications, Claims, Drawing, Examination 
of applications, Provisional applications, 
Publication of application, Published 
application, Reissues, Specification): 
Access to. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.14 
Acknowledgment of filing . . . . . . . . . . . . . . . . . .1.54 
Alteration after execution. . . . . . . . . . . . . . . . . . .1.52 
Alteration before execution . . . . . . . . . . . . . . . . .1.52 
Application number and filing date . . . . . . . . . . . 1.54 
Arrangement. . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.77 
Compact disc submissions (see Electronic 
documents) 
Confidentiality of applications . . . . . . . . . . . . . . . 1.14 
Continuation or division, reexecution not 
required. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.63 
Continued prosecution application . . . . . . . . . 1.53(d) 
Filed by facsimile . . . . . . . . . . . . . . . . . . . . 1.6, 1.8 
Copies of, furnished to applicants . . . . . . . . . . . . 1.59 
Cross-references to related applications . . . . . . . . 1.78 
Deceased or insane inventor . . . . . . . . . . . . 1.42, 1.43 
Declaration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.68 
Duty of disclosure. . . . . . . . . . . . . . . . . . . . . . . . .1.56 
Examined only when complete. . . . . . . . . . . . . . .1.53 
Filed by other than inventor . . . . . . . 1.42, 1.43, 1.47, 
1.64, 1.421(b) 
Filing date. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.53 
Filing requirements. . . . . . . . . . . . . . . . . . . . . . . .1.53 
Foreign language oath or declaration . . . . . . . . . . 1.69 
Formulas and tables . . . . . . . . . . . . . . . . . . . . . . .1.58 
General requisites. . . . . . . . . . . . . . . . . . . . . . . . .1.51 
Identification required in letters concerning. . . . . .1.5 

 

Incomplete papers not filed for examination. . . . 1.53 
Interlineations, etc., to be indicated. . . . . . . . . . . 1.52 
Involving national security . . . . . . . . . . . . . . . . . . 5.1 
Language, paper, writing, margin . . . . . . . . . . . . 1.52 
Later filing of oath and filing fee. . . . . . . . . . . . . 1.53 
Missing pages when application filed . . . . . . . 1.53(e) 
Must be made by actual inventor, with excep


tions. . . . . . . . . . . . . . . . . . . . . . . . . 1.41, 1.46, 1.47 

Naming of inventors: 
Application data sheet . . . . . . . . . . . . . .1.76(b)(1) 
In a continued prosecution application .1.53(d)(4) 
In a provisional application . 1.41(a)(2), 1.51(c)(1), 

1.53(c)(1) 
In an international application . . . . . . . . . . . 1.421 
National stage . . . . . . . . . . . . . . . . . . . . . . 1.497 
Inconsistencies between application data 

sheet and oath or declaration . . . . . . . . . . . 1.76(d) 
Joint inventors . . . . . . . . . . . . . . . . . . . . . . . . . 1.45 
Oath/declaration. . . . . . . . . . . . . . . . . . . .1.63(a)(2) 

Non-English language. . . . . . . . . . . . . . . . . . . . . 1.52 
Nonpublication request . . . . . . . . . . . . . . . . . . . 1.213 
Numbering of claims . . . . . . . . . . . . . . . . . . . . 1.126 
Numbering of paragraphs . . . . . . . . . . . . 1.52, 1.125 
Original disclosure not expunged . . . . . . . 1.59(a)(2) 
Parts filed separately . . . . . . . . . . . . . . . . . . . . . . 1.54 
Parts of application desirably filed together . . . . 1.54 
Parts of complete application . . . . . . . . . . . . . . . 1.51 
Processing fees . . . . . . . . . . . . . . . . . . . . . . . . . . 1.17 
Provisional application . . . . . . . . . . . . 1.9, 1.51, 1.53 
Publication of . . . . . . . . . . . . . . . . . . . . .1.211, 1.219 
Published . . . . . . . . . . . . . . . . . . . . . . . . . .1.9, 1.215 
Relating to atomic energy. . . . . . . . . . . . . . . . . . 1.14 
Reservation for future application not permit


ted . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.79 
Retention fee. . . . . . . . . . . . . . . . . . . . . . . . . . 1.53(f) 
Secrecy order. . . . . . . . . . . . . . . . . . . . . . . . . . 5.1-5.5 
Status information. . . . . . . . . . . . . . . . . . . . . . . . 1.14 
Tables and formulas. . . . . . . . . . . . . . . . . . . . . . . 1.58 
To contain but one invention unless connected . 1.141 
To whom made . . . . . . . . . . . . . . . . . . . . . . . . . . 1.51 
Two or more by same party with conflicting 
claims. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.78 

Application number. . . . . . . . . . . . . . . . 1.5(a), 1.53, 1.54 

Arbitration award filing. . . . . . . . . . . . . . . . . . . . . . 1.335 

Arbitration in a contested case before the Board . 41.126 

Assignee: 
Correspondence held with assignee(s) of 
entire interest. . . . . . . . . . . . . . . . . . . . . . .3.71, 3.73 
Establishing ownership . . . . . . . . . . . . . . . . . .3.73(b) 
May conduct prosecution of application . . . 3.71, 3.73 
May make application on behalf of 
inventor(s). . . . . . . . . . . . . . . . . . . . . . . . . . . 1.47(b) 

May take action in Board proceeding. . . . . . . . . .41.9 
Must consent to application for reissue of 
patent . . . . . . . . . . . . . . . . . . . . . . . . . . 1.171, 1.172 
Partial assignee(s) . . . . . . . . . . . 1.46, 3.71, 3.73, 3.81 

Assignments and recording: 
Abstracts of title, fee for. . . . . . . . . . . . . . . 1.19(b)(5) 
Conditional assignments. . . . . . . . . . . . . . . . . . . .3.56 
Cover sheet required. . . . . . . . . . . . . . . . . . 3.28, 3.31 
Corrections . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.34 
Date of receipt is date of record . . . . . . . . . . . . . .3.51 
Definitions . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.332 
Effect of recording . . . . . . . . . . . . . . . . . . . . . . . .3.54 
Fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.21(h) 
Formal requirements. . . . . . . . . . . . . . . . . . .3.21-3.28 
If recorded before payment of issue fee, 

patent may issue to assignee. . . . . . . . . . . . . . . .3.81 
Joint research agreements. . . . . . . . . .3.11(c), 3.31(g) 
Mailing address for submitting 

documents. . . . . . . . . . . . . . . . . . . . . .1.1(a)(4), 3.27 
Must be recorded in Patent and 

Trademark Office to issue patent to assignee. . .3.81 
Must identify patent or application. . . . . . . . . . . . 3.21 
Orders for copies of . . . . . . . . . . . . . . . . . . . . . . .1.12 
Patent may issue to assignee. . . . . . . . . . . . . . . . .3.81 
Recording of assignments. . . . . . . . . . . . . . . . . . .3.11 
Records open to public inspection . . . . . . . . . . . . 1.12 
Requirements for recording . . . . . . . . . . . . .3.21-3.41 
What will be accepted for recording. . . . . . . . . . . 3.11 

Atomic energy applications reported to Department 
of Energy . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.14 

Attorneys and agents: 
Acting in representative capacity . . . . . . . . 1.33, 1.34 
Assignment will not operate as a revocation 
of power . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.36 
Certificate of good standing . . . . . . . . . . . . . . .1.21(a) 
Complaints . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .4.6 
Fee on admission . . . . . . . . . . . . . . . . . . . . . . .1.21(a) 
Office cannot aid in selection of. . . . . . . . . . . . . .1.31 
Personal interviews with examiners . . . . . . . . . . 1.133 
Power of attorney . . . . . . . . . . . . . . . . . . . . . . . . .1.32 
Power to inspect . . . . . . . . . . . . . . . . . . . . . . . . . .1.14 
Representative capacity . . . . . . . . . . . . . . . 1.33, 1.34 
Required to conduct business with 
decorum and courtesy. . . . . . . . . . . . . . . . . . . . . .1.3 
Revocation of power. . . . . . . . . . . . . . . . . . . . .1.36(a) 
Signature and certificate of attorney. . . . . . 1.4, 10.18 
Withdrawal of. . . . . . . . . . . . . . . . . . . . . 1.36(b), 41.5 

Authorization of agents. (See Attorneys 
and agents.) 

Award in arbitration . . . . . . . . . . . . . . . . . . . . . . . . .1.335 

 

B 

Balance in deposit account . . . . . . . . . . . . . . . . . . . . 1.25 
Basic filing fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.16 
Benefit of earlier application.. . . . . . . . . . . . . . . . . . 1.78 
Bill in equity. (See Civil action.) 
Biological material. (See Deposit of biological 

material.) 

Board of Patent Appeals and Interferences. 
(See Appeal to Board of Patent Appeals and 
Interferences.) 

Briefs: 
In petitions to Director. . . . . . . . . . . . . . . . . . . . 1.181 
On appealto Board . . . . . . . . . . . . . . . . . . . . . . 41.37 

Business to be conducted with decorum and 
courtesy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.3 
Business to be transacted in writing . . . . . . . . . . . . . . 1.2 

C 

Certificate of correction. . . . . . . . . . . . . . . . .1.322, 1.323 
Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.20 
Mistakes not corrected. . . . . . . . . . . . . . . . . . . . 1.325 

Certificate of mailing (First Class) or transmission . . 1.8 
Certification effect of presentation 
to Office. . . . . . . . . . . . . . . . . . . . . . . . . . 1.4(d), 10.18 
Certified copies of records, papers, etc.. . . . . . 1.4(f), 1.13 

Fee for certification . . . . . . . . . . . . . . . . . . . . .1.19(b) 
Chemical and mathematical formulae and tables . . . 1.58 
Citation of prior art in patented file. . . . . . . . . . . . . 1.501 
Citation of references. . . . . . . . . . . . . . . . . . . . . . . . 1.104 
Civil action . . . . . . . . . . . . . . . . . . . . . . . . . .1.303, 1.304 
Claims (See also Examination of applications): 

Amendment of. . . . . . . . . . . . . . . . . . . . . . . . . . 1.121 
Commence on separate sheet or 

electronic page . . . . . . . . . . . . . . . .1.52(b), 1.75(h) 
Conflicting, same applicant or owner . . . . . . . . . 1.78 
Date of invention of. . . . . . . . . . . . . . . . . . . . . . 1.110 
Dependent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.75 
Design patent. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.153 
May be in dependent form. . . . . . . . . . . . . . . . . . 1.75 
More than one permitted . . . . . . . . . . . . . . . . . . . 1.75 
Multiple dependent . . . . . . . . . . . . . . . . . . . . . . . 1.75 
Must conform to invention and specification . . . 1.75 
Notice of rejection of. . . . . . . . . . . . . . . . . . . . . 1.104 
Numbering of. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.126 
Part of complete application . . . . . . . . . . . . . . . . 1.51 
Plant patent... . . . . . . . . . . . . . . . . . . . . . . . . . . 1.164 
Rejection of . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.104 
Required.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.75 
Separate from other parts of application . . . . . 1.75(h) 
Twice rejected before appeal. . . . . . . . . . . . . . . 41.31 

Color drawing . . . . . . . . . . . . . . . . 1.6(d)(4), 1.84(a)(2) 

Commissioner of Patents and Trademarks (See 
Director of the USPTO.) 
Common ownership, statement by assignee may 
be required. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.78(c) 
Compact disc submissions. (See Electronic docu


ments.) 
Complaints against examiners, how presented. . . . . . . 1.3 
Complaints regarding invention promoters (See 

Invention promoters.) 
Composition of matter, specimens of ingredients 

may be required. . . . . . . . . . . . . . . . . . . . . . . . . . . .1.93 
Computer program listing appendix. . . . . . . . . . . . . .1.96 
Concurrent office proceedings . . . . . . . . . . . . . . . . .1.565 
Conflicting claims, same applicant or owner in 

two or more applications. . . . . . . . . . . . . . . . . . . . .1.78 
Contested cases before the Board of Patent 
Appeals and Interferences. . . . . . . . . . . .41.100-41.208 

Continued examination, request for . . . . . . . . . . . . . 1.114 
Fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.17 
Suspension of action after . . . . . . . . . . . . . . . . .1.103 

Continued prosecution application . . . . . . . . . . . . 1.53(d) 
Suspension of action in . . . . . . . . . . . . . . . . . . .1.103 
Continuing application for invention disclosed 

and claimed in prior application . . . . . . . . . . 1.53, 1.63 
Control number, display of. . . . . . . . . . . . . . . . . . . .1.419 
Copies of patents, published applications, records, 

etc.. . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.11, 1.12, 1.13 
Copies of records, fees . . . . . . . . . . . . . . . . .1.19(b), 1.59 
Copyright notice in specification . . . . . . . . . . . . . 1.71(d) 
Copyright notice on drawings . . . . . . . . . . . . . . . .1.84(s) 
Correction, certificate of. . . . . . . . . . . . . . . . 1.322, 1.323 
Correction of inventorship: 

Ina nonprovisional application . . . . . . . . . . . . . .1.48 
Before filing oath/declaration . . .1.41(a)(1), 1.76(c) 
By filing oath/declaration . . . . . . . . . . . 1.76(d)(3) 
When filing a continuation or divisional 

application . . . . . . . . . . . . . . . . . . . . . . . 1.63(d) 
When filing a continued prosecution application 
. . . . . . . . . . . . . . . . . . . . . . . . . .1.53(d)(4) 

In a provisional application . . . . . . . . . . . . . . . . .1.48 
By filing a cover sheet . . . . . . . . . . . . . 1.48(f)(2) 
Without filing a cover sheet . . . . . . . . . 1.41(a)(2) 

In a reexamination proceeding . . . . . . . . . . . . .1.530 
In an international application . . . . . . . . . . . . . 1.472 

When entering the national stage . . . . . . . . . . 1.497 
In an issued patent . . . . . . . . . . . . . . . . . . . . . .1.324 
In other than a reissue application . . . . . . . . . . . .1.48 
Inconsistencies between application data sheet 

and oath or declaration . . . . . . . . . . . . . . . . 1.76(d) 
Motion to correct inventorship in an interference 
. . . . . . . . . . . . . . . . . . . . . . . . . . . 41.121(a)(2) 
Supplemental application data sheet(s) . . . . .1.76(c) 

 

Correspondence: 
Address: 
Change of correspondence address . . . . . . . 1.33(a) 
Established by the office if more than one is 

specified . . . . . . . . . . . . . . . . . . . . . . . . . .1.33(a) 

Of the U.S. Patent and Trademark Office . . . . . 1.1 
Business with the Office to be transacted by. . . . . 1.2 
Discourteous communications not entered . . . . . . 1.3 
Double, with different parties in interest not 

allowed . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.33 
Duplicate copies disposed of. . . . . . . . . . . . . . . . . 1.4 
Facsimile transmission . . . . . . . . . . . . . . . . . . . 1.6(d) 
Held with attorney or agent. . . . . . . . . . . . . . . . . 1.33 
Identification of application or patent in letter 

relating to. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.5 
Involving national security . . . . . . . . . . . . . . . . . . 5.1 
May be held exclusively with assignee(s) of 

entire interest . . . . . . . . . . . . . . . . . . . . . . . . . . 3.71 
Nature of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.4 
Patent owners in reexamination. . . . . . . . . . . . 1.33(c) 
Receipt of letters and papers . . . . . . . . . . . . . . . . . 1.6 
Rules for conducting in general. . . . . . . . . . . . 1.1-1.8 
Separate letter for each subject or inquiry . . . . . . . 1.4 
Signature requirements . . . . . . . . . . . . . . . . . . . 1.4(d) 
When no attorney or agent. . . . . . . . . . . . . . . . . . 1.33 
With attorney or agent after power or authori


zation is filed. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.33 

Court of Appeals for the Federal Circuit, appeal 
to. (See Appeal to Court of Appeals for the Federal 
Circuit.) 

Credit card payment . . . . . . . . . . . . . . . . . . . . . . . . . 1.23 

Cross-reference to related applications . . . . . . 1.76-1.78 

Customer Number 
Defined . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.32(a)(4) 
Required to establish a Fee Address . . . . . . . 1.363(c) 

D 

Date of invention of subject matter of individual 
claims. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.110 

Day for taking any action or paying any fee falling 

on Saturday, Sunday, or Federal holiday . . . . . . . . . 1.7 
Death or insanity of inventor. . . . . . . . . . . . . . .1.42, 1.43 
In an international application . . . . . . . . .1.422, 1.423 

Decision by the Board of Patent Appeals and 

Interferences. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.50 
Return of jurisdiction to examiner. . . . . . . . . 1.197(a) 
Termination of proceedings . . . . . . . . . . . . . . 1.197(b) 

Declaration (See also Oath in patent application): 

Foreign language . . . . . . . . . . . . . . . . . . . . . . . . .1.69 
In lieu of oath . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.68 
In patent application.. . . . . . . . . . . . . . . . . . . . . .1.68 
Deferral of examination . . . . . . . . . . . . . . . . . . . . . .1.103 

Definitions: 
Assignment. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.1 
Customer Number. . . . . . . . .. . . . . . . . . . . 1.32(a)(4) 
Document . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3.1 
Federal holiday within the District of 

Columbia . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.9 
National and international applications . . . . . . . . . 1.9 
National security classified . . . . . . . . . . . . . . . . .1.9 
Nonprofit organization . . . . . . . . . . . . . . . . . . . . .1.27 
Person (for small entity purposes) . . . . . . . . . . . 1.27 
Power of Attorney . . . . . . . . . . . . . . . . . . . 1.32(a)(1) 
Principal. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.32(a)(2) 
Published application . . . . . . . . . . . . . . . . . . . . . . .1.9 
Recorded document . . . . . . . . . . . . . . . . . . . . . . . .3.1 
Revocation . . . . . . . . . . . . . . . . . . . . . . . . . 1.32(a)(3) 
Service of process. . . . . . . . . . . . . . . .15 CFR Part 15 
Small business concern. . . . . . . . . . . . . . . . . . . . .1.27 
Small entity.. . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.27 
Terms under Patent Cooperation Treaty . . . . . . . 1.401 
Testimony by employees . . . . . . . . . 15 CFR Part 15a 
Delivery of patent. . . . . . . . . . . . . . . . . . . . . . . . . . .1.315 
Deposit accounts. . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.25 
Fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.21(b) 

Deposit of biological material: 
Acceptable depository . . . . . . . . . . . . . . . . . . . .1.803 
Biological material. . . . . . . . . . . . . . . . . . . . . . .1.801 
Examination procedures. . . . . . . . . . . . . . . . . . .1.809 
Furnishing of samples. . . . . . . . . . . . . . . . . . . . .1.808 
Need or opportunity to make a deposit. . . . . . . . 1.802 
Replacement or supplemental deposit . . . . . . . . 1.805 
Term of deposit. . . . . . . . . . . . . . . . . . . . . . . . . .1.806 
Time of making original deposit. . . . . . . . . . . . . 1.804 
Viability of deposit. . . . . . . . . . . . . . . . . . . . . . .1.807 

Deposit of computer program listings . . . . . 1.52(e), 1.96 
Depositions (See also Testimony in contested 

cases before the Board): 
Certificate of officer to accompany . . . . . . .41.157(e) 
Original filed as exhibit . . . . . . . . . . . . . . . .41.157(e) 
Person before whom taken. . . . . . .. . . . . . .41.157(e) 
Transcripts of . . . . . . . . . . . . . . . . . 41.154(a), 41.157 

Description of invention. (See Specification.) 

Design Patent Applications: 
Arrangement of application elements. .. . . . . . .1.154 
Claim . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.153 
Drawing . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.152 
Expedited examination . . . . . . . . . . . . . . . . . . .1.155 
Filing fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.16(b) 
Issue fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.18(b) 

 

Oath. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.153 
Rules applicable. . . . . . . . . . . . . . . . . . . . . . . . . 1.151 
Title, description and claim . . . . . . . . . . . . . . . . 1.153 

Determination of request for ex parte 
reexamination.. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.515 

Director of the USPTO (See also Petition to the 
Director): 
Address of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.1 
Availability of decisions by . . . . . . . . . . . . . . . . 1.14 
Initiates ex parte reexamination. . . . . . . . . . . . . 1.520 

Disclaimer, statutory: 
Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.20(d) 
Requirements of. . . . . . . . . . . . . . . . . . . . . . . . . 1.321 
Terminal. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.321 

Disclosure, amendments to add new matter not 
permitted . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.121 

Disclosure document fee.. . . . . . . . . . . . . . . . . . . 1.21(c) 

Discovery in contested cases before the Board . . .41.150


41.158 
Division. (See Restriction of application.) 
Document supply fees. . . . . . . . . . . . . . . . . . . . . . . . 1.19 
Drawing: 

Amendment of. . . . . . . . . . . . . . . . . . . . . . . . . . 1.121 
Arrangement of views. . . . . . . . . . . . . . . . . . . 1.84(i) 
Arrows. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.84(r) 
Character of lines.. . . . . . . . . . . . . . . . . . . . . . 1.84(l) 
Color . . . . . . . . . . . 1.6(d)(4), 1.84(a)(2), 1.165(b) 
Content of drawing . . . . . . . . . . . . . . . . . . . . . . . 1.83 
Copyright notice . . . . . . . . . . . . . . . . . . . . . . .1.84(s) 
Correction . . . . . . . . . . . . . . . 1.84(w), 1.85(c), 1.121 
Cost of copies of . . . . . . . . . . . . . . . . . . . . . . . . . 1.19 
Design application. . . . . . . . . . . . . . . . . . . . . . . 1.152 
Figure for front page . . . . . . . . . . . . . . . .1.76, 1.84(j) 
Filed with application . . . . . . . . . . . . . . . . . . . . . 1.81 
Graphics. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.84(d) 
Hatching and shading. . . . . . . . . . . . . . . . . . . 1.84(m) 
Holes . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.84(x) 
Identification . . . . . . . . . . . . . . . . . . . . . . . . . .1.84(c) 
If of an improvement, must show connection 

with old structure. . . . . . . .. . . . . . . . . . . . . . . . 1.83 
Informal drawings. . . . . . . . . . . . . . . . . . . . . . . . 1.85 
Ink . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.84(a)(1) 
Lead lines. . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.84(q) 
Legends . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.84(o) 
Letters . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.84(p) 
Location of names . . . . . . . . . . . . . . . . . . . . . . 1.84(c) 
Mask work notice. . . . . . . . . . . . . . . . . . . . . . . 1.84(s) 
Must be described in and referred to specifica


tion. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.74 
Must show every feature of the invention . . . . . . 1.83 
No return or release . . . . . . . . . . . . . . . . . . . . .1.85(b) 
Numbering of sheets . . . . . . . . . . . . . . . . . . . . 1.84(t) 

Numbering of views.. . . . . . . . . . . . . . . . . . . 1.84(u) 
Numbers. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.84(p) 
Original should be retained by applicant . . . . .1.81(a) 
Paper. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.84(e) 
Part of application papers. . . . . . . . . . . . . . . . . . .1.52 
Photographs . . . . . . . . . . . . . . . . . . . . . . . . . . 1.84(b) 
Plant patent application. . . . . . . . . . . . . . . 1.81, 1.165 
Reference characters. . . . . . . . . . . . . . . . 1.74, 1.84(p) 
Reissue . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.173 
Release notpermitted.. . . . . . . . . . . . . . . . . . 1.85(b) 
Required by law when necessary for under


standing. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.81 
Scale. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.84(k) 
Security markings. . . . . . . . . . . . . . . . . . . . . . 1.84(v) 
Shading.. . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.84(m) 
Size of sheet and margins. . . . . . . . . . . . . .1.84(f),(g) 
Standards for drawings. . . . . . . . . . . . . . . . . . . . .1.84 
Symbols . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.84(n) 
Views . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.84(h) 
When necessary, part of complete application . . . 1.51 
Duty of disclosure. . . . . . . . . . . . . . . . . . . . . . 1.56, 1.555 
Patent term extension . . . . . . . . . . . . . . . . . . . . .1.765 

E 

Election of species . . . . . . . . . . . . . . . . . . . . . . . . . .1.146 

Electronic documents: 
Compact disc submissions: 
Amino acid sequences . . . . . . . 1.821, 1.823, 1.825 
Computer program listings . . . . . . . . . . . . . . .1.96 
Incorporation by reference in specification . . . 1.52 
Nuclide acid sequences . . . . . . 1.821, 1.823, 1.825 
Requirements . . . . . . . . . . . . . . . . . . . . . . . . . .1.52 
Submitted as part of permanent record 1.52, 1.58, 

1.96, 1.821, 1.823, 1.825 
Tables . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.58 
Employee testimony. (See Testimony by Office 

employees.) 

Establishing small entity status . . . . . . . . . . . . 1.27, 1.28 

Evidence in contested cases before the Board 
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.154 

Ex parte reexamination. (See Reexamination.) 

Examination of applications: 
Advancement of examination. . . . .. . . . . . . . . .1.102 
As to form. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.104 
Citation of references . . . . . . . . . . . . . . . . . . . . .1.104 
Completeness of examiner’s action . . . . . . . . . . 1.104 
Deferral of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.103 
Examiner’s action. . . . . . . . . . . . . . . . . . . . . . . .1.104 
International-type search. . . . . . . . . . . . . . . . . . .1.104 
Nature of examination . . . . . . . . . . . . . . . . . . . .1.104 
Reasons for allowance . . . . . . . . . . . . . . . . . . . .1.104 
Reconsideration after rejection if requested . . . . 1.111 

 

Reissue.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.176 
Rejection of claims . . . . . . . . . . . . . . . . . . . . . . 1.104 
Request for continued examination . . . . . . . . . . 1.114 
Requirements for information by examiner . . . 1.105 
Suspension of. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.103 

Examiners: 
Answers on appeal. . . . . . . . . . . . . . . . . . . . . . . 41.39 
Complaints against . . . . . . . . . . . . . . . . . . . . . . . . 1.3 
Interviews with . . . . . . . . . . . . . . . . . . . . . . . . . 1.133 

Executors. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.42 

Exhibits. (See Models and exhibits.) 

Export of technical data. . . . . . . . . . . . . . . . . . .5.19, 5.20 

Express abandonment. . . . . . . . . . . . . . . . . . . . . . . 1.138 

“Express Mail” . . . . . . . . . . . . . . . . . . . . . . . . . .1.6, 1.10 
Date of receipt of. . . . . . . . . . . . . . . . . . . . . . . . . . 1.6 
Petition in regard to. . . . . . . . . . . . . . . . . . . . . . . 1.10 

Expungement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.59 

Extension of patent term (See also Patent term 

adjustment): 
Due to examination delay under the URAA 
(35 U.S.C. 154) . . . . . . . . . . . . . . . . . . . . . . . . 1.701 
Due to regulatory review period (35 U.S.C. 

156): 
Applicant for . . . . . . . . . . . . . . . . . . . . . . . . . 1.730 
Application for.. . . . . . . . . . . . . . . . . . . . . . . 1.740 
Calculation of term: 

Animal drug product.. . . . . . . . . . . . . . . . . 1.778 
Food or color additive. . . . . . . . . . . . . . . . . 1.776 
Human drug product.. . . . . . . . . . . . . . . . . 1.775 
Medical device . . . . . . . . . . . . . . . . . . . . . . 1.777 
Veterinary biological product . . . . . . . . . . . 1.779 

Certificate of extension . . . . . . . . . . . . . . . . . 1.780 
Conditions for.. . . . . . . . . . . . . . . . . . . . . . . . 1.720 
Correction of informalities . . . . . . . . . . . . . . 1.740 
Determination of eligibility . . . . . . . . . . . . . . 1.750 
Duty of disclosure . . . . . . . . . . . . . . . . . . . . . 1.765 
Filing date of application. . . . . . . . . . . . . . . . 1.741 
Formal requirements . . . . . . . . . . . . . . . . . . 1.740 
Incomplete application . . . . . . . . . . . . . . . . . 1.741 
Interim extension under 35 U.S.C. 156(d)(5) 1.790 
Interim extension under 35 U.S.C. 156(e)(2). 1.760 
Multiple applications . . . . . . . . . . . . . . . . . . . 1.785 
Order granting interim extension . . . . . . . . . 1.780 
Patents subject to . . . . . . . . . . . . . . . . . . . . . . 1.710 
Signature requirements for application . . . . . 1.730 
Termination of interim extension granted 

under 35 U.S.C. 156(d)(5).. . . . . . . . . . . . . 1.791 
Withdrawal of application . . . . . . . . . . . . . . . 1.770 

Extension of time . . . . . . . . . . . . . . . . . . . . . . . . . . .1.136 
Fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.17 
Interference proceedings. . . . . . . . . . . . . . . . . . . .41.4 

F 

Facsimile transmission. . . . . . . . . . . . . . . . . . . 1.6(d), 1.8 

Federal holiday within the District of Columbia . . .1.9(h) 

Federal Register, publication of rules in. . . . . . . . . . 1.351 

Fees and payment of money: 
Credit card . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.23 
Deposit accounts. . . . . . . . . . . . . . . . . . . . . . . . . .1.25 
Document supply fees . . . . . . . . . . . . . . . . . . . . .1.19 
Extension of time . . . . . . . . . . . . . . . . . . . . . . . . .1.17 
Fee on appeal to the Court of Appeals for the 
Federal Circuit provided by rules of court . . . . 1.301 
Fees payable in advance. . . . . . . . . . . . . . . . . . . .1.22 
Foreign filing license petition. . . . . . . . . . . . . .1.17(g) 
For international-type search report . . . . . . . . .1.21(e) 
Itemization required . . . . . . . . . . . . . . . . . . . . . . 1.22 
Method of payment. . . . . . . . . . . . . . . . . . . . . . . .1.23 
Money by mail at risk of sender. . . . . . . . . . . . . .1.23 
Money paid by mistake. . . . . . . . . . . . . . . . . . . . .1.26 
Necessary for application to be complete. . . . . . .1.51 
Petition fees . . . . . . . . . . . . . . . . . .1.17, 1.181, 41.20 
Post allowance . . . . . . . . . . . . . . . . . . . . . . . . . 1.18 
Processing fees. . . . . . . . . . . . . . . . . . . . . . . . . . 1.17 
Reexamination request. . . . . . . . . . . . . . . . . . .1.20(c) 
Refunds. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.26 
Relating to international applications 1.25(b), 1.445, 
1.481, 1.482, 1.492 
Schedule of fees and charges . . . . . . . . . . . .1.16-1.21 

Files open tothe public . . . . . . . . . . . . . . . . . . . . . . .1.11 

Filing date of application . . . . . . . . . . . . . . . . . . . . . .1.53 

Filing, search, and examination fees . . . . . . . . . . . . . 1.16 

Filing in Post Office. . . . . . . . . . . . . . . . . . . . . . . . . .1.10 

Filing of interference settlement agreements . . . . . 41.205 

Final rejection: 
Appeal from . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.31 
Response to. . . . . . . . . . . . . . . . . . . . . . . .1.113, 1.116 
Whenand how given . . . . . . . . . . . . . . . . . . . . .1.113 

First Class Mail (includes Priority Mail and 

Express Mail) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.8 
Foreign application. . . . . . . . . . . . . . . . . . . . . . . . . . .1.55 
License to file. . . . . . . . . . . . . . . . . . . . . . . .5.11-5.25 

Foreign country: 
Taking oath in. . . . . . . . . . . . . . . . . . . . . . . . . . . .1.66 
Taking testimony in . . . . . . . . . . . . . . . . . . .41.156(b) 

Foreign mask work protection . . . . . . . . . . . . . . .Part 150 
Evaluation of request . . . . . . . . . . . . . . . . . . . . .150.4 
Definition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .150.1 
Duration of proclamation . . . . . . . . . . . . . . . . . .150.5 
Initiation of evaluation . . . . . . . . . . . . . . . . . . . .150.2 

 

Mailing address . . . . . . . . . . . . . . . . . . . . . . . . . 150.6 

Submission of requests . . . . . . . . . . . . . . . . . . . 150.3
Formulas and tables in patent applications.. . . . . . . . 1.58
Fraud practiced or attempted on Office. . . . . . . . . . . 1.56
Freedom of Information Act (FOIA) . . . . . . . . . Part 102


Appeals from initial determinations or 

untimely delays. . . . . . . . . . . . . . . . . . . . . . . 102.10 
Business information . . . . . . . . . . . . . . . . . . . . 102.9 
Correspondence address . . . . . . . . . . . . . 102.1, 102.4 
Expedited processing . . . . . . . . . . . . . . . . . . . . 102.6 
Fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102.11 
Public reference facilities . . . . . . . . . . . . . . . . . 102.2 
Records . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 102.3 
Responses to requests . . . . . . . . . . . . . . . . . . . . 102.7 
Responsibility for responding . . . . . . . . . . . . 102.5 
Time limits . . . . . . . . . . . . . . . . . . . . . . . . . . . 102.6 
Requirements for making requests . . . . . . . . . . 102.4 

G 

Gazette. (See Official Gazette.)
General authorization to charge deposit account1.25, 1.136
General information and correspondence . . . . . . . 1.1-1.8
Government acquisition of foreign patent rights. Part 501
Government employee invention . . . . . . . . . . . . Part 501
Government interest in patent, recording of . 3.11, 3.31, 


3.41, 3.58 
Governmentalregisters . . . . . . . . . . . . . . . . . . . . . . . 3.58 
Guardian of insane person may apply for patent. . . . 1.43 

H 

Hearings: 
Before the Board of Patents Appeals and Inter


ferences. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.47 
Fee for appeal hearing . . . . . . . . . . . . . . . . . . . . 41.20 
Holiday, time for action expiring on . . . . . . . . . . . 1.6, 1.7 

I


Identification of application, patent or registration . . . 1.5 
Inconsistencies between application data sheet 

and oath or declaration . . . . . . . . . . . . . . . . . . .1.76(d) 
Incorporation by reference. . . . . . . . . . . . . . . . . . . . . 1.57 
Information disclosure statement: 

At time of filing application. . . . . . . . . . . . . . . . . 1.51 
Content of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.98 
Not permitted in provisional applications . . . . . . 1.51 
Reexamination. . . . . . . . . . . . . . . . . . . . .1.555, 1.902 
Suspension of action to provide time for 

consideration of an IDS in a CPA . . . . . . . . 1.103(b) 
Third party submission of. . . . . . . . . . . . . . . . . . 1.99 
To comply with duty of disclosure . . . . . . . . . . . 1.97 

Information, Public . . . . . . . . . . . . . . . . . . . . . . . Part 102


Insane inventor, application by guardian of . . . . . . . . 1.43 

Inter partes reexamination. (See Reexamination.) 

Interferences:
Abandonment of the contest. . . . . . . . . . . . . . .41.127
Access to applications. . . . . . . . . . . . . . . . . . . .1.11(e)
Addition of patent or application.. . . . . . . . . . .41.203
Amendment during. . . . . . . . . . . . . . . . . . . . . .41.121
Appeal to the Court of Appeals for the Federal
Circuit.. . . . . . . . . . . . . . . . . . . . . . . . . 1.301, 1.302
Applicant requests . . . . . . . . . . . . . . . . . . . . . .41.202
Arbitration. . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.126
Burden of proof. . . . . . . . . . . . . . . . . . . . . . . . .41.207
Civil action . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.303
Common interests in the invention . . . . . . . . . . 41.206
Concession of priority. . . . . . . . . . . . . . . . . . . .41.127
Copying claims from patent . . . . . . . . 41.121, 41.202
Declaration of interference. . . . . . . . . . . . . . . .41.203
Definitions . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.201
Disclaimer to avoid interference. . . . . . . . . . . . 41.127
Discovery . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.150
Extension of time . . . . . . . . . . . . . . . . . . . . . . . . .41.4
In what cases declared . . . . . . . . . . . . . . . . . . .41.203
Junior party fails to overcome filing date of
senior party.. . . . . . . . . . . . . . . . . . . . . . . . . .41.204
Jurisdiction over involved files. . . . . . . . . . . . . 41.103
Manner of service of papers . . . . . . . . . . . . . . .41.106
Motions. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.121
Notice to file civil action . . . . . . . . . . . . . . . . . .1.303
Notice of declaration. . . . . . . . . . . . . . . . . . . . .41.203
Petitions . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.3
Presumption as to order of invention . . . . . . . . 41.207
Priority Statement. . . . . . . . . . . . . . . . . . . . . . .41.204
Prosecution by owner of entire interest . . . . . . . . 41.9
Records of, when open to public . . . . . . . . . . .1.11(e)
Requests by applicants . . . . . . . . . . . . . . . . . . .41.202
Review of decision by civil action . . . . . . . . . . . 1.303
Same party . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.206
Sanctions . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.128
Secrecy order cases. . . . . . . . . . . . . . . . . . . . . . 5.3(b)
Service of papers. . . . . . . . . . . . . . . . . . . . . . . .41.106
Statutory disclaimer by patentee during . . . . . . 41.127
Suggestion of claims for interference . . . . . . . . 41.202
Suspension of other proceedings . . . . . . . . . . . 41.103
Time period for completion . . . . . . . . . . . . . . .41.200
Translation of document in foreign language . . 41.154


International application. (See Patent Cooperation 
Treaty.) 

International Preliminary Examining Authority. . . . 1.416 

Interview summary. . . . . . . . . . . . . . . . . . . . . . . . . .1.133


Interviews with examiner. . . . . . . . . . . . . . . 1.133, 1.560 

Invention promoters:
Complaints regarding . . . . . . . . . . . . . . . . . . . .4.1-4.6


 

Publication of. . . . . . . . . . . . . . . . . . . . 4.1, 4.3, 4.5 
Reply to . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.4 
Submission of. . . . . . . . . . . . . . . . . . . . . . . . . . . 4.3 
Withdrawal of. . . . . . . . . . . . . . . . . . . . . . . . . . . 4.3 

Definition. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.2 
Reply to complaint. . . . . . . . . . . . . . . . . . . . . . . . . 4.4 
Inventor (See also Applicant for patent, Application 
for patent): 
Death or insanity of inventor. . . . . . . . . . . .1.42, 1.43 

In an international application . . . . . . . 1.422, 1.423 
Refuses to sign application . . . . . . . . . . . . . . . . . 1.47 
To make application. . . . . . . . . . . . . . . . . . .1.41, 1.45 
Unavailable . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.47 

Inventor’s certificate priority benefit. . . . . . . . . . . . . 1.55 
Inventorship and date of invention of the subject 

matter of individual claims . . . . . . . . . . . . . . . . . 1.110 
Issue fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.18 
Issue of patent. (See Allowance and issue of 

patent.) 

J 

Joinder of inventions in one application . . . . . . . . . 1.141 
Joint inventors. . . . . . . . . . . . . . . . . . . . 1.45, 1.47, 1.324 
Joint patent to inventor and assignee. . . . . . . . . 1.46, 3.81 
Jurisdiction: 

After decision by Board of Patent Appeals and 

Interferences . . . . . . . . . . . . . . . . . . . . .1.197, 1.198 
After notice of allowance . . . . . . . . . . . . . . . . . 1.312 
Over involved files . . . . . . . . . . . . . . . . . . . . . 41.103 

L 

Lapsed patents. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.317 
Legal representative of deceased or incapacitated 

inventor . . . . . . . . . . . . . . . . . . . . . . . . .1.42-1.43, 1.64 
Legibility of papers. . . . . . . . . . . . . . . . . . . . . . . . . . 1.52 
Letters to the Office. (See Correspondence.) 
Library service fee. . . . . . . . . . . . . . . . . . . . . . . . . 1.19(c) 
License and assignment of government interest in 

patent. . . . . . . . . . . . . . . . . . . . . . . . . . 3.11, 3.31, 3.41 
License for foreign filing. . . . . . . . . . . . . . . . . . 5.11-5.15 
List of U.S. patents classified in a subclass, cost of1.19(d) 
Local delivery box rental. . . . . . . . . . . . . . . . . . . . 1.21(d) 
Lost files . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.251 

M 

Mail Stops 
Mail Stop 4 . . . . . . . . . . . . . . . . . . . . . . . . . . . . 150.6 
Mail Stop 8 . . . . . . . . . . . . . . . . . . . . . . . . . .1.1(a)(3) 
Mail Stop 24 . . . . . . . . . . . . . . . . . . . . . . . . . . . 4.3(c) 
Mail Stop Assignment Recordation 

Services. . . . . . . . . . . . . . . . . . . . . . . 1.1(a)(4), 3.27 

Mail Stop Document Services . . . . . . . . . . . 1.1(a)(4) 
Mail Stop Ex parte Reexam . . . . . . . . . . . . . 1.1(c)(1) 
Mail Stop Inter partes Reexam . . . . . . . . . . 1.1(c)(2) 
Mail Stop Interference . . . . . . . . . . . . . . . . . .41.10(b) 
Mail Stop L&R . . . . . . . . . . . . . . . . . . . . . . . . . . .5.1 
Mail Stop M Correspondence . . . . . . . . . . . 1.1(d)(2) 
Mail Stop OED . . . . . . . . . . . . . . . . . . . . . . . . . . .4.6 
Mail Stop Patent Ext . . . . . . . . . . . . . . . . . . . . .1.1(e) 
Mail Stop PCT . . . . 1.1(b), 1.417, 1.434(a), 1.480(b) 
Maintenance fees . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.20 
Acceptance of delayed payment of. . . . . . . . . . . 1.378 
Address for payments . . . . . . . . . . . . . . . . . 1.1(d)(1) 
Address for correspondence (at PTO). . . . . . 1.1(d)(2) 
Address for correspondence (applicant’s) . . . . . 1.363 
Review of decision refusing to accept . . . . . . . . 1.377 
Submission of. . . . . . . . . . . . . . . . . . . . . . . . . . .1.366 
Time for payment of. . . . . . . . . . . . . . . . . . . . . .1.362 

Mask work notice in specification . . . . . . . . . . . . .1.71(d) 
Mask work notice on drawing . . . . . . . . . . . . . . . .1.84(s) 
Mask work protection, foreign. . . . . . . . . . . . . . .Part 150 
Microorganisms. (See Deposit of biological 

material.) 
Minimum balance in deposit accounts . . . . . . . . . . . . 1.25 
Missing pages when application filed . . . . . . . . . .1.53(e) 
Mistake in patent, certificate thereof issued. 1.322, 1.323 
Models and exhibits: 

Copies of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.95 
Disposal without notice unless return 
arrangements made. . . . . . . . . . . . . . . . . . . . . . .1.94 
If on examination model found necessary 

request therefor will be made. . . . . . . . . . . . . . .1.91 
In contested cases. . . . . . . . . . . . . . . . . . . . . . .41.154 
May be required . . . . . . . . . . . . . . . . . . . . . . . . . .1.91 
Model not generally admitted in application or 

patent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.91 
Not to be taken from the Office except in cus


tody of sworn employee. . . . . . . . . . . . . . . . . . .1.95 
Return of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.94 
Working model may be required . . . . . . . . . . . . .1.91 

Money. (See Fees and payment of money.) 
Motions in interferences. . . .. . . . . . . . . . . . . . . . .41.121 
To take testimony in foreign country . . . . . .41.156(b) 

N 

Name of Applicant or Inventor (see Applicant for 

patent, Application for patent, Inventor) 
New matter inadmissible in application . . . . . . . . . . 1.121 
New matter inadmissible in reissue . . . . . . . . . . . . . 1.173 
Non-English language specification fee. . . . . . . . . 1.17(i) 
Nonprofit organization: 

Definition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.27 
Small entity status. . . . . . . . . . . . . . . . . . . . . . . . .1.27 

 

Notice: 
Of allowance of application. . . . . . . . . . . . . . . . 1.311 
Of appeal to the Court of Appeals for the Fed


eral Circuit.. . . . . . . . . . . . . . . . . . . . . .1.301, 1.302 
Of arbitration award. . . . . . . . . . . . . . . . . . . . . . 1.335 
Of defective ex parte reexamination request . 1.510(c) 
Of declaration of interference . . . . . . . . . . . . . 41.203 
Of oral hearings before the Board of Patent 

Appeals and Interferences. . . . . . . . . . . . . . . . 41.47 
Of rejection of an application . . . . . . . . . . . . . . 1.104 
Of taking testimony. . . . . . . . . . . . . . . . . . . 41.157(c) 

Nucleotide and/or amino acid sequences: 
Amendments to . . . . . . . . . . . . . . . . . . . . . . . . . 1.825 
Disclosure in patent applications . . . . . . . . . . . . 1.821 
Form and format for computer readable form . . 1.824 
Format for sequence data. . . . . . . . . . . . . . . . . . 1.822 
Replacement of . . . . . . . . . . . . . . . . . . . . . . . . . 1.825 
Requirements. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.823 
Submission on compact disc . . . . . 1.52, 1.821, 1.823 
Symbols.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.822 

O 

Oath in patent application. (See also Declaration): 
Apostles. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.66 
Before whom taken in foreign countries . . . . . . . 1.66 
Before whom taken in United States . . . . . . . . . . 1.66 
By administrator or executor . . . . . . . 1.42, 1.63, 1.64 
By guardian of insane person. . . . . . . 1.43, 1.63, 1.64 
Certificate of Officer administering. . . . . . . . . . . 1.66 
Continuation-in-part. . . . . . . . . . . . . . . . . . . . . 1.63(e) 
Declaration. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.68 
Foreign language . . . . . . . . . . . . . . . . . . . . . . . . . 1.69 
International application . . . . . . . . . . . . . . . . . . 1.497 
Inventor’s Certificate.. . . . . . . . . . . . . . . . . . . . . 1.63 
Made by inventor. . . . . . . . . . . . . . . . . . . . .1.41, 1.63 
Made by someone other than inventor . . . . . . 1.64(b) 
Officers authorized to administer oaths . . . . . . . . 1.66 
Part of complete application . . . . . . . . . . . . . . . . 1.51 
Person making . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.64 
Plant patent application . . . . . . . . . . . . . . . . . . . 1.162 
Requirements of. . . . . . . . . . . . . . . . . . . . . . . . . . 1.63 
Ribbonedto other papers. . . . . . . . . . . . . . . . . . . 1.66 
Sealed. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.66 
Signature to . . . . . . . . . . . . . . . . . . . . 1.63, 1.64, 1.67 
Supplemental . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.67 
To acknowledge duty of disclosure . . . . . . . . . . . 1.63 
When taken abroad to seal all papers. . . . . . . . . . 1.66 

Oath or declaration in reissue application . . . . . . . . 1.175 

Oath or declaration 
Plant patent application. . . . . . . . . . . . . . . . . . . .1.162 
When international application enters national 

stage . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.497 
Object of the invention. . . . . . . . . . . . . . . . . . . . . . . .1.73 
Office action time for reply . . . . . . . . . . . . . . . . . . .1.134 
Office fees. (See Fees and payment of money.) 
Official action, based exclusively upon the written 

record . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.2 
Official business, should be transacted in writing . . . . 1.2 
Official Gazette: 

Amendments to rules published in . . . . . . . . . . . 1.351 
Announces request for reexamination . 1.11(c), 1.904 
Notice of filing application to nonsigning 

inventor. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.47 
Notice of issuance of ex parte reexamination 
certificate . . . . . . . . . . . . . . . . . . . . . . . . . . .1.570(f) 
Notice of issuance of inter partes reexamination 
certificate. . . . . . . . . . . . . . . . . . . . . . . . . .1.997 
Oral statements. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.2 

P 

Payment of fees, Method . . . . . . . . . . . . . . . . . . . . . .1.23 
Paper, definition of. . . . . . . . . . . . . . . . . . . . . . . . . . . .1.9 
Papers (requirements to become part of Office 

permanent records) . . . . . . . . . . . . . . . . . . . . . . . . .1.52 
Papers not received on Saturday, Sunday, or holidays. 
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.6 
Patent application. (See Application for patent and 
Provisional patent applications.) 
Patent application publication. (See Published 
application.) 
Patent attorneys and agents. (See Attorneys and 
agents.) 

Patent Cooperation Treaty: 
Access to international application files . . . 1.14(g) 
Amendments and corrections during interna


tional processing. . . . . . . . . . . . . . . . . . . . . . . .1.471 
Amendments during international preliminary 

examination . . . . . . . . . . . . . . . . . . . . . . . . . . .1.485 
Applicant for international application. . . . . . . .1.421 
Changes in person, name or address, where 

filed. . . . . . . . . . . . . . . . . . . . . . . . . . 1.421(f), 1.472 
Conduct of international preliminary 

examination . . . . . . . . . . . . . . . . . . . . . . . . . . .1.484 
Copies of international application files . . . . 1.14(g) 
Definition of terms . . . . . . . . . . . . . . . . . . . . . . .1.401 
Delays in meeting time limits. . . . . . . . . . . . . . .1.468 
Demand for international preliminary 

examination . . . . . . . . . . . . . . . . . . . . . . . . . . .1.480 
Designation of States . . . . . . . . . . . . . . . . . . . . .1.432 
Entry into national stage. . . . . . . . . . . . . 1.491, 1.495 

 

Examination at national stage . . . . . . . . . . . . . . 1.496 
Fees: 
Authorization to charge fees under 

37 CFR 1.16 . . . . . . . . . . . . . . . . . . . . . . .1.25(b) 
Due on filing of international application. . 1.431(c) 
Failure to pay results in withdrawal of 

application . . . . . . . . . . . . . . . . . . .1.431(d), 1.432 
Filing, processing and search fees . . . . . . . . . 1.445 
International Filing Fee . . . . . . . 1.431(c), 1.445(b) 
International preliminary 

examination . . . . . . . . . . . . . . . . . . . .1.481, 1.482 
National stage.. . . . . . . . . . . . . . . . . .1.25(b), 1.492 
Refunds . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.446 

Filing by other than inventor. . . . . . . . . . . . . 1.421(b) 

International application requirements . . . . . . . 1.431 
Abstract . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.438 
Claims . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.436 
Description. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.435 
Drawings . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.437 
Physical requirements . . . . . . . . . . . . . . . . . ..1.433 
Request. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.434 

International Bureau . . . . . . . . . . . . . . . . . . . . . 1.415 
International Preliminary Examining 

Authority. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.416 
Inventor deceased . . . . . . . . . . . . . . . . . . . . . . . 1.422 
Inventor insane or legally incapacitated . . . . . . 1.423 
Inventors, joint. . . . . . . . . . . . . . . . . . .1.421(b), 1.497 
National stage in the United States: 

Commencement. . . . . . . . . . . . . . . . . . . . . . . 1.491 
Entry.. . . . . . . . . . . . . . . . . . . . . . . . . .1.491, 1.495 
Examination. . . . . . . . . . . . . . . . . . . . . . . . . . 1.496 
Fees . . . . . . . . . . . . . . . . . . . . . . . . . 1.25(b); 1.492 

Oath or declaration at national stage . . . . . . . . . 1.497 
Priority, claim for. . . . . . . . . . . . . . . . . . . .1.55, 1.451 
Record copy to International Bureau, 

transmittal procedures. . . . . . . . . . . . . . . . . . . 1.461 
Representation by attorney or agent . . . . . . . . . 1.455 
Time limits for processing applications. . 1.465, 1.468 
United States as: 

Designated or Elected Office. . . . . . . . . . . . . 1.414 
International Searching Authority . . . . . . . . . 1.413 
Receiving Office . . . . . . . . . . . . . . . . . . . . . . 1.412 

Unity of invention: 
Before International Searching 
Authority . . . . . . . . . . . . . . . . . . . . . .1.475, 1.476 
Before International Preliminary Examining 

Authority. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.488 
National stage.. . . . . . . . . . . . . . . . . . .1.475, 1.499 
Protest to lack of. . . . . . . . . . . . . . . . . .1.477, 1.489 

Patent term adjustment due to examination 
delay . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.702-1.705 
Application for . . . . . . . . . . . . . . . . . . . . . . . . .1.705 
Determination . . . . . . . . . . . . . . . . . . . . . . . . . .1.705 
Grounds for . . . . . . . . . . . . . . . . . . . . . . . . . . .1.702 
Period of adjustment . . . . . . . . . . . . . . . . . . . . .1.703 
Reduction of period of adjustment . . . . . . . . . . 1.704 

Patent term extension due to examination delay . . 1.701 

Patent term extension due to regulatory review 
period. (See Extension of patent term due to 
regulatory review period (35 U.S.C. 156).) 

Patents (See also Allowance and issue of patent): 
Available for license or sale, publication of 
notice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.21(i) 
Certified copies of . . . . . . . . . . . . . . . . . . . . . . . .1.13 
Correction of errors in . . . 1.171, 1.322, 1.323, 1.324 
Delivery of . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.315 
Disclaimer. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.321 
Identification required in letters concerning. . . . . . 1.5 
Lapsed, for nonpayment of issue fee . . . . . . . . . 1.317 
Obtainable by civil action. . . . . . . . . . . . . . . . . .1.303 
Price of copies . . . . . . . . . . . . . . . . . . . . . . . . . . .1.19 
Records of, open to public. . . . . . . . . . . . . 1.11, 1.12 
Reissuing of, when defective . . . . . . . . . .1.171-1.178 

Payment of fees . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.23 

Personal attendance unnecessary . . . . . . . . . . . . . . . . .1.2 

Petition for reissue . . . . . . . . . . . . . . . . . . . . 1.171, 1.172 

Petition to the Director: 
Fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.17 
For delayed payment of issue fee. . . . . . . . . . . .1.137 
For expungementof papers . . . . . . . . . . . . . . . . .1.59 
For extension of time . . . . . . . . . . . . . . . . . . . . .1.136 
For license for foreign filing. . . . . . . . . . . . . . . . .5.12 
For the revival of an abandoned application . . . 1.137 
From formal objections or requirements 1.113, 1.181 
From requirement for restriction . . . . . . 1.129, 1.144 
General requirements . . . . . . . . . . . . . . . . . . . . .1.181 
In interferences. . . . . . . . . . . . . . . . . . . . . . . . . . .41.3 
In reexamination. . . . . . . . . . . . . . . . . . . . . . . . .1.181 
If examiner refused the ex parte request. . .1.515(c) 
On refusal of examiner to admit amendment . . . 1.127 
Questions not specifically provided for . . . . . . . 1.182 
Suspension of rules. . . . . . . . . . . . . . . . . . . . . . .1.183 
Petition to accept an unintentionally 
delayed claim for domestic 
priority . . . . . . . . . .. . .. . 1.78(a)(3), 1.78(a)(6) 
Petition to accept an unintentionally delayed 
claim for foreign priority . . . . . . . . . . . . .1.55(c) 
To exercise supervisory authority. . . . . . . . . . . .1.181 
To make special . . . . . . . . . . . . . . . . . . . . . . . . .1.102 
Untimely unless filed within two months . . . . . 1.181 

 

Photographs.. . . . . . . . . . . . . . . . . . . . . . . 1.84(b), 1.152 

Plant patent applications: 
Applicant. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.162 
Claim . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.164 
Declaration. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.162 
Description. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.162 
Drawings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.165 
Examination.. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.167 
Fee for copies. . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.19 
Filing fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.16(c) 
Issue fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.18(c) 
Oath. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.162 
Rules applicable. . . . . . . . . . . . . . . . . . . . . . . . . 1.161 
Specification and arrangement of application 

elements . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.163 

Specimens . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.166 
Post issuance and reexamination fees . . . . . . . . . . . . 1.20 
Post Office receipt as filing date . . . . . . . . . . . . . . . . 1.10 
Postal emergency or interruption. . . . . . . . . . . 1.10(g)-(i) 
Power of attorney. (See Attorneys or agents.) 
Power to inspect . . . . . . . . . . . . . . . . . . . . . . . . .1.14(c) 
Preliminary amendments . . . . . . . . . . . . . . . . . . . . 1.115 
Preliminary Examining Authority, International. . . 1.416 
Preserved in confidence, applications . . . . . . . . 1.12, 1.14 

Exceptions (status, access or copies available) . . 1.14 
Prior art citation in patented files . . . . . . . . . . . . . . 1.501 
Prior art statement: 

Content of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.98 
To comply with duty of disclosure.. . . . . . . . . . . 1.97 
Prior invention, affidavit or declaration of to 
overcome rejection. . . . . . . . . . . . . . . . . . .1.130, 1.131 
Priority, right of, under treaty or law: 
Domestic benefit claim: 
Cross-reference to related 
application(s) . . . . . . . . . . . . . . . . . . . . 1.76-1.78 
Filing fee must be paid in provisional application 
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.78 
Indication of whether international application 
was published in English . . . . . . .1.78(a)(2) 
May be in first sentence of application or on 

application data sheet . . . . . . . . . . . . . . . . . . 1.78 
Petition to accept, unintentionally delayed . . . 1.78 
Translation of non-English language 

provisional application required . . . . . . . . . . 1.78 
Waived if not timely . . . . . . . . . . . . . . . . . . . . 1.78 

Foreign priority claim: 
Filed after issue fee has been paid . . . . . . . . . 1.55 
May be on application data sheet or in oath/ 

declaration . . . . . . . . . . . . . . . . . . . . . . . .1.63(c) 
Petition to accept, unintentionally delayed . . 1.55 
Priority document . . . . . . . . . . . . . . . . . . . . . 1.55 
Time for claiming. . . . . . . . . . . . . . . . . . . . . . . 1.55 

Privacy Act . . . . . . . . . . . . . . . . . . . . . . . . . . . . .Part 102 
Denial of access to records . . . . . . . . . . . . . . 102.25 
Definitions . . . . . . . . . . . . . . . . . . . . . . . . . . .102.22 
Disclosure of records . . . . . . . . . . . . 102.25, 102.30 
Exemptions . . . . . . . . . . . . . . . . . . . . 102.33, 102.34 
Fees. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .102.31 
Grant of access to records . . . . . . . . . . . . . . . .102.25 
Inquiries . . . . . . . . . . . . . . . . . . . . . . . . . . . . .102.23 
Medical records . . . . . . . . . . . . . . . . . . . . . . .102.26 
Penalties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .102.32 
Requests for records . . . . . . . . . . . . . . . . . . . .102.24 
Requests for correction or amendment . . . . . . 102.27 
Appeal of initial adverse determination . . . 102.29 
Review of requests . . . . . . . . . . . . . . . . . . . 102.28 
Processing and retention fee. . . . . . . . . . . 1.21(l), 1.53(f) 

Proclamation as to protection of foreign mask 
works. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .Part 150 

Protests to grants of patent . . . . . . . . . . . . . . . . . . . .1.291 

Provisional applications: 
Claiming the benefit of. . . . . . . . . . . . . . . . . . . . .1.78 
Converting a nonprovisional to a provisional. .1.53(c) 
Converting a provisional to a 
nonprovisional . . . . . . . . . . . . . . . . . . . . . . .1.53(c) 
Cover sheet required by § 1.51(c)(1) may be a 
§ 1.76 application data sheet . . . . . . . . . 1.53(c)(1) 
Filing date. . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.53(c) 
Filing fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.16(d) 
General requisites. . . . . . . . . . . . . . . . . . . . . . .1.51(c) 
Later filing of fee and cover sheet . . . . . . . . . 1.53(g) 
Names of inventor(s) . .. . . . . . . . . . . . . .1.41(a)(2) 
Application data sheet . . . . . . . . . .1.53(c)(1), 1.76 
Correction of . . . . . . . . . . . . . . . . . . . . . . . . . .1.48 
Cover sheet . . . . . . . . . . . . . 1.51(c)(1), 1.53(c)(1) 
Joint inventors . . . . . . . . . . . . . . . . . . . . . . . . .1.45 
No right of priority . . . . . . . . . . . . . . . . . . . . . .1.53(c) 
No examination. . . . . . . . . . . . . . . . . . . . . . . . .1.53(i) 
Papers concerning, should identify provisional 
application as such, by application number . . . 1.5(f) 
Parts of complete provisional application. . . . .1.51(c) 
Processing fees . . . . . . . . . . . . . . . . . . . . . . . . . . .1.17 
Revival of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.137 
Whenabandoned . . . . . . . . . . . . . . . . . . . . . . .1.53(i) 

Provisional rights 
Submission of international publication or 
English translation thereof pursuant to 35 

U.S.C. 154(d)(4) . . . . . . . . . . . . . . . . . . . . . . .1.417 
Public Information . . . . . . . . . . . . . . . . . . . . . . . .Part 102 
Public use proceedings. . . . . . . . . . . . . . . . . . . . . . .1.292 

Fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.17(j) 

Publication of application . . . . . . . . . . . . . . . . . . .1.211 
Early publication . . . . . . . . . . . . . . . . . . . . . . .1.219 
Express abandonment to avoid publication . . . 1.138 

 

Fee.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.18 
Nonpublication request . . . . . . . . . . . . . . . . . . 1.213 
Publicationof redacted copy . . . . . . . . . . . . . 1.217 
Republication . . . . . . . . . . . . . . . . . . . . . . . . . . 1.221 
Voluntary publication . . . . . . . . . . . . . . . . . . . . 1.221 

Published application 
Access to . . . . . . . . . . . . . . . . . . . . . . . . . .1.11, 1.14 
Certified copies of . . . . . . . . . . . . . . . . . . . . . . 1.13 
Contents . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.215 
Definition . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.9 
Records of, open to public . . . . . . . . . . . .1.11, 1.12 
Republication of . . . . . . . . . . . . . . . . . . . . . . . 1.221 
Third party submission in . . . . . . . . . . . . . . . . . 1.99 

R 

Reasons for allowance. . . . . . . . . . . . . . . . . . . . . . . 1.104 

Reconsideration of Office action. . . . . . . . . . . . . . . 1.112 

Reconstruction of lost files . . . . . . . . . . . . . . . . . . . 1.251 

Recording of assignments. (See Assignments and 
recording.) 

Records of the Patent and Trademark Office . . 1.11-1.15 

Reexamination: 
Announcement in O.G. . . . . . . . . . . . . . . . . . .1.11(c) 
Correction of inventorship . . . . . . . . . . . . . . . . 1.530 
Correspondence address . . . . . . . . . . . . . . . . .1.33(c) 
Ex parte proceedings: 
Amendments, manner of making . . . 1.121(j), 1.530 
Appeal to Board. . . . . . . . . . . . . . . . . . . . . . . 41.31 
Appeal to C.A.F.C. . . . . . . . . . . . . . . . . . . . . 1.301 
Civil action under 35 U.S.C. 145 . . . . . . . . . . 1.303 
Concurrent with interference, reissue, other 
reexamination, litigation, or office 
proceeding(s). . . . . . . . . . . . . . . . . . . . . . . . 1.565 
Conduct of.. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.550 
Duty of disclosure in . . . . . . . . . . . . . . . . . . . 1.555 
Examiner’s determination to grant or 
refuse request for . . . . . . . . . . . . . . . . . . . . . 1.515 
Extensions of time in . . . . . . . . . . . . . . . . . 1.550(c) 
Initiated by the Director. . . . . . . . . . . . . . . . . 1.520 
Interviews in. . . . . . . . . . . . . . . . . . . . . . . . . . 1.560 
Issuance of certificate at conclusion of . . . . . 1.570 
Order for reexamination by examiner . . . . . . 1.525 
Patent owner’s statement . . . . . . . . . . . 1.530, 1.540 
Processing of prior art citations during . . . . . 1.502 
Reply to patent owner’s statement to third 
party requester . . . . . . . . . . . . . . . . . .1.535, 1.540 
Request for. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.510 
Scope of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.552 
Service of papers . . . . . . . . . . . . . . . . . . . . . . 1.248 
Examiner’saction.. . . . . . . . . . . . . . . . . . . . . . . 1.104 
Fee.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.20(c) 
Fees may be charged to deposit account . . . . . . . 1.25 

Identification in letter. . . . . . . . . . . . . . . . . . . . .1.5(d) 
Inter partes proceedings. . . . . . . . . . . . . .1.902-1.997 
Amendments, manner of making . . 1.121(j), 1.530, 

1.941 
Appeal to Board . . . . . . . . . . . . . . . . . . . . . . .41.61 
Appeal to C.A.F.C. . . . . . . . . . . . . . . . . . . . . .1.983 
Civil action under 35 U.S.C. 145 not 

available . . . . . . . . . . . . . . . . . . . . . . . . . .1.303(d) 

Concurrent with interference, reissue, other 
reexamination, litigation, or office 
proceeding(s) . . . . . . . . . . . . . . . . . . 1.565, 1.985 

Conduct of. . . . . . . . . . . . . . . . . . . . . . . . . . . .1.937 
Duty of disclosure in. . . . . . . . . . . . . . 1.555, 1.923 
Examiner’s determination to grant or 

refuse request for . . . . . . . . . . . . . . . .1.923-1.927 
Extensions of time in. . . . . . . . . . . . . . . . . . . .1.956 
Filing date of request for. . . . . . . . . . . . . . . . .1.919 
Issuance of certificate at conclusion of . . . . . . 1.997 
Merged with concurrent reexamination 

proceedings. . . . . . . . . . . . . . . . . . . . . . . . . .1.989 
Merged with reissue application . . . . . . . . . . . 1.991 
Notice of, in the Official Gazette . . . . . . . . . .1.904 
Persons eligible to file request for. . . . . . . . . . 1.903 
Processing of prior art citations during . . . . . . 1.902 
Scope of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.906 
Service of papers. . . . . . . . . . . . . . . . . 1.248, 1.903 
Submission of papers by the public . . . . . . . . 1.905 
Subsequent requests for.. . . . . . . . . . . . . . . . .1.907 
Suspension due to concurrent interference . . . 1.993 
Suspension due to litigation . . . . . . . . . . . . . .1.987 
Information Disclosure Statements. . . . . . 1.98, 1.555 
Opento public . . . . . . . . . . . . . . . . . . . . . . . . .1.11(d) 
Reconsideration before final action . . . . . . . . . . 1.112 
Refund of fee . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.26 
Reply to action . . . . . . . . . . . . . . . . . . . . . . . . . . 1.111 
Revival of terminated proceeding . . . . . . . . . . . 1.137 
Reference characters in drawings. . . . . . . . . 1.74, 1.84(p) 
References cited on examination . . . . . . . . . . . . . . .1.104 
Refund of money paid by mistake . . . . . . . . . . . . . . .1.26 
International applications . . . . . . . . . . . . . . . . .1.446 
Later establishment of small entity status . . . . . 1.28 
Time period for requesting . . . . . . . . . . . . . . . . .1.26 
Register of Government interest in patents . . . . . . . . 3.58 

Rehearing: 
On appeal to Board. . . . . . . . . . . . . . . . . . . . . . .41.52 
Request for, time for appeal after action on . . . . 1.304 

Reissues: 
Amendments. . . . . . . . . . . . . . . . . . . . . . . . . . . .1.173 
Applicants, assignees . . . . . . . . . . . . . . . . . . . . .1.172 
Application for reissue . . . . . . . . . . . . . . . . . . . .1.171 
Application made and sworn to by inventor, if 

living. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.172 

 

Continuing duty of applicant. . . . . . . . . . . . . . . 1.178 
Declaration. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.175 
Drawings. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.173 
Examination of reissue. . . . . . . . . . . . . . . . . . . . 1.176 
Filed during ex parte reexamination . . . . . . . . . 1.565 
Filed during inter partes reexamination . . . . . . 1.985 
Filing fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.16 
Filing of announcement in Official Gazette. . . . . 1.11 
Grounds for and requirements . . . . . . . . . 1.171-1.178 
Issue fee. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.18(a) 
Multiple applications for reissue of a 

single patent . . . . . . . . . . . . . . . . . . . . . . . . . . 1.177 
Oath. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.175 
Opento public . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.11 
Original patent surrendered. . . . . . . . . . . . . . . . 1.178 
Restriction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.176 
Specification . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.173 
Take precedence in order of examination . . . . . 1.176 
To contain no new matter.. . . . . . . . . . . . . . . . . 1.173 
What must accompany application . . . . . 1.171, 1.172 

Rejection: 
After two rejections appeal may be taken 
from examiner to Board.. . . . . . . . . . . . . . . . . 41.31 
Applicant will be notified of rejection 
with reasons and references. . . . . . . . . . . . . . . 1.104 
Based on commonly owned prior art, 
how overcome. . . . . . . . . . . . . . . . . . . . . . . . . 1.130 
Examiner may rely on admissions by applicant 
or patent owner, or facts within examiner’s 
knowledge . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.104 
Final. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.113 
Formal objections . . . . . . . . . . . . . . . . . . . . . . . 1.104 
On account of invention shown by others but 
not claimed, how overcome. . . . . . . . . . . . . . . 1.131 
References will be cited. . . . . . . . . . . . . . . . . . . 1.104 
Requisites of notice of. . . . . . . . . . . . . . . . . . . . 1.104 

Reply brief.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 41.41 

Reply to Office action: 
Abandonmentfor failure to . . . . . . . . . . . . . . . . 1.135 
By applicant or patent owner. . . . . . . . . . . . . . . 1.111 
Substantially complete. . . . . . . . . . . . . . . . . . . . 1.135 
Supplemental. . . . . . . . . . . . . . . . . . . . . . . . . . . 1.111 
Time for.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.134 

Representative capacity. . . . . . . . . . . . . . . . . . . . . 1.34(a) 

Request for continued examination . . . . . . . . . . . . . 1.114 
Fee . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.17 
Suspension of action after. . . . . . . . . . . . . . . . . 1.103 

Request for reconsideration. . . . . . . . . . . . . . . . . . . 1.112 

Request for ex parte reexamination. . . . . . . . . . . . . 1.510 

Request for inter partes reexamination . . . . . 1.913-1.927 

Requirement for submission of information . . . . . . 1.105 

Reservation clauses not permitted . . . . . . . . . . . . . . .1.79 

Restriction of application. . . . . . . . . . 1.141-1.146, 1.176 
Claims to nonelected invention withdrawn . . . . 1.142 
Constructive election . . . . . . . . . . . . . . . . . . . . .1.145 
Petition from requirements for . . . . . . . . 1.129, 1.144 
Provisional election . . . . . . . . . . . . . . . . . . . . . .1.143 
Reconsideration of requirement . . . . . . . . . . . . . 1.143 
Requirement for . . . . . . . . . . . . . . . . . . . . . . . . .1.142 
Subsequent presentation of claims for different 

invention. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.145 
Retention fee. . . . . . . . . . . . . . . . . . . . . . . 1.21(l), 1.53(f) 
Return of correspondence. . . . . . . . . . . . . . . . . . . . .1.5(a) 
Revival of abandoned application, terminated 

reexamination proceeding, or lapsed patent . . . . 1.137 
Unavoidable abandonment fee . . . . . . . . . . . . . 1.17(l) 
Unintentional abandonment fee . . . . . . . . . . . 1.17(m) 

Revocation of power of attorney or authorization 
of agent . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.36(a) 
Rules of Practice: 
Amendments to rules will be published . . . . . . . 1.351 

S 

Saturday, when last day falls on. . . . . . . . . . . . . . . . . .1.7 
Secrecy order . . . . . . . . . . . . . . . . . . . . . . . . . . . . .5.1-5.5 
Sequences: 

Amendments to sequence listing and computer 

readable copy . . . . . . . . . . . . . . . . . . . . . . . . . .1.825 
Disclosure requirements . . . . . . . . . . . . . 1.821, 1.823 
Sequence data, symbols and format . . . . . . . . . . 1.822 
Submissions in computer readable form. . . . . . . 1.824 
Submissions on compact disc in lieu of paper . . 1.52, 

1.821, 1.823 
Serial number of application . . . . . . . . . . . . . . . . . . . .1.5 
Service of notices: 

In interference cases . . . . . . . . . . . . . . . . . . . . .41.106 
Of appeal to the U.S. Court of Appeals for the 

Federal Circuit . . . . . . . . . . . . . . . . . . . . . . . . .1.301 
Service of papers . . . . . . . . . . . . . . . . . . . . . . . . . . .1.248 
Service of process. . . . . . . . . . . . . . . . . . .15 CFR Part 15 
Shortened period for reply . . . . . . . . . . . . . . . . . . . .1.134 
Signature: 

EFS character coded. . . . . . . . . . . . . . . . . . . 1.4(d)(3) 
Handwritten . . . . . . . . . . . . . . . . . . . . . . . . . 1.4(d)(1) 
Implicit certifications . . . . . . . . . . . . . . . 1.4(d), 10.18 
S-signature . . . . . . . . . . . . . . . . . . . . . . . . . . 1.4(d)(2) 
To a written assertion of small entity status 1.27(c)(2) 
To amendments and other papers . . . . . . . . . 1.33(b) 
To an application for extension of patent term . 1.730 
To express abandonment. . . . . . . . . . . . . . . . . . .1.138 
To oath . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.63 
To reissue oath or declaration.. . . . . . . . . . . . . .1.172 
When copy is acceptable. . . . . . . . . . . . . . . . . . . . .1.4 

 

Small business concern: 
Definition. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.27 
Smallentitystatus. . . . . . . . . . . . . . . . . . . . . . . . 1.27 

Small entity: 
Definition. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.27 
Errors in status excused. . . .. . . . . . . . . . . . . . . . 1.28 
Fraud on the office . . . . . . . . . . . . . . . . . . . . . . . 1.27 
License to Federal agency. . . . . . . . . . . . . . . . . . 1.27 
Statement. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.27 
Statement in parent application. . . . . . . . . . . . . . 1.27 
Status establishment. . . . . . . . . . . . . . . . . . .1.27, 1.28 
Status update . . . . . . . . . . . . . . . . . . . . . . . .1.27, 1.28 

Solicitor’s address . . . . . . . . . . . . . . . . 1.1(a)(3), 1.302(c) 

Species of invention claimed. . . . . . . . . . . . . 1.141, 1.146 

Specification (See also Application for 
patent, Claims): 
Abstract. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.72 
Amendments to . . . . . . . . . . . . . . . . . . . .1.121, 1.125 
Arrangement of . . . . . . . . . . . . . . . 1.77, 1.154, 1.163 
Best mode . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.71 
Claim. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.75 
Commence on separate sheet. . . . . . . . . . . . . . 1.71(f) 
Contents of. . . . . . . . . . . . . . . . . . . . . . . . . . 1.71-1.75 
Copyright notice . . . . . . . . . . . . . . . . . . . . . . .1.71(d) 
Cross-references to other applications. . . . . . . . . 1.78 
Description of the invention . . . . . . . . . . . . . . . . 1.71 
If defective, reissue to correct . . . . . . . . . 1.171-1.178 
Mask work notice . . . . . . . . . . . . . . . . . . . . . .1.71(d) 
Must conclude with specific and distinct claim. . 1.75 
Must point out new improvements specifically. . 1.71 
Must refer by figures to drawings . . . . . . . . . . . . 1.74 
Must set forth the precise invention . . . . . . . . . . 1.71 
Object of the invention . . . . . . . . . . . . . . . . . . . . 1.73 
Order of arrangement in framing. . . . . . . . . . . . . 1.77 
Paper, writing, margins . . . . . . . . . . . . . . . . . . . . 1.52 
Paragraph numbering. . . . . . . . . . . . . . . . . . . . . . 1.52 
Part of complete application . . . . . . . . . . . . . . . . 1.51 
Reference to drawings. . . . . . . . . . . . . . . . . . . . . 1.74 
Requirements of. . . . . . . . . . . . . . . . . . . . . . 1.71-1.75 
Reservation clauses not permitted . . . . . . . . . . . . 1.79 
Separate from other parts of application . . . . . 1.71(f) 
Substitute. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.125 
Summaryof the invention. . . . . . . . . . . . . . . . . . 1.73 
Title of the invention . . . . . . . . . . . . . . . . . . . . . . 1.72 
To be rewritten, if necessary . . . . . . . . . . . . . . . 1.125 

Specimens. (See Models and exhibits.) 

Specimens of composition of matter to be furnished 
when required. . . . . . . . . . . . . . . . . . . . . . . 1.93 

Specimens of plants. . . . . . . . . . . . . . . . . . . . . . . . . 1.166 

Statement of status as small entity. . . . . . . . . . . . . . . 1.27 

Status information . . . . . . . . . . . . . . . . . . . . . . . . . . .1.14 
Statutory disclaimer fee . . . . . . . . . . . . . . . . . . . . .1.20(d) 
Statutory invention registrations. . . . . . . . . . . . . . . . 1.293 

Examination.. . . . . . . . . . . . . . . . . . . . . . . . . . . .1.294 

Publication of . . . . . . . . . . . . . . . . . . . . . . . . . . .1.297 

Review of decision finally refusing to publish. .1.295 

Withdrawal of request for publication of . . . . . . 1.296 
Submission of international publication or English 

translation thereof pursuant to 35 U.S.C. 

154(d)(4) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.417 
Sufficient funds in deposit account . . . . . . . . . . . . . .1.25 
Suit in equity. (See Civil action.) 
Summary of invention . . . . . . . . . . . . . . . . . . . . . . . .1.73 
Sunday, when last day falls on. . . . . . . . . . . . . . . . . . .1.7 
Supervisory authority, petition to 

Director to exercise. . . . . . . . . . . . . . . . . . . . . . . .1.181 
Supplemental oath/declaration . . . . . . . . . . . . . . . . .1.67 
Surcharge for oath or basic filing fee filed 

after filing date. . . . . . . . . . . . . . . . . . . 1.16(f), 1.53(f) 
Suspension of action. . . . . . . . . . . . . . . . . . . . . . . . .1.103 
Suspension of rules. . . . . . . . . . . . . . . . . . . . . . . . . .1.183 
Symbols for drawings. . . . . . . . . . . . . . . . . . . . . . .1.84(n) 
Symbols for nucleotide and/or amino acid 

sequence data . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.822 

T 
Tables in patent applications . . . . . . . . . . . . . . . . . . .1.58 
Terminal disclaimer . . . . . . . . . . . . . . . . . . . . . . . . .1.321 
Testimony by Office employees. . . . . . . 15 CFR Part 15a 
Testimony in contested cases before the Board 

. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .41.156-41.158 

Compelling testimony and production . . . . . . . 41.156 

Expert testimony.. . . . . . . . . . . . . . . . . . . . . . .41.158 

Taking testimony . . . . . . . . . . . . . . . . . . . . . . .41.157 
Third party submission in published application . . . 1.99 
Time expiring on Saturday, Sunday, or holiday . . . . . . 1.7 
Time for claiming benefit of prior (domestic) 

application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.78 
Time for claiming foreign priority . . . . . . . . . . . . . .1.55 
Time for filing preliminary amendment to ensure 

entry thereof . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.115 
Time for payment of issue fee . . . . . . . . . . . . . . . . .1.311 
Time for payment of publication fee . . . . . . . . . . . . 1.311 
Time for reply by applicant . . . . . . . . 1.134, 1.135, 1.136 
Time for reply to Office action. . . . . . . . . . . 1.134, 1.136 
Time for requesting a refund . . . . . . . . . . . . . . . . . . .1.26 
Time, periods of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.7 
Timely filing of correspondence . . . . . . . . . . . . 1.8, 1.10 
Title of invention . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.72 
Title reports, fee for . . . . . . . . . . . . . . . . . . . . . . . .1.19(b) 
Transitional procedures . . . . . . . . . . . . . . . . . . . . . .1.129 

 

U 

Unavoidable abandonment . . . . . . . . . . . . . . . . . . . 1.137 
Unintentional abandonment. . . . . . . . . . . . . . . . . . . 1.137 
United States as 

Designated Office . . . . . . . . . . . . . . . . . . . . . . . 1.414 
Elected Office . . . . . . . . . . . . . . . . . . . . . . . . . . 1.414 
International Preliminary Examining 

Authority . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1.416 
International Searching Authority . . . . . . . . . . . 1.413 
Receiving Office . . . . . . . . . . . . . . . . . . . . . . . . 1.412 

Unlocatable files.. . . . . . . . . . . . . . . . . . . . . . . . . . .1.251 
Unsigned continuation or divisional application1.53, 1.63 
Use of file of parent application. . . . . . . . . . . . . . 1.53(d) 

W 
Waiver of confidentiality . . . . . . . . . . . . . . . . .1.53(d)(6) 
Withdrawal from issue . . . . . . . . . . . . . . . . . . . . . . .1.313 
Withdrawal of attorney or agent. . . . . . . . . . . . . . 1.36(b) 
Withdrawal of request for statutory invention 

registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1.296 

 

Sec. 

10.1 

10.2 

10.3 

10.4 

10.5 

10.6 

10.7 

10.8 

10.9 

PRACTICE BEFORE THE PATENT AND 
TRADEMARK OFFICE


PART 10 — REPRESENTATION OF
OTHERS BEFORE THE PATENT AND 


TRADEMARK OFFICE 

Definitions. 
[Reserved]
[Reserved]
Committee on Discipline.


INDIVIDUALS ENTITLED TO 
PRACTICE BEFORE THE PATENT 
AND TRADEMARK OFFICE 


[Reserved] 
[Reserved] 
[Reserved] 
[Reserved] 
[Reserved] 

10.10 [Reserved] 

10.11 Removing names from the register. 

10.12 - 10.13 [Reserved] 

10.14 Individuals who may practice before the Office in 
trademark and other non-patent cases. 
10.15 Refusal to recognize a practitioner. 

10.16 - 10.17 [Reserved] 

10.18 Signature and certificate for correspondence filed 
in the Patent and Trademark Office. 

10.19 [Reserved] 

PATENT AND TRADEMARK OFFICE CODE 
OF PROFESSIONAL RESPONSIBILITY 

10.20 Canons and Disciplinary Rules. 

10.21 Canon 1. 

10.22 Maintaining integrity and competence of the legal 
profession. 

10.23 Misconduct. 

10.24 Disclosure of information to authorities. 

10.25 - 10.29 [Reserved] 

10.30 Canon 2. 

10.31 Communications concerning a practitioner's 
services. 

10.32 Advertising. 

10.33 Direct contact with prospective clients. 

10.34 Communication of fields of practice. 

10.35 Firm names and letterheads. 

10.36 Fees for legal services. 

10.37 Division of fees among practitioners. 

10.38 Agreements restricting the practice of a 
practitioner. 

10.39 Acceptance of employment. 

10.40 Withdrawal from employment. 

10.41 - 10.45 [Reserved] 

10.46 Canon 3. 

10.47 Aiding unauthorized practice of law. 

10.48 Sharing legal fees. 

10.49 Forming a partnership with a non-practitioner. 

10.50 - 10.55 [Reserved] 

10.56 Canon 4. 

10.57 Preservation of confidences and secrets of a client. 

10.58 - 10.60 [Reserved] 

10.61 Canon 5. 

10.62 Refusing employment when the interest of the 
practitioner may impair the practitioner's 
independent professional judgment. 

10.63 Withdrawal when the practitioner becomes a 
witness. 

10.64 Avoiding acquisition of interest in litigation or 
proceeding before the Office. 

10.65 Limiting business relations with a client. 

10.66 Refusing to accept or continue employment if the 
interests of another client may impair the 
independent professional judgment of the 
practitioner. 

10.67 Settling similar claims of clients. 

10.68 Avoiding influence by others than the client. 

10.69 - 10.75 [Reserved] 

10.76 Canon 6. 

10.77 Failing to act competently. 

10.78 Limiting liability to client. 

10.79 - 10.82 [Reserved] 

10.83 Canon 7. 

10.84 Representing a client zealously. 

10.85 Representing a client within the bounds of the law. 

10.86 [Reserved] 

10.87 Communicating with one of adverse interest. 

10.88 Threatening criminal prosecution. 

10.89 Conduct in proceedings. 

10.90 - 10.91 [Reserved] 

10.92 Contact with witnesses. 

10.93 Contact with officials. 

10.94 - 10.99 [Reserved] 

 

10.100 Canon 8. 

10.101 Action as a public official. 

10.102 Statements concerning officials. 

10.103 Practitioner candidate for judicial office. 

10.104 - 10.109 [Reserved] 

10.110 Canon 9. 

10.111 Avoiding even the appearance of impropriety. 

10.112 Preserving identity of funds and property of client. 

10.113 - 10.129 [Reserved] 

INVESTIGATIONS AND DISCIPLINARY 
PROCEEDINGS 


10.130 Reprimand, suspension or exclusion. 

10.131 Investigations. 

10.132 Initiating a disciplinary proceeding; reference to an 
administrative law judge. 

10.133 Conference between Director and practitioner; 
resignation. 

10.134 Complaint. 

10.135 Service of complaint. 

10.136 Answer to complaint. 

10.137 Supplemental complaint. 

10.138 Contested case. 

10.139 Administrative law judge; appointment; 
responsibilities; review of interlocutory orders; 
stays. 

10.140 Representative for Director or respondent. 

10.141 Filing of papers. 

10.142 Service of papers. 

10.143 Motions. 

10.144 Hearings. 

10.145 Proof; variance; amendment of pleadings. 

10.146 - 10.148 [Reserved] 

10.149 Burden of proof. 

10.150 Evidence. 

10.151 Depositions. 

10.152 Discovery. 

10.153 Proposed findings and conclusions; post- hearing 
memorandum. 

10.154 Initial decision of administrative law judge. 

10.155 Appeal to the Commissioner. 

10.156 Decision of the Commissioner. 

10.157 Review of Commissioner’s final decision. 

10.158 Suspended or excluded practitioner. 

10.159 Notice of suspension or exclusion. 

10.160 Petition for reinstatement. 

10.161 Savings clause. 

10.162 - 10.169 [Reserved] 

10.170 Suspension of rules. 

§ 10.1 Definitions. 

This part governs solely the practice of patent, 
trademark, and other law before the Patent and Trademark 
Office. Nothing in this part shall be construed to 
preempt the authority of each State to regulate the 
practice of law, except to the extent necessary for the 
Patent and Trademark Office to accomplish its federal 
objectives. Unless otherwise clear from the context, 
the following definitions apply to this part: 

(a) Affidavit means affidavit, declaration under 
35 U.S.C. 25 (see § 1.68 and § 2.20 of this subchapter), 
or statutory declaration under 28 U.S.C. 1746. 
(b) Application includes an application for a 
design, plant, or utility patent, an application to reissue 
any patent, and an application to register a trademark. 
(c) Attorney or lawyer means an individual who 
is a member in good standing of the bar of any United 
States court or the highest court of any State. A “nonlawyer” 
is a person who is not an attorney or lawyer. 
(d) Canon is defined in § 10.20(a). 
(e) Confidence is defined in § 10.57(a). 




(f) Differing interests include every interest 
that may adversely affect either the judgment or the 
loyalty of a practitioner to a client, whether it be a 
conflicting, inconsistent, diverse, or other interest. 
(g) Director means the Director of Enrollment 
and Discipline. 
(h) Disciplinary Rule is defined in § 10.20(b). 


(i) Employee of a tribunal includes all employees 
of courts, the Office, and other adjudicatory bodies. 
(j) Giving information within the meaning of 
§ 10.23(c) (2) includes making (1) a written statement 
or representation or (2) an oral statement or representation. 
(k) Law firm includes a professional legal corporation 
or a partnership. 
(l) Legal counsel means practitioner. 


(m) Legal profession includes the individuals 
who are lawfully engaged in practice of patent, trademark, 
and other law before the Office. 
(n) Legal service means any legal service which 
may lawfully be performed by a practitioner before 
the Office. 


 

(o) Legal System includes the Office and courts 
and adjudicatory bodies which review matters on 
which the Office has acted. 
(p) Office means Patent and Trademark Office. 


(q) Person includes a corporation, an association, 
a trust, a partnership, and any other organization 
or legal entity. 
(r) Practitioner means (1) an attorney or agent 
registered to practice before the Office in patent cases 
or (2) an individual authorized under 5 U.S.C. 500(b) 
or otherwise as provided by this subchapter, to practice 
before the Office in trademark cases or other non-
patent cases. A “suspended or excluded practitioner” 
is a practitioner who is suspended or excluded under 
§ 10.156. A “non-practitioner” is an individual who is 
not a practitioner. 
(s) A proceeding before the Office includes an 
application, a reexamination, a protest, a public use 
proceeding, a patent interference, an inter partes 
trademark proceeding, or any other proceeding which 
is pending before the Office. 
(t) Professional legal corporation means a corporation 
authorized by law to practice law for profit. 
(u) Registration means registration to practice 
before the Office in patent cases. 
(v) Respondent is defined in § 10.134(a)(1). 
(w) Secret is defined in § 10.57(a). 
(x) Solicit is defined in § 10.33. 




(y) State includes the District of Columbia, 
Puerto Rico, and other federal territories and possessions. 
(z) Tribunal includes courts, the Office, and 
other adjudicatory bodies. 


(aa) United States means the United States of 
America, its territories and possessions. 

[Added 50 FR 5172, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.2 [Reserved] 

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 
1985; removed and reserved, 69 FR 35427, June 24, 2004, 
effective July 26, 2004] 

§ 10.3 [Reserved] 

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 
1985; removed and reserved, 69 FR 35427, June 24, 2004, 
effective July 26, 2004] 

§ 10.4 Committee on Discipline. 

(a) The Commissioner shall appoint a Committee 
on Discipline. The Committee on Discipline shall 
consist of at least three employees of the Office, none 
of whom reports directly or indirectly to the Director 
or the Solicitor. Each member of the Committee on 
Discipline shall be a member in good standing of the 
bar of a State. 
(b) The Committee on Discipline shall meet at 
the request of the Director and after reviewing evidence 
presented by the Director shall, by majority 
vote, determine whether there is probable cause to 
bring charges under § 10.132 against a practitioner. 
When charges are brought against a practitioner, no 
member of the Committee on Discipline, employee 
under the direction of the Director, or associate solicitor 
or assistant solicitor in the Office of Solicitor shall 
participate in rendering a decision on the charges. 
(c) No discovery shall be authorized of, and no 
member of the Committee on Discipline shall be 
required to testify about, deliberations of the Committee 
on Discipline. 


[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 
1985] 

INDIVIDUALS ENTITLED TO PRACTICE 
BEFORE THE PATENT AND TRADEMARK 
OFFICE


§ 10.5 [Reserved] 

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 
1985; removed and reserved, 69 FR 35427, June 24, 2004, 
effective July 26, 2004] 

§ 10.6 [Reserved] 

[Added 50 FR 5173, Feb. 6, 1985, effective Mar. 8, 
1985; paras. (d) & (e) removed 53 FR 38948, Oct. 4, 1988, 
effective Nov. 4, 1988; removed and reserved, 69 FR 
35427, June 24, 2004, effective July 26, 2004] 

§ 10.7 [Reserved] 

[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 
1985; removed and reserved, 69 FR 35427, June 24, 2004, 
effective July 26, 2004] 

 

§ 10.8 [Reserved] 

[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 
1985; removed and reserved, 69 FR 35427, June 24, 2004, 
effective July 26, 2004] 

§ 10.9 [Reserved] 

[Added 50 FR 5174, Feb. 6, 1985, effective Mar. 8, 
1985; para. (c) added, 58 FR 4335, Jan. 14, 1993, effective 
May 1, 1993; para. (c) amended, 60 FR 21438, May 2, 
1995, effective June 1, 1995; removed and reserved, 69 FR 
35427, June 24, 2004, effective July 26, 2004] 

§ 10.10 [Reserved] 

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985; revised 53 FR 38950, Oct. 4, 1988, effective Nov. 4, 
1988; corrected 53 FR 41278, Oct. 20, 1988; removed and 
reserved, 69 FR 35427, June 24, 2004, effective July 26, 
2004] 

§ 10.11 Removing names from the register. 

A letter may be addressed to any individual on the 
register, at the address of which separate notice was 
last received by the Director, for the purpose of ascertaining 
whether such individual desires to remain on 
the register. The name of any individual failing to 
reply and give any information requested by the 
Director within a time limit specified will be removed 
from the register and the names of individuals so 
removed will be published in the Official Gazette. 
The name of any individual so removed may be reinstated 
on the register as may be appropriate and upon 
payment of the fee set forth in § 1.21(a)(3) of this subchapter. 


[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985; revised, 69 FR 35427, June 24, 2004, effective July 
26, 2004] 

§ 10.12 - 10.13 [Reserved] 

§ 10.14 Individuals who may practice before the 

Office in trademark and other non-

patent cases. 

(a) Attorneys. Any individual who is an attorney 
may represent others before the Office in trademark 
and other non-patent cases. An attorney is not 
required to apply for registration or recognition to 
practice before the Office in trademark and other non-
patent cases. 

(b) Non-lawyers. Individuals who are not attorneys 
are not recognized to practice before the Office 
in trademark and other non-patent cases, except that 
individuals not attorneys who were recognized to 
practice before the Office in trademark cases under 
this chapter prior to January 1, 1957, will be recognized 
as agents to continue practice before the Office 
in trademark cases. 
(c) Foreigners. Any foreign attorney or agent 
not a resident of the United States who shall prove to 
the satisfaction of the Director that he or she is registered 
or in good standing before the patent or trademark 
office of the country in which he or she resides 
and practices, may be recognized for the limited purpose 
of representing parties located in such country 
before the Office in the presentation and prosecution 
of trademark cases, provided: The patent or trademark 
office of such country allows substantially reciprocal 
privileges to those permitted to practice in trademark 
cases before the United States Patent and Trademark 
Office. Recognition under this paragraph shall continue 
only during the period that the conditions specified 
in this paragraph obtain. 
(d) Recognition of any individual under this 
section shall not be construed as sanctioning or authorizing 
the performance of any act regarded in the 
jurisdiction where performed as the unauthorized 
practice of law. 
(e) No individual other than those specified in 
paragraphs (a), (b), and (c) of this section will be permitted 
to practice before the Office in trademark 
cases. Any individual may appear in a trademark or 
other non-patent case in his or her own behalf. Any 
individual may appear in a trademark case for (1) a 
firm of which he or she is a member or (2) a corporation 
or association of which he or she is an officer and 
which he or she is authorized to represent, if such 
firm, corporation, or association is a party to a trademark 
proceeding pending before the Office. 


[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.15 Refusal to recognize a practitioner. 

Any practitioner authorized to appear before the 
Office may be suspended or excluded in accordance 
with the provisions of this part. Any practitioner who 

 

is suspended or excluded under this subpart or 
removed under § 10.11(b) shall not be entitled to practice 
before the Office. 

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.16 - 10.17 [Reserved] 

§ 10.18 Signature and certificate for correspondence filed in the Patent and Trademark 
Office. 

(a) For all documents filed in the Office in 
patent, trademark, and other non-patent matters, 
except for correspondence that is required to be 
signed by the applicant or party, each piece of correspondence 
filed by a practitioner in the Patent and 
Trademark Office must bear a signature by such practitioner 
complying with the provisions of § 1.4(d), § 
1.4(e), or § 2.193(c)(1) of this chapter. 
(b) By presenting to the Office (whether by 
signing, filing, submitting, or later advocating) any 
paper, the party presenting such paper, whether a 
practitioner or non-practitioner, is certifying that— 
(1) All statements made therein of the party’s 
own knowledge are true, all statements made therein 
on information and belief are believed to be true, and 
all statements made therein are made with the knowledge 
that whoever, in any matter within the jurisdiction 
of the Patent and Trademark Office, knowingly 
and willfully falsifies, conceals, or covers up by any 
trick, scheme, or device a material fact, or makes any 
false, fictitious or fraudulent statements or representations, 
or makes or uses any false writing or document 
knowing the same to contain any false, fictitious or 
fraudulent statement or entry, shall be subject to the 
penalties set forth under 18 U.S.C. 1001, and that violations 
of this paragraph may jeopardize the validity 
of the application or document, or the validity or 
enforceability of any patent, trademark registration, or 
certificate resulting therefrom; and 
(2) To the best of the party’s knowledge, 
information and belief, formed after an inquiry reasonable 
under the circumstances, that — 
(i) The paper is not being presented for 
any improper purpose, such as to harass someone or 


to cause unnecessary delay or needless increase in the 
cost of prosecution before the Office; 

(ii) The claims and other legal contentions 
therein are warranted by existing law or by a nonfrivolous 
argument for the extension, modification, or 
reversal of existing law or the establishment of new 
law; 

(iii) The allegations and other factual contentions 
have evidentiary support or, if specifically so 
identified, are likely to have evidentiary support after 
a reasonable opportunity for further investigation or 
discovery; and 

(iv) The denials of factual contentions are 
warranted on the evidence, or if specifically so identified, 
are reasonably based on a lack of information or 
belief. 
(c) Violations of paragraph (b)(1) of this section 
by a practitioner or non-practitioner may jeopardize 
the validity of the application or document, or the 
validity or enforceability of any patent, trademark 
registration, or certificate resulting therefrom. Violations 
of any of paragraphs (b)(2)(i) through (iv) of this 
section are, after notice and reasonable opportunity to 
respond, subject to such sanctions as deemed appropriate 
by the Commissioner, or the Commissioner’s 
designee, which may include, but are not limited to, 
any combination of — 
(1) Holding certain facts to have been established; 
(2) Returning papers; 


(3) Precluding a party from filing a paper, or 
presenting or contesting an issue; 
(4) Imposing a monetary sanction; 


(5) Requiring a terminal disclaimer for the 
period of the delay; or 
(6) Terminating the proceedings in the Patent 
and Trademark Office. 
(d) Any practitioner violating the provisions of 
this section may also be subject to disciplinary action. 
See § 10.23(c)(15). 


[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985; para. (a) revised, 58 FR 54494, Oct. 22, 1993, effective 
Nov. 22, 1993; paras. (a) & (b) revised, paras. (c) & (d) 
added, 62 FR 53131, Oct. 10, 1997, effective Dec. 1, 1997; 
para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective 
Oct. 21, 2004] 

 

§ 10.19 [Reserved] 

PATENT AND TRADEMARK OFFICE CODE 
OF PROFESSIONAL RESPONSIBILITY 

§ 10.20 Canons and Disciplinary Rules. 

(a) Canons are set out in §§ 10.21, 10.30, 10.46, 
10.56, 10.61, 10.76, 10.83, 10.100, and 10.110. Canons 
are statements of axiomatic norms, expressing in 
general terms the standards of professional conduct 
expected of practitioners in their relationships with 
the public, with the legal system, and with the legal 
profession. 
(b) Disciplinary Rules are set out in §§ 10.2210.24, 
10.31-10.40, 10.47-10.57, 10.62-10.68, 10.77, 
10.78, 10.84, 10.85, 10.87-10.89, 10.92, 10.93, 
10.101-10.103, 10.111, and 10.112. Disciplinary 
Rules are mandatory in character and state the minimum 
level of conduct below which no practitioner 
can fall without being subjected to disciplinary action. 


[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.21 Canon 1. 

A practitioner should assist in maintaining the 
integrity and competence of the legal profession. 

[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.22 Maintaining integrity and competence of 
the legal profession. 

(a) A practitioner is subject to discipline if the 
practitioner has made a materially false statement in, 
or if the practitioner has deliberately failed to disclose 
a material fact requested in connection with, the practitioner’s 
application for registration or membership 
in the bar of any United States court or any State court 
or his or her authority to otherwise practice before the 
Office in trademark and other non-patent cases. 
(b) A practitioner shall not further the application 
for registration or membership in the bar of any 
United States court, State court, or administrative 
agency of another person known by the practitioner to 
be unqualified in respect to character, education, or 
other relevant attribute. 


[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.23 Misconduct. 

(a) A practitioner shall not engage in disreputable 
or gross misconduct. 
(b) A practitioner shall not: 
(1) Violate a Disciplinary Rule. 




(2) Circumvent a Disciplinary Rule through 
actions of another. 
(3) Engage in illegal conduct involving 
moral turpitude. 
(4) Engage in conduct involving dishonesty, 
fraud, deceit, or misrepresentation. 
(5) Engage in conduct that is prejudicial to 
the administration of justice. 
(6) Engage in any other conduct that 
adversely reflects on the practitioner’s fitness to practice 
before the Office. 
(c) Conduct which constitutes a violation of 
paragraphs (a) and (b) of this section includes, but is 
not limited to: 
(1) Conviction of a criminal offense involving 
moral turpitude, dishonesty, or breach of trust. 
(2) Knowingly giving false or misleading 
information or knowingly participating in a material 
way in giving false or misleading information, to: 
(i) A client in connection with any immediate, 
prospective, or pending business before the 
Office. 
(ii) The Office or any employee of the 
Office. 
(3) Misappropriation of, or failure to properly 
or timely remit, funds received by a practitioner 
or the practitioner’s firm from a client to pay a fee 
which the client is required by law to pay to the 
Office. 
(4) Directly or indirectly improperly influencing, 
attempting to improperly influence, offering 
or agreeing to improperly influence, or attempting to 
offer or agree to improperly influence an official 
action of any employee of the Office by: 
(i) Use of threats, false accusations, 
duress, or coercion, 
(ii) An offer of any special inducement or 
promise of advantage, or 


(iii) Improperly bestowing of any gift, 
favor, or thing of value. 

 

(5) Suspension or disbarment from practice 
as an attorney or agent on ethical grounds by any duly 
constituted authority of a State or the United States or, 
in the case of a practitioner who resides in a foreign 
country or is registered under § 10.6(c), by any duly 
constituted authority of: 

(i) A State, 
(ii) The United States, or 


(iii) The country in which the practitioner 
resides. 

(6) Knowingly aiding or abetting a practitioner 
suspended or excluded from practice before the 
Office in engaging in unauthorized practice before the 
Office under § 10.158. 
(7) Knowingly withholding from the Office 
information identifying a patent or patent application 
of another from which one or more claims have been 
copied. See § 41.202(a)(1) of this title. 
(8) Failing to inform a client or former client 
or failing to timely notify the Office of an inability to 
notify a client or former client of correspondence 
received from the Office or the client’s or former client’s 
opponent in an inter partes proceeding before 
the Office when the correspondence (i) could have a 
significant effect on a matter pending before the 
Office, (ii) is received by the practitioner on behalf of 
a client or former client and (iii) is correspondence of 
which a reasonable practitioner would believe under 
the circumstances the client or former client should be 
notified. 
(9) Knowingly misusing a “Certificate of 
Mailing or Transmission” under § 1.8 of this chapter. 
(10) Knowingly violating or causing to be violated 
the requirements of § 1.56 or § 1.555 of this subchapter. 
(11) Except as permitted by § 1.52(c) of this 
chapter, knowingly filing or causing to be filed an 
application containing any material alteration made in 
the application papers after the signing of the accompanying 
oath or declaration without identifying the 
alteration at the time of filing the application papers. 
(12) Knowingly filing, or causing to be filed, a 
frivolous complaint alleging a violation by a practitioner 
of the Patent and Trademark Office Code of Professional 
Responsibility. 
(13) Knowingly preparing or prosecuting or 
providing assistance in the preparation or prosecution 


of a patent application in violation of an undertaking 
signed under § 10.10(b). 

(14) Knowingly failing to advise the Director 
in writing of any change which would preclude continued 
registration under § 10.6. 
(15) Signing a paper filed in the Office in violation 
of the provisions of § 10.18 or making a scandalous 
or indecent statement in a paper filed in the 
Office. 
(16) Willfully refusing to reveal or report 
knowledge or evidence to the Director contrary to 
§ 10.24 or paragraph (b) of § 10.131. 
(17) Representing before the Office in a patent 
case either a joint venture comprising an inventor and 
an invention developer or an inventor referred to the 
registered practitioner by an invention developer 
when (i) the registered practitioner knows, or has been 
advised by the Office, that a formal complaint filed by 
a Federal or State agency, based on any violation of 
any law relating to securities, unfair methods of competition, 
unfair or deceptive acts or practices, mail 
fraud, or other civil or criminal conduct, is pending 
before a Federal or State court or Federal or State 
agency, or has been resolved unfavorably by such 
court or agency, against the invention developer in 
connection with invention development services and 
(ii) the registered practitioner fails to fully advise the 
inventor of the existence of the pending complaint or 
unfavorable resolution thereof prior to undertaking or 
continuing representation of the joint venture or 
inventor. “Invention developer” means any person, 
and any agent, employee, officer, partner, or independent 
contractor thereof, who is not a registered practitioner 
and who advertises invention development 
services in media of general circulation or who enters 
into contracts for invention development services with 
customers as a result of such advertisement. “Invention 
development services” means acts of invention 
development required or promised to be performed, or 
actually performed, or both, by an invention developer 
for a customer. “Invention development” means 
the evaluation, perfection, marketing, brokering, or 
promotion of an invention on behalf of a customer by 
an invention developer, including a patent search, 
preparation of a patent application, or any other act 
done by an invention developer for consideration 
toward the end of procuring or attempting to procure a 
license, buyer, or patent for an invention. “Customer” 


 

means any individual who has made an invention and 
who enters into a contract for invention development 
services with an invention developer with respect to 
the invention by which the inventor becomes obligated 
to pay the invention developer less than $5,000 
(not to include any additional sums which the invention 
developer is to receive as a result of successful 
development of the invention). “Contract for invention 
development services” means a contract for 
invention development services with an invention 
developer with respect to an invention made by a customer 
by which the inventor becomes obligated to pay 
the invention developer less than $5,000 (not to 
include any additional sums which the invention 
developer is to receive as a result of successful development 
of the invention). 

(18) In the absence of information sufficient to 
establish a reasonable belief that fraud or inequitable 
conduct has occurred, alleging before a tribunal that 
anyone has committed a fraud on the Office or 
engaged in inequitable conduct in a proceeding before 
the Office. 
(19) Action by an employee of the Office contrary 
to the provisions set forth in § 10.10(c). 
(20) Knowing practice by a Government 
employee contrary to applicable Federal conflict of 
interest laws, or regulations of the Department, 
agency, or commission employing said individual. 
(d) A practitioner who acts with reckless indifference 
to whether a representation is true or false is 
chargeable with knowledge of its falsity. Deceitful 
statements of half-truths or concealment of material 
facts shall be deemed actual fraud within the meaning 
of this part. 


[Added 50 FR 5175, Feb. 6, 1985, effective Mar. 8, 
1985; amended 50 FR 25073, June 17, 1985; 50 FR 25980, 
June 24, 1985; paras. (c)(13), (19) & (20), 53 FR 38950, 
Oct. 4, 1988, effective Nov. 4, 1988; corrected 53 FR 
41278, Oct. 20, 1988; paras. (c)(10) & (c)(11), 57 FR 2021, 
Jan. 17, 1992, effective Mar. 16, 1992; para. (c)(9) 
amended, 58 FR 54494, Oct. 22, 1993, effective Nov. 22, 
1993; para. (c)(9) amended, 61 FR 56439, Nov. 1, 1996, 
effective Dec. 2, 1996; para. (c)(15) amended, 62 FR 
53131, Oct. 10, 1997, effective Dec. 1, 1997; para. (c)(11) 
revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 
2000; para (c)(7) revised, 69 FR 49959, Aug. 12, 2004, 
effective Sept. 13, 2004] 

§ 10.24 Disclosure of information to authorities. 

(a) A practitioner possessing unprivileged 
knowledge of a violation of a Disciplinary Rule shall 
report such knowledge to the Director. 
(b) A practitioner possessing unprivileged 
knowledge or evidence concerning another practitioner, 
employee of the Office, or a judge shall reveal 
fully such knowledge or evidence upon proper request 
of a tribunal or other authority empowered to investigate 
or act upon the conduct of practitioners, employees 
of the Office, or judges. 


[Added 50 FR 5176, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.25 - 10.29 [Reserved] 

§ 10.30 Canon 2. 

A practitioner should assist the legal profession in 
fulfilling its duty to make legal counsel available. 

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.31 Communications concerning a practitioner’s services. 

(a) No practitioner shall with respect to any 
prospective business before the Office, by word, circular, 
letter, or advertising, with intent to defraud in 
any manner, deceive, mislead, or threaten any prospective 
applicant or other person having immediate 
or prospective business before the Office. 
(b) A practitioner may not use the name of a 
Member of either House of Congress or of an individual 
in the service of the United States in advertising 
the practitioner’s practice before the Office. 
(c) Unless authorized under § 10.14(b), a nonlawyer 
practitioner shall not hold himself or herself 
out as authorized to practice before the Office in 
trademark cases. 
(d) Unless a practitioner is an attorney, the 
practitioner shall not hold himself or herself out: 
(1) To be an attorney or lawyer or 


(2) As authorized to practice before the 
Office in non-patent and trademark cases. 


[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985] 

 

§ 10.32 Advertising. 

(a) Subject to § 10.31, a practitioner may advertise 
services through public media, including a telephone 
directory, legal directory, newspaper, or other 
periodical, radio, or television, or through written 
communications not involving solicitation as defined 
by § 10.33. 
(b) A practitioner shall not give anything of 
value to a person for recommending the practitioner’s 
services, except that a practitioner may pay the reasonable 
cost of advertising or written communication 
permitted by this section and may pay the usual 
charges of a not-for-profit lawyer referral service or 
other legal service organization. 
(c) Any communication made pursuant to this 
section shall include the name of at least one practitioner 
responsible for its content. 


[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.33 Direct contact with prospective clients. 

A practitioner may not solicit professional employment 
from a prospective client with whom the practitioner 
has no family or prior professional relationship, 
by mail, in-person, or otherwise, when a significant 
motive for the practitioner’s doing so is the practitioner’s 
pecuniary gain under circumstances evidencing 
undue influence, intimidation, or overreaching. The 
term “solicit” includes contact in person, by telephone 
or telegraph, by letter or other writing, or by other 
communication directed to a specific recipient, but 
does not include letters addressed or advertising circulars 
distributed generally to persons not specifically 
known to need legal services of the kind provided by 
the practitioner in a particular matter, but who are so 
situated that they might in general find such services 
useful. 

[Added 50 FR 5177, Feb.6, 1985, effective Mar. 8, 
1985] 

§ 10.34 Communication of fields of practice. 

A registered practitioner may state or imply that the 
practitioner is a specialist as follows: 

(a) A registered practitioner who is an attorney 
may use the designation “Patents,” “Patent Attorney,” 
“Patent Lawyer,” “Registered Patent Attorney,” or a 
substantially similar designation. 

(b) A registered practitioner who is not an attorney 
may use the designation “Patents,” “Patent 
Agent,” “Registered Patent Agent,” or a substantially 
similar designation, except that any practitioner who 
was registered prior to November 15, 1938, may refer 
to himself or herself as a “patent attorney.” 

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.35 Firm names and letterheads. 

(a) A practitioner shall not use a firm name, letterhead, 
or other professional designation that violates 
§ 10.31. A trade name may be used by a practitioner 
in private practice if it does not imply a current connection 
with a government agency or with a public or 
charitable legal services organization and is not otherwise 
in violation of § 10.31. 
(b) Practitioners may state or imply that they 
practice in a partnership or other organization only 
when that is the fact. 


[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.36 Fees for legal services. 

(a) A practitioner shall not enter into an agreement 
for, charge, or collect an illegal or clearly excessive 
fee. 
(b) A fee is clearly excessive when, after a 
review of the facts, a practitioner of ordinary prudence 
would be left with a definite and firm conviction 
that the fee is in excess of a reasonable fee. 
Factors to be considered as guides in determining the 
reasonableness of a fee include the following: 
(1) The time and labor required, the novelty 
and difficulty of the questions involved, and the skill 
requisite to perform the legal service properly. 
(2) The likelihood, if apparent to the client, 
that the acceptance of the particular employment will 
preclude other employment by the practitioner. 
(3) The fee customarily charged for similar 
legal services. 
(4) The amount involved and the results 
obtained. 
(5) The time limitations imposed by the client 
or by the circumstances. 
(6) The nature and length of the professional 
relationship with the client. 


 

(7) The experience, reputation, and ability of 
the practitioner or practitioners performing the services. 


(8) Whether the fee is fixed or contingent. 

[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.37 Division of fees among practitioners. 

(a) A practitioner shall not divide a fee for legal 
services with another practitioner who is not a partner 
in or associate of the practitioner’s law firm or law 
office, unless: 
(1) The client consents to employment of the 
other practitioner after a full disclosure that a division 
of fees will be made. 
(2) The division is made in proportion to the 
services performed and responsibility assumed by 
each. 
(3) The total fee of the practitioners does not 
clearly exceed reasonable compensation for all legal 
services rendered to the client. 
(b) This section does not prohibit payment to a 
former partner or associate pursuant to a separation or 
retirement agreement. 


[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.38 Agreements restricting the practice of a 
practitioner. 

(a) A practitioner shall not be a party to or participate 
in a partnership or employment agreement 
with another practitioner that restricts the right of a 
practitioner to practice before the Office after the termination 
of a relationship created by the agreement, 
except as a condition to payment of retirement benefits. 
(b) In connection with the settlement of a controversy 
or suit, a practitioner shall not enter into an 
agreement that restricts the practitioner’s right to 
practice before the Office. 


[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.39 Acceptance of employment. 

A practitioner shall not accept employment on 
behalf of a person if the practitioner knows or it is 
obvious that such person wishes to: 

(a) Bring a legal action, commence a proceeding 
before the Office, conduct a defense, assert a position 
in any proceeding pending before the Office, or 
otherwise have steps taken for the person, merely for 
the purpose of harassing or maliciously injuring any 
other person. 
(b) Present a claim or defense in litigation or 
any proceeding before the Office that it is not warranted 
under existing law, unless it can be supported 
by good faith argument for an extension, modification, 
or reversal of existing law. 


[Added 50 FR 5177, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.40 Withdrawal from employment. 

(a) A practitioner shall not withdraw from 
employment in a proceeding before the Office without 
permission from the Office (see §§ 1.36 and 2.19 of 
this subchapter). In any event, a practitioner shall not 
withdraw from employment until the practitioner has 
taken reasonable steps to avoid foreseeable prejudice 
to the rights of the client, including giving due notice 
to his or her client, allowing time for employment of 
another practitioner, delivering to the client all papers 
and property to which the client is entitled, and complying 
with applicable laws and rules. A practitioner 
who withdraws from employment shall refund 
promptly any part of a fee paid in advance that has not 
been earned. 
(b) Mandatory withdrawal. A practitioner representing 
a client before the Office shall withdraw 
from employment if: 
(1) The practitioner knows or it is obvious 
that the client is bringing a legal action, commencing 
a proceeding before the Office, conducting a defense, 
or asserting a position in litigation or any proceeding 
pending before the Office, or is otherwise having 
steps taken for the client, merely for the purpose of 
harassing or maliciously injuring any person; 
(2) The practitioner knows or it is obvious 
that the practitioner’s continued employment will 
result in violation of a Disciplinary Rule; 


 

(3) The practitioner’s mental or physical condition 
renders it unreasonably difficult for the practitioner 
to carry out the employment effectively; or 
(4) The practitioner is discharged by the client. 
(c) Permissive withdrawal. If paragraph (b) of 
this section is not applicable, a practitioner may not 
request permission to withdraw in matters pending 
before the Office unless such request or such withdrawal 
is because: 
(1) The petitioner’s client: 


(i) Insists upon presenting a claim or 
defense that is not warranted under existing law and 
cannot be supported by good faith argument for an 
extension, modification, or reversal of existing law; 
(ii) Personally seeks to pursue an illegal 
course of conduct; 


(iii) Insists that the practitioner pursue a 
course of conduct that is illegal or that is prohibited 
under a Disciplinary Rule; 

(iv) By other conduct renders it unreasonably 
difficult for the practitioner to carry out the 
employment effectively; 
(v) Insists, in a matter not pending before a 
tribunal, that the practitioner engage in conduct that is 
contrary to the judgment and advice of the practitioner 
but not prohibited under the Disciplinary Rule; or 
(vi) Has failed to pay one or more bills rendered 
by the practitioner for an unreasonable period 
of time or has failed to honor an agreement to pay a 
retainer in advance of the performance of legal services. 
(2) The practitioner’s continued employment 
is likely to result in a violation of a Disciplinary 
Rule; 
(3) The practitioner’s inability to work with 
co-counsel indicates that the best interests of the client 
likely will be served by withdrawal; 
(4) The practitioner’s mental or physical condition 
renders it difficult for the practitioner to carry 
out the employment effectively; 
(5) The practitioner’s client knowingly and 
freely assents to termination of the employment; or 
(6) The practitioner believes in good faith, in 
a proceeding pending before the Office, that the 
Office will find the existence of other good cause for 
withdrawal. 


[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.41 - 10.45 [Reserved] 

§ 10.46 Canon 3. 

A practitioner should assist in preventing the unauthorized 
practice of law. 

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.47 Aiding unauthorized practice of law. 

(a) A practitioner shall not aid a non-practitioner 
in the unauthorized practice of law before the 
Office. 
(b) A practitioner shall not aid a suspended or 
excluded practitioner in the practice of law before the 
Office. 
(c) A practitioner shall not aid a non-lawyer in 
the unauthorized practice of law. 


[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.48 Sharing legal fees. 

A practitioner or a firm of practitioners shall not 
share legal fees with a non-practitioner except that: 

(a) An agreement by a practitioner with the 
practitioner’s firm, partner, or associate may provide 
for the payment of money, over a reasonable period of 
time after the practitioner’s death, to the practitioner’s 
estate or to one or more specified persons. 
(b) A practitioner who undertakes to complete 
unfinished legal business of a deceased practitioner 
may pay to the estate of the deceased practitioner that 
proportion of the total compensation which fairly represents 
the services rendered by the deceased practitioner. 
(c) A practitioner or firm of practitioners may 
include non-practitioner employees in a compensation 
or retirement plan, even though the plan is based in 
whole or in part on a profit-sharing arrangement, providing 
such plan does not circumvent another Disciplinary 
Rule. 


[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985; para. (b) revised, 58 FR 54511, Oct. 22, 1993, effective 
June 3, 1994] 

 

§ 10.49 Forming a partnership with a non-practitioner. 

A practitioner shall not form a partnership with a 
nonpractitioner if any of the activities of the partnership 
consist of the practice of patent, trademark, or 
other law before the Office. 

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.50 - 10.55 [Reserved] 

§ 10.56 Canon 4. 

A practitioner should preserve the confidences and 
secrets of a client. 

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.57 Preservation of confidences and secrets of 
a client. 

(a) “Confidence” refers to information protected 
by the attorney-client or agent-client privilege 
under applicable law. “Secret” refers to other information 
gained in the professional relationship that the 
client has requested be held inviolate or the disclosure 
of which would be embarrassing or would be likely to 
be detrimental to the client. 
(b) Except when permitted under paragraph (c) 
of this section, a practitioner shall not knowingly: 
(1) Reveal a confidence or secret of a client. 


(2) Use a confidence or secret of a client to 
the disadvantage of the client. 
(3) Use a confidence or secret of a client for 
the advantage of the practitioner or of a third person, 
unless the client consents after full disclosure. 
(c) A practitioner may reveal: 


(1) Confidences or secrets with the consent 
of the client affected but only after a full disclosure to 
the client. 
(2) Confidences or secrets when permitted 
under Disciplinary Rules or required by law or court 
order. 
(3) The intention of a client to commit a 
crime and the information necessary to prevent the 
crime. 
(4) Confidences or secrets necessary to 
establish or collect the practitioner’s fee or to defend 


the practitioner or the practitioner’s employees or 
associates against an accusation of wrongful conduct. 

(d) A practitioner shall exercise reasonable care 
to prevent the practitioner’s employees, associates, 
and others whose services are utilized by the practitioner 
from disclosing or using confidences or secrets of 
a client, except that a practitioner may reveal the 
information allowed by paragraph (c) of this section 
through an employee. 

[Added 50 FR 5178, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.58 - 10.60 [Reserved] 

§ 10.61 Canon 5. 

A practitioner should exercise independent professional 
judgment on behalf of a client. 

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.62 Refusing employment when the interest 
of the practitioner may impair the practitioner’s independent professional judgment. 

(a) Except with the consent of a client after full 
disclosure, a practitioner shall not accept employment 
if the exercise of the practitioner’s professional judgment 
on behalf of the client will be or reasonably may 
be affected by the practitioner’s own financial, business, 
property, or personal interests. 
(b) A practitioner shall not accept employment 
in a proceeding before the Office if the practitioner 
knows or it is obvious that the practitioner or another 
practitioner in the practitioner’s firm ought to sign an 
affidavit to be filed in the Office or be called as a witness, 
except that the practitioner may undertake the 
employment and the practitioner or another practitioner 
in the practitioner’s firm may testify: 
(1) If the testimony will relate solely to an 
uncontested matter. 
(2) If the testimony will relate solely to a 
matter of formality and there is no reason to believe 
that substantial evidence will be offered in opposition 
to the testimony. 
(3) If the testimony will relate solely to the 
nature and value of legal services rendered in the case 


 

by the practitioner or the practitioner’s firm to the client. 


(4) As to any matter, if refusal would work a 
substantial hardship on the client because of the distinctive 
value of the practitioner or the practitioner’s 
firm as counsel in the particular case. 

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.63 Withdrawal when the practitioner 
becomes a witness. 

(a) If, after undertaking employment in a proceeding 
in the Office, a practitioner learns or it is 
obvious that the practitioner or another practitioner in 
the practitioner’s firm ought to sign an affidavit to 
be filed in the Office or be called as a witness on 
behalf of a practitioner’s client, the practitioner shall 
withdraw from the conduct of the proceeding and the 
practitioner’s firm, if any, shall not continue representation 
in the proceeding, except that the practitioner 
may continue the representation and the practitioner 
or another practitioner in the practitioner’s firm may 
testify in the circumstances enumerated in paragraphs 
(1) through (4) of § 10.62(b). 
(b) If, after undertaking employment in a proceeding 
before the Office, a practitioner learns or it is 
obvious that the practitioner or another practitioner in 
the practitioner’s firm may be asked to sign an affidavit 
to be filed in the Office or be called as a witness 
other than on behalf of the practitioner’s client, the 
practitioner may continue the representation until it is 
apparent that the practitioner’s affidavit or testimony 
is or may be prejudicial to the practitioner’s client. 


[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.64 Avoiding acquisition of interest in litigation or proceeding before the Office. 

(a) A practitioner shall not acquire a proprietary 
interest in the subject matter of a proceeding before 
the Office which the practitioner is conducting for a 
client, except that the practitioner may: 
(1) Acquire a lien granted by law to secure 
the practitioner’s fee or expenses; or 
(2) Contract with a client for a reasonable 
contingent fee; or 


(3) In a patent case, take an interest in the 
patent as part or all of his or her fee. 
(b) While representing a client in connection 
with a contemplated or pending proceeding before the 
Office, a practitioner shall not advance or guarantee 
financial assistance to a client, except that a practitioner 
may advance or guarantee the expenses of going 
forward in a proceeding before the Office including 
fees required by law to be paid to the Office, expenses 
of investigation, expenses of medical examination, 
and costs of obtaining and presenting evidence, provided 
the client remains ultimately liable for such 
expenses. A practitioner may, however, advance any 
fee required to prevent or remedy an abandonment of 
a client’s application by reason of an act or omission 
attributable to the practitioner and not to the client, 
whether or not the client is ultimately liable for such 
fee. 


[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.65 Limiting business relations with a client. 

A practitioner shall not enter into a business transaction 
with a client if they have differing interests 
therein and if the client expects the practitioner to 
exercise professional judgment therein for the protection 
of the client, unless the client has consented after 
full disclosure. 

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.66 Refusing to accept or continue employment if the interests of another client may 
impair the independent professional 
judgment of the practitioner. 

(a) A practitioner shall decline proffered 
employment if the exercise of the practitioner’s independent 
professional judgment in behalf of a client 
will be or is likely to be adversely affected by the 
acceptance of the proffered employment, or if it 
would be likely to involve the practitioner in representing 
differing interests, except to the extent permitted 
under paragraph (c) of this section. 
(b) A practitioner shall not continue multiple 
employment if the exercise of the practitioner’s independent 
professional judgment in behalf of a client 
will be or is likely to be adversely affected by the 


 

practitioner’s representation of another client, or if it 
would be likely to involve the practitioner in representing 
differing interests, except to the extent permitted 
under paragraph (c) of this section. 

(c) In the situations covered by paragraphs (a) 
and (b) of this section, a practitioner may represent 
multiple clients if it is obvious that the practitioner 
can adequately represent the interest of each and if 
each consents to the representation after full disclosure 
of the possible effect of such representation on 
the exercise of the practitioner’s independent professional 
judgment on behalf of each. 
(d) If a practitioner is required to decline 
employment or to withdraw from employment under 
a Disciplinary Rule, no partner, or associate, or any 
other practitioner affiliated with the practitioner or the 
practitioner’s firm, may accept or continue such 
employment unless otherwise ordered by the Director 
or Commissioner. 


[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.67 Settling similar claims of clients. 

A practitioner who represents two or more clients 
shall not make or participate in the making of an 
aggregate settlement of the claims of or against the 
practitioner’s clients, unless each client has consented 
to the settlement after being advised of the existence 
and nature of all the claims involved in the proposed 
settlement, of the total amount of the settlement, and 
of the participation of each person in the settlement. 

[Added 50 FR 5179, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.68 Avoiding influence by others than the client. 

(a) Except with the consent of the practitioner’s 
client after full disclosure, a practitioner shall not: 
(1) Accept compensation from one other than 
the practitioner’s client for the practitioner’s legal services 
to or for the client. 
(2) Accept from one other than the practitioner’s 
client any thing of value related to the practitioner’s 
representation of or the practitioner’s 
employment by the client. 
(b) A practitioner shall not permit a person who 
recommends, employs, or pays the practitioner to ren


der legal services for another, to direct or regulate the 
practitioner’s professional judgment in rendering such 
legal services. 

(c) A practitioner shall not practice with or in 
the form of a professional corporation or association 
authorized to practice law for a profit, if a non-practitioner 
has the right to direct or control the professional 
judgment of a practitioner. 

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.69 - 10.75 [Reserved] 

§ 10.76 Canon 6. 

A practitioner should represent a client competently. 


[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.77 Failing to act competently. 

A practitioner shall not: 

(a) Handle a legal matter which the practitioner 
knows or should know that the practitioner is not 
competent to handle, without associating with the 
practitioner another practitioner who is competent to 
handle it. 
(b) Handle a legal matter without preparation 
adequate in the circumstances. 
(c) Neglect a legal matter entrusted to the practitioner. 


[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.78 Limiting liability to client. 

A practitioner shall not attempt to exonerate himself 
or herself from, or limit his or her liability to, a 
client for his or her personal malpractice. 

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.79 - 10.82 [Reserved] 

§ 10.83 Canon 7. 

A practitioner should represent a client zealously 
within the bounds of the law. 

 

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.84 Representing a client zealously. 

(a) A practitioner shall not intentionally: 

(1) Fail to seek the lawful objectives of a client 
through reasonable available means permitted by 
law and the Disciplinary Rules, except as provided by 
paragraph (b) of this section. A practitioner does not 
violate the provisions of this section, however, by 
acceding to reasonable requests of opposing counsel 
which do not prejudice the rights of the client, by 
being punctual in fulfilling all professional commitments, 
by avoiding offensive tactics, or by treating 
with courtesy and consideration all persons involved 
in the legal process. 
(2) Fail to carry out a contract of employment 
entered into with a client for professional services, 
but a practitioner may withdraw as permitted 
under §§ 10.40, 10.63, and 10.66. 
(3) Prejudice or damage a client during the 
course of a professional relationship, except as 
required under this part. 
(b) In representation of a client, a practitioner 
may: 
(1) Where permissible, exercise professional 
judgment to waive or fail to assert a right or position 
of the client. 
(2) Refuse to aid or participate in conduct 
that the practitioner believes to be unlawful, even 
though there is some support for an argument that the 
conduct is legal. 


[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.85 Representing a client within the bounds 
of the law. 

(a) In representation of a client, a practitioner 
shall not: 
(1) Initiate or defend any proceeding before 
the Office, assert a position, conduct a defense, delay 
a trial or proceeding before the Office, or take other 
action on behalf of the practitioner’s client when the 
practitioner knows or when it is obvious that such 
action would serve merely to harass or maliciously 
injure another. 


(2) Knowingly advance a claim or defense 
that is unwarranted under existing law, except that a 
practitioner may advance such claim or defense if it 
can be supported by good faith argument for an extension, 
modification, or reversal of existing law. 
(3) Conceal or knowingly fail to disclose that 
which the practitioner is required by law to reveal. 
(4) Knowingly use perjured testimony or 
false evidence. 
(5) Knowingly make a false statement of law 
or fact. 
(6) Participate in the creation or preservation 
of evidence when the practitioner knows or it is obvious 
that the evidence is false. 
(7) Counsel or assist a client in conduct that 
the practitioner knows to be illegal or fraudulent. 
(8) Knowingly engage in other illegal conduct 
or conduct contrary to a Disciplinary Rule. 
(b) A practitioner who receives information 
clearly establishing that: 
(1) A client has, in the course of the representation, 
perpetrated a fraud upon a person or tribunal 
shall promptly call upon the client to rectify the 
same, and if the client refuses or is unable to do so the 
practitioner shall reveal the fraud to the affected person 
or tribunal. 
(2) A person other than a client has perpetrated 
a fraud upon a tribunal shall promptly reveal 
the fraud to the tribunal. 


[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.86 [Reserved] 

§ 10.87 Communicating with one of adverse 
interest. 

During the course of representation of a client, a 
practitioner shall not: 

(a) Communicate or cause another to communicate 
on the subject of the representation with a party 
the practitioner knows to be represented by another 
practitioner in that matter unless the practitioner has 
the prior consent of the other practitioner representing 
such other party or is authorized by law to do so. It is 
not improper, however, for a practitioner to encourage 
a client to meet with an opposing party for settlement 
discussions. 

 

(b) Give advice to a person who is not represented 
by a practitioner other than the advice to secure 
counsel, if the interests of such person are or have a 
reasonable possibility of being in conflict with the 
interests of the practitioner’s client. 

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.88 Threatening criminal prosecution. 

A practitioner shall not present, participate in presenting, 
or threaten to present criminal charges solely 
to obtain an advantage in any prospective or pending 
proceeding before the Office. 

[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.89 Conduct in proceedings. 

(a) A practitioner shall not disregard or advise a 
client to disregard any provision of this Subchapter or 
a decision of the Office made in the course of a proceeding 
before the Office, but the practitioner may 
take appropriate steps in good faith to test the validity 
of such provision or decision. 
(b) In presenting a matter to the Office, a practitioner 
shall disclose: 
(1) Controlling legal authority known to the 
practitioner to be directly adverse to the position of 
the client and which is not disclosed by opposing 
counsel or an employee of the Office. 
(2) Unless privileged or irrelevant, the identities 
of the client the practitioner represents and of the 
persons who employed the practitioner. 
(c) In appearing in a professional capacity 
before a tribunal, a practitioner shall not: 
(1) State or allude to any matter that the practitioner 
has no reasonable basis to believe is relevant 
to the case or that will not be supported by admissible 
evidence. 
(2) Ask any question that the practitioner has 
no reasonable basis to believe is relevant to the case 
and that is intended to degrade a witness or other person. 
(3) Assert the practitioner’s personal knowledge 
of the facts in issue, except when testifying as a 
witness. 
(4) Assert the practitioner’s personal opinion 
as to the justness of a cause, as to the credibility of a 


witness, as to the culpability of a civil litigant, or as to 
the guilt or innocence of an accused; but the practitioner 
may argue, on the practitioner’s analysis of the 
evidence, for any position or conclusion with respect 
to the matters stated herein. 

(5) Engage in undignified or discourteous 
conduct before the Office (see § 1.3 of the subchapter). 
(6) Intentionally or habitually violate any 
provision of this subchapter or established rule of evidence. 


[Added 50 FR 5180, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.90 - 10.91 [Reserved] 

§ 10.92 Contact with witnesses. 

(a) A practitioner shall not suppress any evidence 
that the practitioner or the practitioner’s client 
has a legal obligation to reveal or produce. 
(b) A practitioner shall not advise or cause a 
person to be secreted or to leave the jurisdiction of a 
tribunal for the purpose of making the person unavailable 
as a witness therein. 
(c) A practitioner shall not pay, offer to pay, 
or acquiesce in payment of compensation to a 
witness contingent upon the content of the witness’ 
affidavit, testimony or the outcome of the case. But a 
practitioner may advance, guarantee, or acquiesce in 
the payment of: 
(1) Expenses reasonably incurred by a witness 
in attending, testifying, or making an affidavit. 
(2) Reasonable compensation to a witness for 
the witness’ loss of time in attending, testifying, or 
making an affidavit. 
(3) A reasonable fee for the professional services 
of an expert witness. 


[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.93 Contact with officials. 

(a) A practitioner shall not give or lend anything 
of value to a judge, official, or employee of a tribunal 
under circumstances which might give the 
appearance that the gift or loan is made to influence 
official action. 

 

(b) In an adversary proceeding, including any 
inter partes proceeding before the Office, a practitioner 
shall not communicate, or cause another to communicate, 
as to the merits of the cause with a judge, 
official, or Office employee before whom the proceeding 
is pending, except: 
(1) In the course of official proceedings in 
the cause. 
(2) In writing if the practitioner promptly 
delivers a copy of the writing to opposing counsel or 
to the adverse party if the adverse party is not represented 
by a practitioner. 
(3) Orally upon adequate notice to opposing 
counsel or to the adverse party if the adverse party is 
not represented by a practitioner. 


(4) As otherwise authorized by law. 

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.94 - 10.99 [Reserved] 

§ 10.100 Canon 8. 

A practitioner should assist in improving the legal 
system. 

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.101 Action as a public official. 

(a) A practitioner who holds public office shall 
not: 
(1) Use the practitioner’s public position to 
obtain, or attempt to obtain, a special advantage in 
legislative matters for the practitioner or for a client 
under circumstances where the practitioner knows or 
it is obvious that such action is not in the public interest. 
(2) Use the practitioner’s public position to 
influence, or attempt to influence, a tribunal to act in 
favor of the practitioner or of a client. 
(3) Accept any thing of value from any person 
when the practitioner knows or it is obvious that 
the offer is for the purpose of influencing the practitioner’s 
action as a public official. 
(b) A practitioner who is an officer or employee 
of the United States shall not practice before the 


Office in patent cases except as provided in § 10.10(c) 
and (d). 

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985; para. (b) amended, 54 FR 6520, Feb. 13, 1989] 

§ 10.102 Statements concerning officials. 

(a) A practitioner shall not knowingly make 
false statements of fact concerning the qualifications 
of a candidate for election or appointment to a judicial 
office or to a position in the Office. 
(b) A practitioner shall not knowingly make 
false accusations against a judge, other adjudicatory 
officer, or employee of the Office. 


[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.103 Practitioner candidate for judicial office. 

A practitioner who is a candidate for judicial office 
shall comply with applicable provisions of law. 

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.104 - 10.109 [Reserved] 

§ 10.110 Canon 9. 

A practitioner should avoid even the appearance of 
professional impropriety. 

[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.111 Avoiding even the appearance of impropriety. 

(a) A practitioner shall not accept private 
employment in a matter upon the merits of which he 
or she has acted in a judicial capacity. 
(b) A practitioner shall not accept private 
employment in a matter in which he or she had personal 
responsibility while a public employee. 
(c) A practitioner shall not state or imply that 
the practitioner is able to influence improperly or 
upon irrelevant grounds any tribunal, legislative body, 
or public official. 


[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

 

§ 10.112 Preserving identity of funds and property of client. 

(a) All funds of clients paid to a practitioner or 
a practitioner’s firm, other than advances for costs and 
expenses, shall be deposited in one or more identifiable 
bank accounts maintained in the United States or, 
in the case of a practitioner having an office in a foreign 
country or registered under § 11.6(c), in the 
United States or the foreign country. 
(b) No funds belonging to the practitioner or the 
practitioner’s firm shall be deposited in the bank 
accounts required by paragraph (a) of this section 
except as follows: 
(1) Funds reasonably sufficient to pay bank 
charges may be deposited therein. 
(2) Funds belonging in part to a client and in 
part presently or potentially to the practitioner or the 
practitioner’s firm must be deposited therein, but the 
portion belonging to the practitioner or the practitioner’s 
firm may be withdrawn when due unless the 
right of the practitioner or the practitioner’s firm to 
receive it is disputed by the client, in which event the 
disputed portion shall not be withdrawn until the dispute 
is finally resolved. 
(c) A practitioner shall: 


(1) Promptly notify a client of the receipt of 
the client’s funds, securities, or other properties. 
(2) Identify and label securities and properties 
of a client promptly upon receipt and place them 
in a safe deposit box or other place of safekeeping as 
soon as practicable. 
(3) Maintain complete records of all funds, 
securities, and other properties of a client coming into 
the possession of the practitioner and render appropriate 
accounts to the client regarding the funds, securities, 
or other properties. 
(4) Promptly pay or deliver to the client as 
requested by a client the funds, securities, or other 
properties in the possession of the practitioner which 
the client is entitled to receive. 


[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985; para. (a) revised, 70 FR 56119, Sept. 26, 2005, effective 
Nov. 25, 2005] 

§ 10.113 - 10.129 [Reserved] 

INVESTIGATIONS AND DISCIPLINARY 
PROCEEDINGS


§ 10.130 Reprimand, suspension or exclusion. 

(a) The Commissioner may, after notice and 
opportunity for a hearing, (1) reprimand or (2) suspend 
or exclude, either generally or in any particular 
case, any individual, attorney, or agent shown to be 
incompetent or disreputable, who is guilty of gross 
misconduct, or who violates a Disciplinary Rule. 
(b) Petitions to disqualify a practitioner in ex 
parte or inter partes cases in the Office are not governed 
by §§ 10.130 through 10.170 and will be handled 
on a case-by-case basis under such conditions as 
the Commissioner deems appropriate. 


[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.131 Investigations. 

(a) The Director is authorized to investigate 
possible violations of Disciplinary Rules by practitioners. 
See § 10.2(b)(2). 
(b) Practitioners shall report and reveal to the 
Director any knowledge or evidence required by § 


10.24. A practitioner shall cooperate with the Director 
in connection with any investigation under paragraph 

(a) of this section and with officials of the Office in 
connection with any disciplinary proceeding instituted 
under § 10.132(b). 
(c) Any nonpractitioner possessing knowledge 
or information concerning a violation of a Disciplinary 
Rule by a practitioner may report the violation to 
the Director. The Director may require that the report 
be presented in the form of an affidavit. 


[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.132 Initiating a disciplinary proceeding; reference to an administrative law judge. 

(a) If after conducting an investigation 
under § 10.131(a) the Director is of the opinion that a 
practitioner has violated a Disciplinary Rule, the 
Director shall, after complying where necessary with 
the provisions of 5 U.S.C. 558(c), call a meeting of 
the Committee on Discipline. The Committee on Discipline 
shall then determine as specified in § 10.4(b) 

 

whether a disciplinary proceeding shall be instituted 
under paragraph (b) of this section. 

(b) If the Committee on Discipline determines 
that probable cause exists to believe that a practitioner 
has violated a Disciplinary Rule, the Director shall 
institute a disciplinary proceeding by filing a complaint 
under § 10.134. The complaint shall be filed in 
the Office of the Director. A disciplinary proceeding 
may result in: 
(1) A reprimand, or 


(2) Suspension or exclusion of a practitioner 
from practice before the Office. 
(c) Upon the filing of a complaint under 
§ 10.134, the Commissioner will refer the disciplinary 
proceeding to an administrative law judge. 


[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.133 Conference between Director and practitioner; resignation. 

(a) General. The Director may confer with a 
practitioner concerning possible violations by the 
practitioner of a Disciplinary Rule whether or not a 
disciplinary proceeding has been instituted. 
(b) Resignation. Any practitioner who is the 
subject of an investigation under § 10.131 or against 
whom a complaint has been filed under § 10.134 may 
resign from practice before the Office only by submitting 
with the Director an affidavit stating his or her 
desire to resign. 
(c) If filed prior to the date set by the administrative 
law judge for a hearing, the affidavit shall state 
that: 
(1) The resignation is freely and voluntarily 
proffered; 
(2) The practitioner is not acting under 
duress or coercion from the Office; 
(3) The practitioner is fully aware of the 
implications of filing the resignation; 
(4) The practitioner is aware (i) of a pending 
investigation or (ii) of charges arising from the complaint 
alleging that he or she is guilty of a violation of 
the Patent and Trademark Office Code of Professional 
Responsibility, the nature of which shall be set forth 
by the practitioner to the satisfaction of the Director; 
(5) The practitioner acknowledges that, if 
and when he or she applies for reinstatement under 


§ 10.160, the Director will conclusively presume, for 
the limited purpose of determining the application for 
reinstatement, that: 

(i) The facts upon which the complaint is 
based are true and 
(ii) The practitioner could not have successfully 
defended himself or herself against (A) 
charges predicated on the violation under investigation 
or (B) charges set out in the complaint filed 
against the practitioner. 
(d) If filed on or after the date set by the administrative 
law judge for a hearing, the affidavit shall 
make the statements required by paragraphs (b) (1) 
through (4) of this section and shall state that: 
(1) The practitioner acknowledges the facts 
upon which the complaint is based are true; and 
(2) The resignation is being submitted 
because the practitioner could not successfully defend 
himself or herself against (i) charges predicated on the 
violation under investigation or (ii) charges set out in 
the complaint. 
(e) When an affidavit under paragraphs (b) or 


(c) of this section is received while an investigation is 
pending, the Commissioner shall enter an order 
excluding the practitioner “on consent.” When an affidavit 
under paragraphs (b) or (c) of this section is 
received after a complaint under § 10.134 has been 
filed, the Director shall notify the administrative law 
judge. The administrative law judge shall enter an 
order transferring the disciplinary proceeding to the 
Commissioner and the Commissioner shall enter an 
order excluding the practitioner “on consent.” 
(f) Any practitioner who resigns from practice 
before the Office under this section and who intends 
to reapply for admission to practice before the Office 
must comply with the provisions of § 10.158. 
(g) Settlement. Before or after a complaint is 
filed under § 10.134, a settlement conference may 
occur between the Director and a practitioner for the 
purpose of settling any disciplinary matter. If an offer 
of settlement is made by the Director or the practitioner 
and is not accepted by the other, no reference to 
the offer of settlement or its refusal shall be admissible 
in evidence in the disciplinary proceeding unless 
both the Director and the practitioner agree in writing. 


[Added 50 FR 5181, Feb. 6, 1985, effective Mar. 8, 
1985] 

 

§ 10.134 Complaint. 

(a) A complaint instituting a disciplinary proceeding 
shall: 
(1) Name the practitioner, who may then be 
referred to as the “respondent.” 
(2) Give a plain and concise description of 
the alleged violations of the Disciplinary Rules by the 
practitioner. 
(3) State the place and time for filing an 
answer by the respondent. 
(4) State that a decision by default may be 
entered against the respondent if an answer is not 
timely filed. 
(5) Be signed by the Director. 


(b) A complaint will be deemed sufficient if it 
fairly informs the respondent of any violation of the 
Disciplinary Rules which form the basis for the disciplinary 
proceeding so that the respondent is able to 
adequately prepare a defense. 


[Added 50 FR 5182, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.135 Service of complaint. 

(a) A complaint may be served on a respondent 
in any of the following methods: 
(1) By handing a copy of the complaint personally 
to the respondent, in which case the individual 
handing the complaint to the respondent shall file an 
affidavit with the Director indicating the time and 
place the complaint was handed to the respondent. 
(2) By mailing a copy of the complaint by 
“Express Mail” or first-class mail to: 
(i) A registered practitioner at the address 
for which separate notice was last received by the 
Director or 
(ii) A nonregistered practitioner at the last 
address for the respondent known to the Director. 
(3) By any method mutually agreeable to the 
Director and the respondent. 
(b) If a complaint served by mail under paragraph 
(a)(2) of this section is returned by the U.S. 
Postal Service, the Director shall mail a second copy 
of the complaint to the respondent. If the second copy 
of the complaint is also returned by the U.S. Postal 
Service, the Director shall serve the respondent by 
publishing an appropriate notice in the Official 
Gazette for four consecutive weeks, in which case the 


time for answer shall be at least thirty days from the 
fourth publication of the notice. 

(c) If a respondent is a registered practitioner, 
the Director may serve simultaneously with the complaint 
a letter under § 10.11(b). The Director may 
require the respondent to answer the § 10.11(b) letter 
within a period of not less than 15 days. An answer to 
the § 10.11(b) letter shall constitute proof of service. 
If the respondent fails to answer the § 10.11(b) letter, 
his or her name will be removed from the register as 
provided by § 10.11(b). 
(d) If the respondent is represented by an attorney 
under § 10.140(a), a copy of the complaint shall 
also be served on the attorney. 


[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.136 Answer to complaint. 

(a) Time for answer. An answer to a complaint 
shall be filed within a time set in the complaint which 
shall be not less than thirty days. 
(b) With whom filed. The answer shall be filed 
in writing with the administrative law judge. The time 
for filing an answer may be extended once for a 
period of no more than thirty days by the administrative 
law judge upon a showing of good cause provided 
a motion requesting an extension of time is filed 
within thirty days after the date the complaint is filed 
by the Director. A copy of the answer shall be served 
on the Director. 
(c) Content. The respondent shall include in the 
answer a statement of the facts which constitute the 
grounds of defense and shall specifically admit or 
deny each allegation set forth in the complaint. The 
respondent shall not deny a material allegation in the 
complaint which the respondent knows to be true or 
state that respondent is without sufficient information 
to form a belief as to the truth of an allegation when in 
fact the respondent possesses that information. The 
respondent shall also state affirmatively special matters 
of defense. 
(d) Failure to deny allegations in complaint. 
Every allegation in the complaint which is not 
denied by a respondent in the answer is deemed to 
be admitted and may be considered proven. No further 
evidence in respect of that allegation need 
be received by the administrative law judge at any 


 

hearing. Failure to timely file an answer will constitute 
an admission of the allegations in the complaint. 

(e) Reply by the Director. No reply to an 
answer is required by the Director and any affirmative 
defense in the answer shall be deemed to be denied. 
The Director may, however, file a reply if he or she 
chooses or if ordered by the administrative law judge. 

[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 
1985; amended 50 FR 25073, June 17, 1985] 

§ 10.137 Supplemental complaint. 

False statements in an answer may be made the 
basis of a supplemental complaint. 

[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.138 Contested case. 

Upon the filing of an answer by the respondent, a 
disciplinary proceeding shall be regarded as a contested 
case within the meaning of 35 U.S.C. 24. Evidence 
obtained by a subpoena issued under 35 U.S.C. 
24 shall not be admitted into the record or considered 
unless leave to proceed under 35 U.S.C. 24 was previously 
authorized by the administrative law judge. 

[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.139 Administrative law judge; appointment; 

responsibilities; review of interlocutory 

orders; stays. 

(a) Appointment. An administrative law judge, 
appointed under 5 U.S.C. 3105, shall conduct disciplinary 
proceedings as provided by this part. 
(b) Responsibilities. The administrative law 
judge shall have authority to: 
(1) Administer oaths and affirmations; 


(2) Make rulings upon motions and other 
requests; 
(3) Rule upon offers of proof, receive relevant 
evidence, and examine witnesses; 
(4) Authorize the taking of a deposition of a 
witness in lieu of personal appearance of the witness 
before the administrative law judge; 


(5) Determine the time and place of any hearing 
and regulate its course and conduct; 
(6) Hold or provide for the holding of conferences 
to settle or simplify the issues; 
(7) Receive and consider oral or written 
arguments on facts or law; 
(8) Adopt procedures and modify procedures 
from time to time as occasion requires for the 
orderly disposition of proceedings; 
(9) Make initial decisions under § 10.154; 
and 
(10) Perform acts and take measures as necessary 
to promote the efficient and timely conduct of 
any disciplinary proceeding. 
(c) Time for making initial decision. The 
administrative law judge shall set times and exercise 
control over a disciplinary proceeding such that an 
initial decision under § 10.154 is normally issued 
within six months of the date a complaint is filed. The 
administrative law judge may, however, issue an initial 
decision more than six months after a complaint is 
filed if in his or her opinion there exist unusual circumstances 
which preclude issuance of an initial decision 
within six months of the filing of the complaint. 
(d) Review of interlocutory orders. An interlocutory 
order of an administrative law judge will not be 
reviewed by the Commissioner except: 
(1) When the administrative law judge shall 
be of the opinion (i) that the interlocutory order 
involves a controlling question of procedure or law as 
to which there is a substantial ground for a difference 
of opinion and (ii) that an immediate decision by the 
Commissioner may materially advance the ultimate 
termination of the disciplinary proceeding or 
(2) In an extraordinary situation where justice 
requires review. 
(e) Stays pending review of interlocutory order. 
If the Director or a respondent seeks review of an 
interlocutory order of an administrative law judge 
under paragraph (b)(2) of this section, any time period 
set for taking action by the administrative law judge 
shall not be stayed unless ordered by the Commissioner 
or the administrative law judge. 


[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 
1985; amended 50 FR 25073, June 17, 1985] 

 

§ 10.140 Representative for Director or respon-§ 10.142 Service of papers. 
dent. (a) All papers other than a complaint shall be 

(a) A respondent may be represented before the 
Office in connection with an investigation or disciplinary 
proceeding by an attorney. The attorney shall 
file a written declaration that he or she is an attorney 
within the meaning of § 10.1(c) and shall state: 
(1) The address to which the attorney wants 
correspondence related to the investigation or disciplinary 
proceeding sent and 
(2) A telephone number where the attorney 
may be reached during normal business hours. 
(b) The Commissioner shall designate at least 
two associate solicitors in the Office of the Solicitor to 
act as representatives for the Director in disciplinary 
proceedings. In prosecuting disciplinary proceedings, 
the designated associate solicitors shall not involve 
the Solicitor or the Deputy Solicitor. The Solicitor and 
the Deputy Solicitor shall remain insulated from the 
investigation and prosecution of all disciplinary proceedings 
in order that they shall be available as counsel 
to the Commissioner in deciding disciplinary 
proceedings. 


[Added 50 FR 5183, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.141 Filing of papers. 

(a) The provisions of § 1.8 of this subchapter 
do not apply to disciplinary proceedings. 
(b) All papers filed after the complaint and 
prior to entry of an initial decision by the administrative 
law judge shall be filed with the administrative 
law judge at an address or place designated by the 
administrative law judge. All papers filed after entry 
of an initial decision by the administrative law judge 
shall be filed with the Director. The Director shall 
promptly forward to the Commissioner any paper 
which requires action under this part by the Commissioner. 
(c) The administrative law judge or the Director 
may provide for filing papers and other matters by 
hand or by “Express Mail.” 


[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 
1985] 

served on a respondent represented by an attorney by: 

(1) Delivering a copy of the paper to the 
office of the attorney; or 
(2) Mailing a copy of the paper by first-class 
mail or “Express Mail” to the attorney at the address 
provided by the attorney under § 10.140(a)(1); or 
(3) Any other method mutually agreeable to 
the attorney and a representative for the Director. 
(b) All papers other than a complaint shall be 
served on a respondent who is not represented by an 
attorney by: 
(1) Delivering a copy of the paper to the 
respondent; or 
(2) Mailing a copy of the paper by first-class 
mail or “Express Mail” to the respondent at the 
address to which a complaint may be served or such 
other address as may be designated in writing by the 
respondent; or 
(3) Any other method mutually agreeable to 
the respondent and a representative of the Director. 
(c) A respondent shall serve on the representative 
for the Director one copy of each paper filed with 
the administrative law judge or the Director. A paper 
may be served on the representative for the Director 
by: 
(1) Delivering a copy of the paper to the representative; 
or 
(2) Mailing a copy of the paper by first-class 
mail or “Express Mail” to an address designated in 
writing by the representative; or 
(3) Any other method mutually agreeable to 
the respondent and the representative. 
(d) Each paper filed in a disciplinary proceeding 
shall contain therein a certificate of service indicating: 
(1) The date of which service was made and 
(2) The method by which service was made. 




(e) The administrative law judge or the Commissioner 
may require that a paper be served by hand 
or by “Express Mail.” 
(f) Service by mail is completed when the 
paper mailed in the United States is placed into the 
custody of the U.S. Postal Service. 


[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 
1985] 

 

§ 10.143 Motions. 

Motions may be filed with the administrative law 
judge. The administrative law judge will determine on 
a case-by-case basis the time period for response to a 
motion and whether replies to responses will be 
authorized. No motion shall be filed with the administrative 
law judge unless such motion is supported by a 
written statement by the moving party that the moving 
party or attorney for the moving party has conferred 
with the opposing party or attorney for the opposing 
party in an effort in good faith to resolve by agreement 
the issues raised by the motion and has been 
unable to reach agreement. If issues raised by a 
motion are resolved by the parties prior to a decision 
on the motion by the administrative law judge, the 
parties shall promptly notify the administrative law 
judge. 

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.144 Hearings. 

(a) The administrative law judge shall preside 
at hearings in disciplinary proceedings. Hearings will 
be stenographically recorded and transcribed and the 
testimony of witnesses will be received under oath or 
affirmation. The administrative law judge shall conduct 
hearings in accordance with 5 U.S.C. 556. A 
copy of the transcript of the hearing shall become part 
of the record. A copy of the transcript shall be provided 
to the Director and the respondent at the 
expense of the Office. 
(b) If the respondent to a disciplinary proceeding 
fails to appear at the hearing after a notice of hearing 
has been given by the administrative law judge, 
the administrative law judge may deem the respondent 
to have waived the right to a hearing and may 
proceed with the hearing in the absence of the respondent. 
(c) A hearing under this section will not be 
open to the public except that the Director may grant a 
request by a respondent to open his or her hearing to 
the public and make the record of the disciplinary proceeding 
available for public inspection, provided, 
Agreement is reached in advance to exclude from 
public disclosure information which is privileged or 
confidential under applicable laws or regulations. If a 
disciplinary proceeding results in disciplinary action 
against a practitioner, and subject to § 10.159(c), the 


record of the entire disciplinary proceeding, including 
any settlement agreement, will be available for public 
inspection. 

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.145 Proof; variance; amendment of pleadings. 

In case of a variance between the evidence and the 
allegations in a complaint, answer, or reply, if any, the 
administrative law judge may order or authorize 
amendment of the complaint, answer, or reply to conform 
to the evidence. Any party who would otherwise 
be prejudiced by the amendment will be given reasonable 
opportunity to meet the allegations in the complaint, 
answer, or reply, as amended, and the 
administrative law judge shall make findings on any 
issue presented by the complaint, answer, or reply as 
amended. 

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.146 - 10.148 [Reserved] 

§ 10.149 Burden of proof. 

In a disciplinary proceeding, the Director shall have 
the burden of proving his or her case by clear and convincing 
evidence and a respondent shall have the burden 
of proving any affirmative defense by clear and 
convincing evidence. 

[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.150 Evidence. 

(a) Rules of evidence. The rules of evidence 
prevailing in courts of law and equity are not controlling 
in hearings in disciplinary proceedings. However, 
the administrative law judge shall exclude evidence 
which is irrelevant, immaterial, or unduly repetitious. 
(b) Depositions. Depositions of witnesses taken 
pursuant to § 10.151 may be admitted as evidence. 
(c) Government documents. Official documents, 
records, and papers of the Office are admissible 
without extrinsic evidence of authenticity. These 
documents, records, and papers may be evidenced by 


 

a copy certified as correct by an employee of the 
Office. 

(d) Exhibits. If any document, record, or other 
paper is introduced in evidence as an exhibit, the 
administrative law judge may authorize the withdrawal 
of the exhibit subject to any conditions the 
administrative law judge deems appropriate. 
(e) Objections. Objections to evidence will be 
in short form, stating the grounds of objection. Objections 
and rulings on objections will be a part of the 
record. No exception to the ruling is necessary to preserve 
the rights of the parties. 


[Added 50 FR 5184, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.151 Depositions. 

(a) Depositions for use at the hearing in lieu of 
personal appearance of a witness before the administrative 
law judge may be taken by respondent or the 
Director upon a showing of good cause and with the 
approval of, and under such conditions as may be 
deemed appropriate by, the administrative law judge. 
Depositions may be taken upon oral or written questions, 
upon not less than ten days written notice to the 
other party, before any officer authorized to administer 
an oath or affirmation in the place where the deposition 
is to be taken. The requirement of ten days 
notice may be waived by the parties and depositions 
may then be taken of a witness at a time and place 
mutually agreed to by the parties. When a deposition 
is taken upon written questions, copies of the written 
questions will be served upon the other party with the 
notice and copies of any written cross-questions will 
be served by hand or “Express Mail” not less than five 
days before the date of the taking of the deposition 
unless the parties mutually agree otherwise. A party 
on whose behalf a deposition is taken shall file a copy 
of a transcript of the deposition signed by a court 
reporter with the administrative law judge and shall 
serve one copy upon the opposing party. Expenses for 
a court reporter and preparing, serving, and filing depositions 
shall be borne by the party at whose instance 
the deposition is taken. 
(b) When the Director and the respondent agree 
in writing, a deposition of any witness who will 
appear voluntarily may be taken under such terms and 
conditions as may be mutually agreeable to the Director 
and the respondent. The deposition shall not be 


filed with the administrative law judge and may not 
be admitted in evidence before the administrative law 
judge unless he or she orders the deposition admitted 
in evidence. The admissibility of the deposition shall 
lie within the discretion of the administrative law 
judge who may reject the deposition on any reasonable 
basis including the fact that demeanor is involved 
and that the witness should have been called to appear 
personally before the administrative law judge. 

[Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.152 Discovery. 

Discovery shall not be authorized except as follows: 


(a) After an answer is filed under § 10.136 and 
when a party establishes in a clear and convincing 
manner that discovery is necessary and relevant, the 
administrative law judge, under such conditions as he 
or she deems appropriate, may order an opposing 
party to: 
(1) Answer a reasonable number of written 
requests for admission or interrogatories; 
(2) Produce for inspection and copying a reasonable 
number of documents; and 
(3) Produce for inspection a reasonable number 
of things other than documents. 
(b) Discovery shall not be authorized under 
paragraph (a) of this section of any matter which: 
(1) Will be used by another party solely for 
impeachment or cross-examination; 
(2) Is not available to the party under 
35 U.S.C. § 122; 
(3) Relates to any disciplinary proceeding 
commenced in the Patent and Trademark Office prior 
to March 8, 1985; 
(4) Relates to experts except as the administrative 
law judge may require under paragraph (e) of 
this section. 
(5) Is privileged; or 


(6) Relates to mental impressions, conclusions, 
opinions, or legal theories of any attorney or 
other representative of a party. 
(c) The administrative law judge may deny discovery 
requested under paragraph (a) of this section if 
the discovery sought: 
(1) Will unduly delay the disciplinary proceeding; 


 

(2) Will place an undue burden on the party 
required to produce the discovery sought; or 
(3) Is available (i) generally to the public, (ii) 
equally to the parties; or (iii) to the party seeking the 
discovery through another source. 
(d) Prior to authorizing discovery under paragraph 
(a) of this section, the administrative law judge 
shall require the party seeking discovery to file a 
motion (§ 10.143) and explain in detail for each 
request made how the discovery sought is necessary 
and relevant to an issue actually raised in the complaint 
or the answer. 
(e) The administrative law judge may require 
parties to file and serve, prior to any hearing, a pre-
hearing statement which contains: 
(1) A list (together with a copy) of all proposed 
exhibits to be used in connection with a party’s 
case-in-chief, 
(2) A list of proposed witnesses, 
(3) As to each proposed expert witness: 




(i) An identification of the field in which 
the individual will be qualified as an expert; 
(ii) A statement as to the subject matter on 
which the expert is expected to testify; and 


(iii) A statement of the substance of the 
facts and opinions to which the expert is expected to 
testify, 

(4) The identity of government employees 
who have investigated the case, and 
(5) Copies of memoranda reflecting respondent’s 
own statements to administrative representatives. 
(f) After a witness testifies for a party, if the 
opposing party requests, the party may be required to 
produce, prior to cross-examination, any written statement 
made by the witness. 


[Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.153 Proposed findings and conclusions; post-
hearing memorandum. 

Except in cases when the respondent has failed to 
answer the complaint, the administrative law judge, 
prior to making an initial decision, shall afford the 
parties a reasonable opportunity to submit proposed 
findings and conclusions and a post-hearing memorandum 
in support of the proposed findings and conclusions. 


[Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.154 Initial decision of administrative law 
judge. 

(a) The administrative law judge shall make an 
initial decision in the case. The decision will include 
(1) a statement of findings and conclusions, as well as 
the reasons or basis therefor with appropriate references 
to the record, upon all the material issues of 
fact, law, or discretion presented on the record, and 
(2) an order of suspension or exclusion from practice, 
an order of reprimand, or an order dismissing the 
complaint. The administrative law judge shall file the 
decision with the Director and shall transmit a copy to 
the representative of the Director and to the respondent. 
In the absence of an appeal to the Commissioner, 
the decision of the administrative law judge 
will, without further proceedings, become the decision 
of the Commissioner of Patents and Trademarks 
thirty (30) days from the date of the decision of the 
administrative law judge. 
(b) The initial decision of the administrative 
law judge shall explain the reason for any penalty or 
reprimand, suspension or exclusion. In determining 
any penalty, the following should normally be considered: 
(1) The public interest; 


(2) The seriousness of the violation of the 
Disciplinary Rule; 
(3) The deterrent effects deemed necessary; 
(4) The integrity of the legal profession; and 
(5) Any extenuating circumstances. 






[Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 
1985; amended 50 FR 25073, June 17, 1985] 

§ 10.155 Appeal to the Commissioner. 

(a) Within thirty (30) days from the date of the 
initial decision of the administrative law judge under 
§ 10.154, either party may appeal to the Commissioner. 
If an appeal is taken, the time for filing a cross-
appeal expires 14 days after the date of service of the 
appeal pursuant to § 10.142 or 30 days after the date 
of the initial decision of the administrative law judge, 
whichever is later. An appeal or cross-appeal by 
the respondent will be filed and served with the Director 
in duplicate and will include exceptions to the 

 

decisions of the administrative law judge and supporting 
reasons for those exceptions. If the Director files 
the appeal or cross-appeal, the Director shall serve on 
the other party a copy of the appeal or cross-appeal. 
The other party to an appeal or cross-appeal may file a 
reply brief. A respondent’s reply brief shall be filed 
and served in duplicate with the Director. The time for 
filing any reply brief expires thirty (30) days after the 
date of service pursuant to § 10.142 of an appeal, 
cross-appeal or copy thereof. If the Director files a 
reply brief, the Director shall serve on the other party 
a copy of the reply brief. Upon the filing of an appeal, 
cross-appeal, if any, and reply briefs, if any, the Director 
shall transmit the entire record to the Commissioner. 


(b) The appeal will be decided by the Commissioner 
on the record made before the administrative 
law judge. 
(c) The Commissioner may order reopening of 
a disciplinary proceeding in accordance with the principles 
which govern the granting of new trials. Any 
request to reopen a disciplinary proceeding on the 
basis of newly discovered evidence must demonstrate 
that the newly discovered evidence could not have 
been discovered by due diligence. 
(d) In the absence of an appeal by the Director, 
failure by the respondent to appeal under the provisions 
of this section shall be deemed to be both acceptance 
by the respondent of the initial decision and 
waiver by the respondent of the right to further 
administrative or judicial review. 


[Added 50 FR 5185, Feb. 6, 1985, effective Mar. 8, 
1985; para. (d) added, 54 FR 26026, June 21, 1989, effective 
Aug. 1, 1989; para. (a) amended, 60 FR 64125, Dec. 
14, 1995, effective Jan. 16, 1996] 

§ 10.156 Decision of the Commissioner. 

(a) An appeal from an initial decision of the 
administrative law judge shall be decided by the 
Commissioner. The Commissioner may affirm, 
reverse, or modify the initial decision or remand the 
matter to the administrative law judge for such further 
proceedings as the Commissioner may deem appropriate. 
Subject to paragraph (c) of this section, a decision 
by the Commissioner does not become a final 
agency action in a disciplinary proceeding until 
20 days after it is entered. In making a final decision, 
the Commissioner shall review the record or those 
portions of the record as may be cited by the parties in 
order to limit the issues. The Commissioner shall 
transmit a copy of the final decision to the Director 
and to the respondent. 

(b) A final decision of the Commissioner may 
dismiss a disciplinary proceeding, reprimand a practitioner, 
or may suspend or exclude the practitioner 
from practice before the Office. 
(c) A single request for reconsideration or modification 
of the Commissioner’s decision may be 
made by the respondent or the Director if filed within 
20 days from the date of entry of the decision. Such a 
request shall have the effect of staying the effective 
date of the decision. The decision by the Commissioner 
on the request is a final agency action in a disciplinary 
proceeding and is effective on its date of 
entry. 


[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 
1985; para. (a) amended and para. (c) added, 54 FR 6660, 
Feb. 14, 1989] 

§ 10.157 Review of Commissioner’s final decision. 

(a) Review of the Commissioner’s final decision 
in a disciplinary case may be had, subject to 
§ 10.155(d), by a petition filed in the United States 
District Court for the District of Columbia. See 
35 U.S.C. 32 and Local Rule 213 of the United States 
District Court for the District of Columbia. 
(b) The Commissioner may stay a final decision 
pending review of the Commissioner’s final decision. 


[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 
1985; amended 53 FR 13120, Apr. 21, 1988; para. (a) 
amended, 54 FR 26026, June 21, 1989, effective Aug. 1, 
1989] 

§ 10.158 Suspended or excluded practitioner. 

(a) A practitioner who is suspended or excluded 
from practice before the Office under § 10.156(b) 
shall not engage in unauthorized practice of patent, 
trademark and other non patent law before the Office. 
(b) Unless otherwise ordered by the Commissioner, 
any practitioner who is suspended or excluded 
from practice before the Office under § 10.156(b) 
shall: 
(1) Within 30 days of entry of the order of 
suspension or exclusion, notify all bars of which he or 
she is a member and all clients of the practitioner for 


 

whom he or she is handling matters before the Office 
in separate written communications of the suspension 
or exclusion and shall file a copy of each written communication 
with the Director. 

(2) Within 30 days of entry of the order of 
suspension or exclusion, surrender a client’s active 
Office case files to (i) the client or (ii) another practitioner 
designated by the client. 
(3) Not hold himself or herself out as authorized 
to practice law before the Office. 
(4) Promptly take any necessary and appropriate 
steps to remove from any telephone, legal, or 
other directory any advertisement, statement, or representation 
which would reasonably suggest that the 
practitioner is authorized to practice patent, trademark, 
or other non-patent law before the Office, and 
within 30 days of taking those steps, file with the 
Director an affidavit describing the precise nature of 
the steps taken. 
(5) Not advertise the practitioner’s availability 
or ability to perform or render legal services for 
any person having immediate, prospective, or pending 
business before the Office. 
(6) Not render legal advice or services to any 
person having immediate, prospective, or pending 
business before the Office as to that business. 
(7) Promptly take steps to change any sign 
identifying a practitioner’s or the practitioner’s firm’s 
office and the practitioner’s or the practitioner’s 
firm’s stationery to delete therefrom any advertisement, 
statement, or representation which would reasonably 
suggest that the practitioner is authorized to 
practice law before the Office. 
(8) Within 30 days, return to any client any 
unearned funds, including any unearned retainer fee, 
and any securities and property of the client. 
(c) A practitioner who is suspended or excluded 
from practice before the Office and who aids another 
practitioner in any way in the other practitioner’s 
practice of law before the Office, may, under the 
direct supervision of the other practitioner, act as a 
paralegal for the other practitioner or perform other 
services for the other practitioner which are normally 
performed by lay-persons, provided: 
(1) The practitioner who is suspended or 
excluded is: 


(i) A salaried employee of: 

(A) The other practitioner; 

(B) The other practitioner’s law firm; or 

(C) A client-employer who employs the 
other practitioner as a salaried employee; 
(2) The other practitioner assumes full professional 
responsibility to any client and the Office for 
any work performed by the suspended or excluded 
practitioner for the other practitioner; 
(3) The suspended or excluded practitioner, 
in connection with any immediate, prospective, or 
pending business before the Office, does not: 
(i) Communicate directly in writing, 
orally, or otherwise with a client of the other practitioner; 
(ii) Render any legal advice or any legal 
services to a client of the other practitioner; or 


(iii) Meet in person or in the presence of the 
other practitioner with: 

(A) Any Office official in connection 
with the prosecution of any patent, trademark, or 
other case; 
(B) Any client of the other practitioner, 
the other practitioner’s law firm, or the client-
employer of the other practitioner; 
(C) Any witness or potential witness 
which the other practitioner, the other practitioner’s 
law firm, or the other practitioner’s client-employer 
may or intends to call as a witness in any proceeding 
before the Office. The term “witness” includes individuals 
who will testify orally in a proceeding before, 
or sign an affidavit or any other document to be filed 
in, the Office. 
(d) When a suspended or excluded practitioner 
acts as a paralegal or performs services under paragraph 
(c) of this section, the suspended or excluded 
practitioner shall not thereafter be reinstated to practice 
before the Office unless: 
(1) The suspended or excluded practitioner 
shall have filed with the Director an affidavit which 
(i) explains in detail the precise nature of all paralegal 
or other services performed by the suspended or 
excluded practitioner and (ii) shows by clear and convincing 
evidence that the suspended or excluded practitioner 
has complied with the provisions of this 
section and all Disciplinary Rules, and 
(2) The other practitioner shall have filed 
with the Director a written statement which (i) shows 
that the other practitioner has read the affidavit 
required by subparagraph (d)(1) of this section and 


 

that the other practitioner believes every statement in 
the affidavit to be true and (ii) states why the other 
practitioner believes that the suspended or excluded 
practitioner has complied with paragraph (c) of this 
section. 

[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.159 Notice of suspension or exclusion. 

(a) Upon issuance of a final decision reprimanding 
a practitioner or suspending or excluding a 
practitioner from practice before the Office, the 
Director shall give notice of the final decision to 
appropriate employees of the Office and to interested 
departments, agencies, and courts of the United 
States. The Director shall also give notice to appropriate 
authorities of any State in which a practitioner is 
known to be a member of the bar and any appropriate 
bar association. 
(b) The Director shall cause to be published in 
the Official Gazette the name of any practitioner suspended 
or excluded from practice. Unless otherwise 
ordered by the Commissioner, the Director shall publish 
in the Official Gazette the name of any practitioner 
reprimanded by the Commissioner. 
(c) The Director shall maintain records, which 
shall be available for public inspection, of every disciplinary 
proceeding where practitioner is reprimanded, 
suspended, or excluded unless the Commissioner 
orders that the proceeding be kept confidential. 


[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.160 Petition for reinstatement. 

(a) A petition for reinstatement of a practitioner 
suspended for a period of less than five years will not 
be considered until the period of suspension has 
passed. 
(b) A petition for reinstatement of a practitioner 
excluded from practice will not be considered until 
five years after the effective date of the exclusion. 
(c) An individual who has resigned under 
§ 10.133 or who has been suspended or excluded may 
file a petition for reinstatement. The Director may 
grant a petition for reinstatement when the individual 


makes a clear and convincing showing that the individual 
will conduct himself or herself in accordance 
with the regulations of this part and that granting a 
petition for reinstatement is not contrary to the public 
interest. As a condition to reinstatement, the Director 
may require the individual to: 

(1) Meet the requirements of § 10.7, including 
taking and passing an examination under § 10.7(b) 
and 
(2) Pay all or a portion of the costs and 
expenses, not to exceed $1,500, of the disciplinary 
proceeding which led to suspension or exclusion. 
(d) Any suspended or excluded practitioner 
who has violated the provisions of § 10.158 during his 
or her period of suspension or exclusion shall not be 
entitled to reinstatement until such time as the Director 
is satisfied that a period of suspension equal in 
time to that ordered by the Commissioner or exclusion 
for five years has passed during which the suspended 
or excluded practitioner has complied with the 
provisions of § 10.158. 
(e) Proceedings on any petition for reinstatement 
shall be open to the public. Before reinstating 
any suspended or excluded practitioner, the Director 
shall publish in the Official Gazette a notice of the 
suspended or excluded practitioner’s petition for reinstatement 
and shall permit the public a reasonable 
opportunity to comment or submit evidence with 
respect to the petition for reinstatement. 


[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 
1985] 

§ 10.161 Savings clause. 

(a) A disciplinary proceeding based on conduct 
engaged in prior to the effective date of these regulations 
may be instituted subsequent to such effective 
date, if such conduct would continue to justify suspension 
or exclusion under the provisions of this part. 
(b) No practitioner shall be subject to a disciplinary 
proceeding under this part based on conduct 
engaged in before the effective date hereof if such 
conduct would not have been subject to disciplinary 
action before such effective date. 


[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 
1985] 

 

§ 10.162 - 10.169 [Reserved] 

§ 10.170 Suspension of rules. 

(a) In an extraordinary situation, when justice 
requires, any requirement of the regulations of this 
part which is not a requirement of the statutes may be 
suspended or waived by the Commissioner or the 
Commissioner’s designee, sua sponte, or on petition 
of any party, including the Director or the Director’s 
representative, subject to such other requirements as 
may be imposed. 
(b) Any petition under this section will not stay 
a disciplinary proceeding unless ordered by the Commissioner 
or an administrative law judge. 


[Added 50 FR 5186, Feb. 6, 1985, effective Mar. 8, 
1985] 

PART 11 — REPRESENTATION OF 
OTHERS BEFORE THE UNITED 
STATES PATENT AND TRADEMARK 
OFFICE


Subpart A—General Provisions 

GENERAL INFORMATION 

11.1 Definitions. 

11.2 Director of the Office of Enrollment and Discipline. 

11.3 Suspension of rules. 

Subpart B—Recognition To Practice 
Before the USPTO


PATENTS, TRADEMARKS, AND OTHER 
NON-PATENT LAW 

11.4 [Reserved] 

11.5 Register of attorneys and agents in patent matters. 

11.6 Registration of attorneys and agents. 

11.7 Requirements for registration. 

11.8 Oath and registration fee. 

11.9 Limited recognition in patent matters. 

11.10 Restrictions on practice in patent matters. 

11.11 Notification. 

Subpart A — General Provisions 

GENERAL INFORMATION 

§ 11.1 Definitions. 

This part governs solely the practice of patent, 
trademark, and other law before the United States 
Patent and Trademark Office. Nothing in this part 
shall be construed to preempt the authority of each 
State to regulate the practice of law, except to the 
extent necessary for the United States Patent and 
Trademark Office to accomplish its Federal objectives. 
Unless otherwise clear from the context, the following 
definitions apply to this part: 

Attorney or lawyer means an individual who is a 
member in good standing of the highest court of any 
State, including an individual who is in good standing 
of the highest court of one State and under an order of 
any court or Federal agency suspending, enjoining, 
restraining, disbarring or otherwise restricting the 
attorney from practice before the bar of another State 
or Federal agency. A non-lawyer means a person or 
entity who is not an attorney or lawyer. 

Belief or believes means that the person involved 
actually supposed the fact in question to be true. A 
person’s belief may be inferred from circumstances. 

Conviction or convicted means any confession to a 
crime; a verdict or judgment finding a person guilty of 
a crime; any entered plea, including nolo contendre or 
Alford plea, to a crime; or receipt of deferred adjudication 
(whether judgment or sentence has been 
entered or not) for an accused or pled crime. 

Crime means any offense declared to be a felony or 
misdemeanor by Federal or State law in the jurisdiction 
where the act occurs. 

Data sheet means a form used to collect the name, 
address, and telephone information from individuals 
recognized to practice before the Office in patent matters. 


Fiscal year means the time period from October 1st 
through the ensuing September 30th. 

Fraud or fraudulent means conduct having a purpose 
to deceive and not merely negligent misrepresentation 
or failure to apprise another of relevant 
information. 

 

Good moral character and reputation means the 
possession of honesty and truthfulness, trustworthiness 
and reliability, and a professional commitment to 
the legal process and the administration of justice, as 
well as the condition of being regarded as possessing 
such qualities. 

Knowingly, known, or knows means actual knowledge 
of the fact in question. A person’s knowledge 
may be inferred from circumstances. 

Matter means any litigation, administrative proceeding, 
lobbying activity, application, claim, investigation, 
controversy, arrest, charge, accusation, 
contract, negotiation, estate or family relations practice 
issue, request for a ruling or other determination, 
or any other matter covered by the conflict of interest 
rules of the appropriate Government entity. 

OED means the Office of Enrollment and Discipline. 


OED Director means the Director of the Office of 
Enrollment and Discipline. 

OED Director’s representatives means attorneys 
within the USPTO Office of General Counsel who act 
as representatives of the OED Director. 

Office means the United States Patent and Trademark 
Office. 

Practitioner means: 

(1) An attorney or agent registered to practice 
before the Office in patent matters, 
(2) An individual authorized under 5 U.S.C. 
500(b) or otherwise as provided by § 10.14(b), (c), 
and (e) of this subchapter, to practice before the 
Office in trademark matters or other non-patent matters, 
or 
(3) An individual authorized to practice before 
the Office in a patent case or matters under § 11.9(a) 
or (b). 


Proceeding before the Office means an application 
for patent, an application for reissue, a reexamination, 
a protest, a public use matter, an inter partes patent 
matter, correction of a patent, correction of inventor-
ship, an application to register a trademark, an inter 
partes trademark matter, an appeal, a petition, and any 
other matter that is pending before the Office. 

Reasonable or reasonably when used in relation to 
conduct by a practitioner means the conduct of a reasonably 
prudent and competent practitioner. 

Registration means registration to practice before 
the Office in patent proceedings. 

Roster means a list of individuals who have been 
registered as either a patent attorney or patent agent. 

Significant evidence of rehabilitation means satisfactory 
evidence that is significantly more probable 
than not that there will be no recurrence in the foreseeable 
future of the practitioner’s prior disability or 
addiction. 

State means any of the 50 states of the United States 
of America, the District of Columbia, and other territories 
and possessions of the United States of America. 


Substantial when used in reference to degree or 
extent means a material matter of clear and weighty 
importance. 

Suspend or suspension means a temporary debarring 
from practice before the Office or other jurisdiction. 


United States means the United States of America, 
and the territories and possessions the United States of 
America. 

USPTO Director means the Director of the United 
States Patent and Trademark Office, or an employee 
of the Office delegated authority to act for the Director 
of the United States Patent and Trademark Office 
in matters arising under this part. 

[Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004] 

§ 11.2 Director of the Office of Enrollment and 
Discipline. 

(a) Appointment. The USPTO Director shall 
appoint a Director of the Office of Enrollment and 
Discipline (OED Director). In the event of the 
absence of the OED Director or a vacancy in the 
office of the OED Director, or in the event that the 
OED Director recuses himself or herself from a case, 
the USPTO Director may designate an employee of 
the Office to serve as acting OED Director. The OED 
Director and any acting OED Director shall be an 
active member in good standing of the bar of a State. 
(b) Duties. The OED Director shall: 


(1) Supervise staff as may be necessary for 
the performance of the OED Director’s duties. 
(2) Receive and act upon applications for 
registration, prepare and grade the examination provided 
for in § 11.7(b), maintain the register provided 


 

for in § 11.5, and perform such other duties in connection 
with enrollment and recognition of attorneys and 
agents as may be necessary. 

(3) Conduct investigations into the moral 
character and reputation of any individual seeking to 
be registered as an attorney or agent, or of any individual 
seeking limited recognition, deny registration 
or recognition of individuals failing to demonstrate 
possession of good moral character and reputation, 
and perform such other duties in connection with 
enrollment matters and investigations as may be necessary. 
(4) The Director shall conduct investigations 
into possible violations by practitioners of Disciplinary 
Rules, with the consent of the Committee on Discipline 
initiate disciplinary proceedings under § 
10.132(b) of this subchapter, and perform such other 
duties in connection with investigations and disciplinary 
proceedings as may be necessary. 
(5)-(7) [Reserved] 


(c) Petition to OED Director. Any petition 
from any action or requirement of the staff of OED 
reporting to the OED Director shall be taken to the 
OED Director. Any such petition not filed within sixty 
days from the mailing date of the action or notice 
from which relief is requested will be dismissed as 
untimely. The filing of a petition will not stay the 
period for taking other action which may be running, 
or stay other proceedings. A final decision by the 
OED Director may be reviewed in accordance with 
the provisions of paragraph (d) of this section. 
(d) Review of OED Director’s decision. An 
individual dissatisfied with a final decision of the 
OED Director, except for a decision dismissing a 
complaint or closing an investigation, may seek 
review of the decision upon petition to the USPTO 
Director accompanied by payment of the fee set forth 
in § 1.21(a)(5)(ii) of this subchapter. A decision dismissing 
a complaint or closing an investigation is not 
subject to review by petition. Any petition not filed 
within sixty days from the mailing date of the final 
decision of the OED Director will be dismissed as 
untimely. Any petition shall be limited to the facts of 
record. Briefs or memoranda, if any, in support of the 
petition shall accompany or be embodied therein. The 
USPTO Director in deciding the petition will consider 
no new evidence. Copies of documents already of 
record before the OED Director need not be submitted 


with the petition. No oral hearing on the petition will 
be held except when considered necessary by the 
USPTO Director. Any request for reconsideration of 
the decision of the USPTO Director will be dismissed 
as untimely if not filed within thirty days after the 
mailing date of said decision. If any request for reconsideration 
is filed, the decision on reconsideration 
shall be the final agency action. 

[Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004] 

§ 11.3 Suspension of rules. 

In an extraordinary situation, when justice requires, 
any requirement of the regulations of this part which 
is not a requirement of statute may be suspended or 
waived by the USPTO Director or the designee of the 
USPTO Director, sua sponte or on petition of any 
party, including the OED Director or the OED Director’s 
representative, subject to such other requirements 
as may be imposed. 

[Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004] 

Subpart B — Recognition To Practice 
Before the USPTO 

PATENTS, TRADEMARKS, AND OTHER 
NON-PATENT LAW 

§ 11.4 [Reserved]

 [Reserved, 69 FR 35427, June 24, 2004, effective July 
26, 2004] 

§ 11.5 Register of attorneys and agents in patent 
matters.

 A register of attorneys and agents is kept in the 
Office on which are entered the names of all individuals 
recognized as entitled to represent applicants having 
prospective or immediate business before the 
Office in the preparation and prosecution of patent 
applications. Registration in the Office under the provisions 
of this part shall entitle the individuals so registered 
to practice before the Office only in patent 
matters. 

 

[Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004] 

§ 11.6 Registration of attorneys and agents. 

(a) Attorneys. Any citizen of the United States 
who is an attorney and who fulfills the requirements 
of this part may be registered as a patent attorney to 
practice before the Office. When appropriate, any 
alien who is an attorney, who lawfully resides in the 
United States, and who fulfills the requirements of 
this part may be registered as a patent attorney to 
practice before the Office, provided that such registration 
is not inconsistent with the terms upon which the 
alien was admitted to, and resides in, the United States 
and further provided that the alien may remain registered 
only: 
(1) If the alien continues to lawfully reside in 
the United States and registration does not become 
inconsistent with the terms upon which the alien continues 
to lawfully reside in the United States, or 
(2) If the alien ceases to reside in the United 
States, the alien is qualified to be registered under 
paragraph (c) of this section. See also § 11.9(b). 
(b) Agents. Any citizen of the United States 
who is not an attorney, and who fulfills the requirements 
of this part may be registered as a patent agent 
to practice before the Office. When appropriate, any 
alien who is not an attorney, who lawfully resides in 
the United States, and who fulfills the requirements of 
this part may be registered as a patent agent to practice 
before the Office, provided that such registration 
is not inconsistent with the terms upon which the alien 
was admitted to, and resides in, the United States, and 
further provided that the alien may remain registered 
only: 
(1) If the alien continues to lawfully reside in 
the United States and registration does not become 
inconsistent with the terms upon which the alien continues 
to lawfully reside in the United States or 
(2) If the alien ceases to reside in the United 
States, the alien is qualified to be registered under 
paragraph (c) of this section. See also § 11.9(b). 
(c) Foreigners. Any foreigner not a resident of 
the United States who shall file proof to the satisfaction 
of the OED Director that he or she is registered 
and in good standing before the patent office of the 
country in which he or she resides and practices, and 
who is possessed of the qualifications stated in § 11.7, 


may be registered as a patent agent to practice before 
the Office for the limited purpose of presenting and 
prosecuting patent applications of applicants located 
in such country, provided that the patent office of such 
country allows substantially reciprocal privileges to 
those admitted to practice before the Office. Registration 
as a patent agent under this paragraph shall continue 
only during the period that the conditions 
specified in this paragraph obtain. Upon notice by the 
patent office of such country that a patent agent registered 
under this section is no longer registered or no 
longer in good standing before the patent office of 
such country, and absent a showing of cause why his 
or her name should not be removed from the register, 
the OED Director shall promptly remove the name of 
the patent agent from the register and publish the fact 
of removal. Upon ceasing to reside in such country, 
the patent agent registered under this section is no 
longer qualified to be registered under this section, 
and the OED Director shall promptly remove the 
name of the patent agent from the register and publish 
the fact of removal. 

(d) Board of Patent Appeals and Interferences 
matters. For action by a person who is not registered 
in a proceeding before the Board of Patent Appeals 
and Interferences, see § 41.5(a) of this title. 

[Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004; para. (d) revised, 69 FR 49959, Aug. 12, 2004, 
effective Sept. 13, 2004] 

§ 11.7 Requirements for registration. 

(a) No individual will be registered to practice 
before the Office unless he or she has: 
(1) Applied to the USPTO Director in writing 
by completing an application for registration form 
supplied by the OED Director and furnishing all 
requested information and material; and 
(2) Established to the satisfaction of the OED 
Director that he or she: 
(i) Possesses good moral character and 
reputation; 
(ii) Possesses the legal, scientific, and 
technical qualifications necessary for him or her to 
render applicants valuable service; and 


(iii) Is competent to advise and assist patent 
applicants in the presentation and prosecution of their 
applications before the Office. 

 

(b)(1) To enable the OED Director to determine 
whether an individual has the qualifications specified 
in paragraph (a)(2) of this section, the individual 
shall: 

(i) File a complete application for registration 
each time admission to the registration examination 
is requested. A complete application for 
registration includes: 
(A) An application for registration form 
supplied by the OED Director wherein all requested 
information and supporting documents are furnished, 
(B) Payment of the fees required by § 
1.21(a)(1) of this subchapter, 
(C) Satisfactory proof of scientific and 
technical qualifications, and 
(D) For aliens, provide proof that recognition 
is not inconsistent with the terms of their visa 
or entry into the United States; 
(ii) Pass the registration examination, 
unless the taking and passing of the examination is 
waived as provided in paragraph (d) of this section. 
Unless examination is waived pursuant to paragraph 
(d) of this section, each individual seeking registration 
must take and pass the registration examination to 
enable the OED Director to determine whether the 
individual possesses the legal and competence qualifications 
specified in paragraphs (a)(2)(ii) and 
(a)(2)(iii) of this section. An individual failing the 
examination may, upon receipt of notice of failure 
from OED, reapply for admission to the examination. 
An individual failing the examination must wait thirty 
days after the date the individual last took the examination 
before retaking the examination. An individual 
reapplying shall: 
(A) File a completed application for registration 
form wherein all requested information and 
supporting documents are furnished, 
(B) Pay the fees required by § 1.21 
(a)(1) of this subchapter, and 
(C) For aliens, provide proof that recognition 
is not inconsistent with the terms of their visa 
or entry into the United States; and 


(iii) Provide satisfactory proof of possession 
of good moral character and reputation. 

(2) An individual failing to file a complete 
application for registration will not be admitted to the 
examination and will be notified of the incompleteness. 
Applications for registration that are incomplete 
as originally submitted will be considered only when 
they have been completed and received by OED, provided 
that this occurs within sixty days of the mailing 
date of the notice of incompleteness. Thereafter, a 
new and complete application for registration must be 
filed. Only an individual approved as satisfying the 
requirements of paragraphs (b)(1)(i)(A), (b)(1)(i)(B), 
(b)(1)(i)(C) and (b)(1)(i)(D) of this sect i on may be 
admitted to the examination. 

(3) If an individual does not reapply until 
more than one year after the mailing date of a notice 
of failure, that individual must again comply with 
paragraph (b)(1)(i) of this section. 
(c) Each individual seeking registration is 
responsible for updating all information and answers 
submitted in or with the application for registration 
based upon anything occurring between the date the 
application for registration is signed by the individual, 
and the date he or she is registered or recognized to 
practice before the Office in patent matters. The 
update shall be filed within thirty days after the date 
of the occasion that necessitates the update. 
(d) Waiver of the Registration Examination for 
Former Office Employees. (1) Former patent examiners who by July 26, 2004, had not actively served four 
years in the patent examining corps, and were serving 
in the corps at the time of their separation. The OED 
Director may waive the taking of a registration examination 
in the case of any individual meeting the 
requirements of paragraph (b)(1)(i)(C) of this section 
who is a former patent examiner but by July 26, 2004, 
had not served four years in the patent examining 
corps, if the individual demonstrates that he or she: 
(i) Actively served in the patent examining 
corps of the Office and was serving in the corps at the 
time of separation from the Office, 
(ii) Received a certificate of legal competency 
and negotiation authority; 


(iii) After receiving the certificate of legal 
competency and negotiation authority, was rated at 
least fully successful in each quality performance element 
of his or her performance plan for the last two 
complete fiscal years as a patent examiner; and 

(iv) Was not under an oral or written warning 
regarding the quality performance elements at the 
time of separation from the patent examining corps. 
(2) Former patent examiners who on July 26, 
2004, had actively served four years in the patent 


 

examining corps, and were serving in the corps at the 
time of their separation. The OED Director may 
waive the taking of a registration examination in the 
case of any individual meeting the requirements of 
paragraph (b)(1)(i)(C) of this section who is a former 
patent examiner and by July 26, 2004, had served four 
years in the patent examining corps, if the individual 
demonstrates that he or she: 

(i) Actively served for at least four years 
in the patent examining corps of the Office by July 26, 
2004, and was serving in the corps at the time of separation 
from the Office; 
(ii) Was rated at least fully successful in 
each quality performance element of his or her performance 
plan for the last two complete fiscal years as a 
patent examiner in the Office; and 


(iii) Was not under an oral or written warning 
regarding the quality performance elements at the 
time of separation from the patent examining corps. 

(3) Certain former Office employees who 
were not serving in the patent examining corps upon 
their separation from the Office. The OED Director 
may waive the taking of a registration examination in 
the case of a former Office employee meeting the 
requirements of paragraph (b)(1)(i)(C) of this section 
who by petition demonstrates possession of the necessary 
legal qualifications to render to patent applicants 
and others valuable service and assistance in the preparation 
and prosecution of their applications or other 
business before the Office by showing that he or she 
has: 
(i) Exhibited comprehensive knowledge 
of patent law equivalent to that shown by passing the 
registration examination as a result of having been in 
a position of responsibility in the Office in which he 
or she: 
(A) Provided substantial guidance on 
patent examination policy, including the development 
of rule or procedure changes, patent examination 
guidelines, changes to the Manual of Patent Examining 
Procedure, development of training or testing 
materials for the patent examining corps, or development 
of materials for the registration examination or 
continuing legal education; or 
(B) Represented the Office in patent 
cases before Federal courts; and 
(ii) Was rated at least fully successful in 
each quality performance element of his or her perfor


mance plan for said position for the last two complete 
rating periods in the Office, and was not under an oral 
or written warning regarding such performance elements 
at the time of separation from the Office. 

(4) To be eligible for consideration for 
waiver, an individual formerly employed by the 
Office within the scope of one of paragraphs (d)(1), 
(d)(2) or (d)(3) of this section must file a complete 
application for registration and pay the fee required 
by § 1.21(a)(1)(i) of this subchapter within two years 
of the individual’s date of separation from the Office. 
All other individuals formerly employed by the 
Office, including former examiners, filing an application 
for registration or fee more than two years after 
separation from the Office, are required to take and 
pass the registration examination. The individual or 
former examiner must pay the examination fee 
required by § 1.21(a)(1)(ii) of this subchapter within 
thirty days after notice of non-waiver. 
(e) Examination results. Notification of the 
examination results is final. Within sixty days of the 
mailing date of a notice of failure, the individual is 
entitled to inspect, but not copy, the questions and 
answers he or she incorrectly answered. Review will 
be under supervision. No notes may be taken during 
such review. Substantive review of the answers or 
questions may not be pursued by petition for regrade. 
An individual who failed the examination has the 
right to retake the examination an unlimited number 
of times upon payment of the fees required by § 1.21 
(a)(1)(i) and (ii) of this subchapter, and a fee charged 
by a commercial entity administering the examination. 
(f) Application for reciprocal recognition. An 
individual seeking reciprocal recognition under § 11.6 
(c), in addition to satisfying the provisions of paragraphs 
(a) and (b) of this section, and the provisions 
of § 11.8(c), shall pay the application fee required by 
§ 1.21(a)(1)(i) of this subchapter upon filing an application 
for registration. 
(g) Investigation of good moral character and 
reputation. (1) Every individual seeking recognition 
shall answer all questions in the application for registration 
and request(s) for comments issued by OED; 
disclose all relevant facts, dates and information; and 
provide verified copies of documents relevant to his 
or her good moral character and reputation. An individual 
who is an attorney shall submit a certified copy 


 

of each of his or her State bar applications and moral 
character determinations, if available. 

(2)(i) If the OED Director receives information 
from any source that reflects adversely on the good 
moral character or reputation of an individual seeking 
registration or recognition, the OED Director shall 
conduct an investigation into the good moral character 
and reputation of that individual. The investigation 
will be conducted after the individual has passed the 
registration examination, or after the registration 
examination has been waived for the individual, as 
applicable. An individual failing to timely answer 
questions or respond to an inquiry by OED shall be 
deemed to have withdrawn his or her application, and 
shall be required to reapply, pass the examination, and 
otherwise satisfy all the requirements of this section. 
No individual shall be certified for registration or recognition 
by the OED Director until, to the satisfaction 
of the OED Director, the individual demonstrates his 
or her possession of good moral character and reputation. 


(ii) The OED Director, in considering an 
application for registration by an attorney, may accept 
a State bar’s character determination as meeting the 
requirements set forth in paragraph (g) of this section 
if, after review, the Office finds no substantial discrepancy 
between the information provided with his 
or her application for registration and the State bar 
application and moral character determination, provided 
that acceptance is not inconsistent with other 
rules and the requirements of 35 U.S.C. 2(b)(2)(D). 
(h) Good moral character and reputation. Evidence 
showing lack of good moral character and reputation 
may include, but is not limited to, conviction of 
a felony or a misdemeanor identified in paragraph 
(h)(1) of this section, drug or alcohol abuse; lack of 
candor; suspension or disbarment on ethical grounds 
from a State bar; and resignation from a State bar 
while under investigation. 
(1) Conviction of felony or misdemeanor. An 
individual who has been convicted of a felony or a 
misdemeanor involving moral turpitude, breach of 
trust, interference with the administration of justice, 
false swearing, misrepresentation, fraud, deceit, bribery, 
extortion, misappropriation, theft, or conspiracy 
to commit any felony or misdemeanor, is presumed 
not to be of good moral character and reputation in the 
absence of a pardon or a satisfactory showing of 


reform and rehabilitation, and shall file with his or her 
application for registration the fees required by § 
1.21(a)(1)(ii) and (a)(10) of this subchapter. The OED 
Director shall determine whether individuals convicted 
of said felony or misdemeanor provided satisfactory 
proof of reform and rehabilitation. 

(i) An individual who has been convicted 
of a felony or a misdemeanor identified in paragraph 
(h)(1) of this section shall not be eligible to apply for 
registration during the time of any sentence (including 
confinement or commitment to imprisonment), 
deferred adjudication, and period of probation or 
parole as a result of the conviction, and for a period of 
two years after the date of completion of the sentence, 
deferred adjudication, and period of probation or 
parole, whichever is later. 
(ii) The following presumptions apply to 
the determination of good moral character and reputation 
of an individual convicted of said felony or misdemeanor: 
(A) The court record or docket entry of 
conviction is conclusive evidence of guilt in the 
absence of a pardon or a satisfactory showing of 
reform or rehabilitation; and 
(B) An individual convicted of a felony 
or any misdemeanor identified in paragraph (h)(1) of 
this section is conclusively deemed not to have good 
moral character and reputation, and shall not be eligible 
to apply for registration for a period of two years 
after completion of the sentence, deferred adjudication, 
and period of probation or parole, whichever is 
later. 


(iii) The individual, upon applying for registration, 
shall provide satisfactory evidence that he or 
she is of good moral character and reputation. 

(iv) Upon proof that a conviction has been 
set aside or reversed, the individual shall be eligible to 
file a complete application for registration and the fee 
required by § 1.21(a)(1)(ii) of this subchapter and, 
upon passing the registration examination, have the 
OED Director determine, in accordance with paragraph 
(h)(1) of this section, whether, absent the conviction, 
the individual possesses good moral character 
and reputation. 
(2) Good moral character and reputation 
involving drug or alcohol abuse. An individual’s 
record is reviewed as a whole to see if there is a drug 
or alcohol abuse issue. An individual appearing to 


 

abuse drugs or alcohol may be asked to undergo an 
evaluation, at the individual’s expense, by a qualified 
professional approved by the OED Director. In 
instances where, before an investigation commences, 
there is evidence of a present abuse or an individual 
has not established a record of recovery, the OED 
Director may request the individual to withdraw his or 
her application, and require the individual to satisfactorily 
demonstrate that he or she is complying with 
treatment and undergoing recovery. 

(3) Moral character and reputation involving 
lack of candor. An individual’s lack of candor in disclosing 
facts bearing on or relevant to issues concerning 
good moral character and reputation when 
completing the application or any time thereafter may 
be found to be cause to deny registration on moral 
character and reputation grounds. 
(4) Moral character and reputation involving 
suspension, disbarment, or resignation from a profession. (i) An individual who has been disbarred or suspended 
from practice of law or other profession, or 
has resigned in lieu of a disciplinary proceeding 
(excluded or disbarred on consent) shall be ineligible 
to apply for registration as follows: 
(A) An individual who has been disbarred 
from practice of law or other profession, or has 
resigned in lieu of a disciplinary proceeding (excluded 
or disbarred on consent) shall be ineligible to apply 
for registration for a period of five years from the date 
of disbarment or resignation. 
(B) An individual who has been suspended 
on ethical grounds from the practice of law or 
other profession shall be ineligible to apply for registration 
until expiration of the period of suspension. 
(C) An individual who was not only disbarred, 
suspended or resigned in lieu of a disciplinary 
proceeding, but also convicted in a court of a felony, 
or of a crime involving moral turpitude or breach of 
trust, shall be ineligible to apply for registration until 
the conditions in paragraphs (h)(1) and (h)(4) of this 
section are fully satisfied. 
(ii) An individual who has been disbarred 
or suspended, or who resigned in lieu of a disciplinary 
proceeding shall file an application for registration 
and the fees required by § 1.21(a)(1)(ii) and (a)(10) of 
this subchapter; provide a full and complete copy of 
the proceedings that led to the disbarment, suspension, 
or resignation; and provide satisfactory proof 


that he or she possesses good moral character and reputation. 
The following presumptions shall govern the 
determination of good moral character and reputation 
of an individual who has been licensed to practice law 
or other profession in any jurisdiction and has been 
disbarred, suspended on ethical grounds, or allowed 
to resign in lieu of discipline, in that jurisdiction. 

(A) A copy of the record resulting in disbarment, 
suspension or resignation is prima facie evidence 
of the matters contained in the record, and the 
imposition of disbarment or suspension, or the acceptance 
of the resignation of the individual shall be 
deemed conclusive that the individual has committed 
professional misconduct. 
(B) The individual is ineligible for registration 
and is deemed not to have good moral character 
and reputation during the period of the imposed 
discipline. 


(iii) The only defenses available with 
regard to an underlying disciplinary matter resulting 
in disbarment, suspension on ethical grounds, or resignation 
in lieu of a disciplinary proceeding are set 
out below, and must be shown to the satisfaction of 
the OED Director: 

(A) The procedure in the disciplinary 
court was so lacking in notice or opportunity to be 
heard as to constitute a deprivation of due process; 
(B) There was such infirmity of proof 
establishing the misconduct as to give rise to the clear 
conviction that the Office could not, consistently with 
its duty, accept as final the conclusion on that subject; 
or 
(C) The finding of lack of good moral 
character and reputation by the Office would result in 
grave injustice. 
(i) Factors that may be taken into consideration when evaluating rehabilitation of an individual 
seeking a moral character and reputation determination. The factors enumerated below are guidelines to 
assist the OED Director in determining whether an 
individual has demonstrated rehabilitation from an act 
of misconduct or moral turpitude. The factors include: 
(1) The nature of the act of misconduct, 
including whether it involved moral turpitude, 
whether there were aggravating or mitigating circumstances, 
and whether the activity was an isolated event 
or part of a pattern; 


 

(2) The age and education of the individual 
at the time of the misconduct and the age and education 
of the individual at the present time; 
(3) The length of time that has passed 
between the misconduct and the present, absent any 
involvement in any further acts of moral turpitude, the 
amount of time and the extent of rehabilitation being 
dependent upon the nature and seriousness of the act 
of misconduct under consideration; 
(4) Restitution by the individual to any 
person who suffered monetary losses through acts or 
omissions of the individual; 
(5) Expungement of a conviction; 


(6) Successful completion or early discharge 
from probation or parole; 
(7) Abstinence from the use of controlled 
substances or alcohol for not less than two years if the 
specific misconduct was attributable in part to the use 
of a controlled substance or alcohol, where abstinence 
may be demonstrated by, but is not necessarily limited 
to, enrolling in and complying with a self-help or professional 
treatment program; 
(8) If the specific misconduct was attributable 
in part to a medically recognized mental disease, 
disorder or illness, proof that the individual sought 
professional assistance, and complied with the treatment 
program prescribed by the professional, and 
submitted letters from the treating psychiatrist/psychologist 
verifying that the medically recognized 
mental disease, disorder or illness will not impede the 
individual’s ability to competently practice before the 
Office; 
(9) Payment of the fine imposed in connection 
with any criminal conviction; 
(10) Correction of behavior responsible in 
some degree for the misconduct; 
(11) Significant and conscientious involvement 
in programs designed to provide social benefits 
or to ameliorate social problems; and 
(12) Change in attitude from that which 
existed at the time of the act of misconduct in question 
as evidenced by any or all of the following: 
(i) Statements of the individual; 


(ii) Statements from persons familiar 
with the individual’s previous misconduct and with 
subsequent attitudes and behavioral patterns; 


(iii) Statements from probation or parole 
officers or law enforcement officials as to the individual’s 
social adjustments; and 

(iv) Statements from persons competent 
to testify with regard to neuropsychiatry or emotional 
disturbances. 
(j) Notice to Show Cause. The OED Director 
shall inquire into the good moral character and reputation 
of an individual seeking registration, providing 
the individual with the opportunity to create a record 
on which a decision is made. If, following inquiry and 
consideration of the record, the OED Director is of the 
opinion that the individual seeking registration has 
not satisfactorily established that he or she possesses 
good moral character and reputation, the OED Director 
shall issue to the individual a notice to show cause 
why the individual’s application for registration 
should not be denied. 
(1) The individual shall be given no less than 
ten days from the date of the notice to reply. The 
notice shall be given by certified mail at the address 
appearing on the application if the address is in the 
United States, and by any other reasonable means if 
the address is outside the United States. 
(2) Following receipt of the individual’s 
response, or in the absence of a response, the OED 
Director shall consider the individual’s response, if 
any, and the record, and determine whether, in the 
OED Director’s opinion, the individual has sustained 
his or her burden of satisfactorily demonstrating that 
he or she possesses good moral character and reputation. 
(k) Reapplication for registration. An individual 
who has been refused registration for lack of good 
moral character or reputation may reapply for registration 
two years after the date of the decision, unless 
a shorter period is otherwise ordered by the USPTO 
Director. An individual, who has been notified that he 
or she is under investigation for good moral character 
and reputation may elect to withdraw his or her application 
for registration, and may reapply for registration 
two years after the date of withdrawal. Upon 
reapplication for registration, the individual shall pay 
the fees required by § 1.21(a)(1)(ii) and (a)(10) of this 
subchapter, and has the burden of showing to the satisfaction 
of the OED Director his or her possession of 
good moral character and reputation as prescribed in 
paragraph (b) of this section. Upon reapplication for 


 

registration, the individual also shall complete successfully 
the examination prescribed in paragraph (b) 
of this section, even though the individual has previously 
passed a registration examination.

 [Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004] 

§ 11.8 Oath and registration fee. 

(a) After an individual passes the examination, 
or the examination is waived, the OED Director shall 
promptly publish a solicitation for information concerning 
the individual’s good moral character and reputation. 
The solicitation shall include the individual’s 
name, and business or communication postal address. 
(b) An individual shall not be registered as an 
attorney under § 11.6(a), registered as an agent under 
§ 11.6(b) or (c), or granted limited recognition under § 
11.9(b) unless within two years of the mailing date of 
a notice of passing registration examination or of 
waiver of the examination the individual files with the 
OED Director a completed Data Sheet, an oath or declaration 
prescribed by the USPTO Director, and the 
registration fee set forth in § 1.21(a)(2) of this subchapter. 
An individual seeking registration as an attorney 
under § 11.6(a) must provide a certificate of good 
standing of the bar of the highest court of a State that 
is no more than six months old. 
(c) An individual who does not comply with the 
requirements of paragraph (b) of this section within 
the two-year period will be required to retake the registration 
examination.


 [Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004] 

§ 11.9 Limited recognition in patent matters. 

(a) Any individual not registered under § 11.6 
may, upon a showing of circumstances which render it 
necessary or justifiable, and that the individual is of 
good moral character and reputation, be given limited 
recognition by the OED Director to prosecute as attorney 
or agent a specified patent application or specified 
patent applications. Limited recognition under 
this paragraph shall not extend further than the application 
or applications specified. Limited recognition 
shall not be granted while individuals who have 
passed the examination or for whom the examination 
has been waived are awaiting registration to practice 
before the Office in patent matters. 

(b) A nonimmigrant alien residing in the United 
States and fulfilling the provisions of § 11.7(a) and (b) 
may be granted limited recognition if the nonimmigrant 
alien is authorized by the Bureau of Citizenship 
and Immigration Services to be employed or trained 
in the United States in the capacity of representing a 
patent applicant by presenting or prosecuting a patent 
application. Limited recognition shall be granted for a 
period consistent with the terms of authorized 
employment or training. Limited recognition shall not 
be granted or extended to a non-United States citizen 
residing abroad. If granted, limited recognition shall 
automatically expire upon the nonimmigrant alien’s 
departure from the United States. 
(c) An individual not registered under § 11.6 
may, if appointed by an applicant, prosecute an international 
patent application only before the United 
States International Searching Authority and the 
United States International Preliminary Examining 
Authority, provided that the individual has the right to 
practice before the national office with which the 
international application is filed as provided in PCT 
Art. 49, Rule 90 and § 1.455 of this subchapter, or 
before the International Bureau when the USPTO is 
acting as Receiving Office pursuant to PCT Rules 
83.1bis and 90.1. 


[Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004] 

§ 11.10 Restrictions on practice in patent matters. 

(a) Only practitioners who are registered under 
§ 11.6 or individuals given limited recognition under 
§ 11.9(a) or (b) are permitted to prosecute patent 
applications of others before the Office; or represent 
others in any proceedings before the Office. 
(b) Post employment agreement of former 
Office employee. No individual who has served in the 
patent examining corps or elsewhere in the Office 
may practice before the Office after termination of his 
or her service, unless he or she signs a written undertaking 
agreeing: 
(1) To not knowingly act as agent or attorney 
for, or otherwise represent, or assist in any manner the 
representation of, any other person: 


 

(i) Before the Office, 

(ii) In connection with any particular 
patent or patent application, 

(iii) In which said employee participated 
personally and substantially as an employee of the 
Office; and 

(2) To not knowingly act within two years 
after terminating employment by the Office as agent 
or attorney for, or otherwise represent, or assist in any 
manner the representation of any other person: 
(i) Before the Office, 


(ii) In connection with any particular 
patent or patent application, 


(iii) If such patent or patent application was 
pending under the employee’s official responsibility 
as an officer or employee within a period of one year 
prior to the termination of such responsibility. 

(3) The words and phrases in paragraphs 
(b)(1) and (b)(2) of this section are construed as follows: 
(i) Represent and representation mean 
acting as patent attorney or patent agent or other representative 
in any appearance before the Office, or 
communicating with an employee of the Office with 
intent to influence. 
(ii) Assist in any manner means aid or help 
another person on a particular patent or patent application 
involving representation. 


(iii) Particular patent or patent application means any patent or patent application, including, 
but not limited to, a provisional, substitute, international, 
continuation, divisional, continuation-in-part, 
or reissue patent application, as well as any protest, 
reexamination, petition, appeal, or interference based 
on the patent or patent application. 

(iv) Participate personally and substantially. (A) Basic requirements. The restrictions of § 
11.10(a)(1) apply only to those patents and patent 
applications in which a former Office employee had 
“personal and substantial participation,” exercised 
“through decision, approval, disapproval, recommendation, 
the rendering of advice, investigation or otherwise.” 
To participate personally means directly, and 
includes the participation of a subordinate when actually 
directed by the former Office employee in the 
patent or patent application. Substantially means that 
the employee’s involvement must be of significance 
to the matter, or form a basis for a reasonable appearance 
of such significance. It requires more than official 
responsibility, knowledge, perfunctory 
involvement, or involvement on an administrative or 
peripheral issue. A finding of substantiality should be 
based not only on the effort devoted to a patent or 
patent application, but also on the importance of the 
effort. While a series of peripheral involvements may 
be insubstantial, the single act of approving or participation 
in a critical step may be substantial. It is essential 
that the participation be related to a “particular 
patent or patent application.” (See paragraph 
(b)(3)(iii) of this section.) 

(B) Participation on ancillary matters. 
An Office employee’s participation on subjects not 
directly involving the substantive merits of a patent or 
patent application may not be “substantial,” even if it 
is time-consuming. An employee whose official 
responsibility is the review of a patent or patent application 
solely for compliance with administrative control 
or budgetary considerations and who reviews a 
particular patent or patent application for such a purpose 
should not be regarded as having participated 
substantially in the patent or patent application, 
except when such considerations also are the subject 
of the employee’s proposed representation. 
(C) Role of official responsibility in 
determining substantial participation. Official responsibility is defined in paragraph (b)(3)(v) of this section. 
“Personal and substantial participation” is 
different from “official responsibility.” One’s responsibility 
may, however, play a role in determining the 
“substantiality” of an Office employee’s participation. 
(v) Official responsibility means the direct 
administrative or operating authority, whether intermediate 
or final, and either exercisable alone or with 
others, and either personally or through subordinates, 
to approve, disapprove, or otherwise direct Government 
actions. 
(A) Determining official responsibility. 
Ordinarily, those areas assigned by statute, regulation, 
Executive Order, job description, or delegation of 
authority determine the scope of an employee’s “official 
responsibility”. All particular matters under consideration 
in the Office are under the “official 
responsibility” of the Director of the Office, and each 
is under that of any intermediate supervisor having 
responsibility for an employee who actually participates 
in the patent or patent application within the 


 

scope of his or her duties. A patent examiner would 
have “official responsibility” for the patent applications 
assigned to him or her. 

(B) Ancillary matters and official 
responsibility. Administrative authority as used in 
paragraph (v) of this section means authority for planning, 
organizing and controlling a patent or patent 
application rather than authority to review or make 
decisions on ancillary aspects of a patent or patent 
application such as the regularity of budgeting procedures, 
public or community relations aspects, or equal 
employment opportunity considerations. Responsibility 
for such an ancillary consideration does not constitute 
official responsibility for the particular patent or 
patent application, except when such a consideration 
is also the subject of the employee’s proposed representation. 
(C) Duty to inquire. In order for a former 
employee, e.g., former patent examiner, to be barred 
from representing or assisting in representing another 
as to a particular patent or patent application, he or 
she need not have known, while employed by the 
Office, that the patent or patent application was pending 
under his or her official responsibility. The former 
employee has a reasonable duty of inquiry to learn 
whether the patent or patent application had been 
under his or her official responsibility. Ordinarily, a 
former employee who is asked to represent another on 
a patent or patent application will become aware of 
facts sufficient to suggest the relationship of the prior 
matter to his or her former office, e.g., technology 
center, group or art unit. If so, he or she is under a 
duty to make further inquiry. It would be prudent for 
an employee to maintain a record of only patent application 
numbers of the applications actually acted 
upon by decision or recommendation, as well as those 
applications under the employee’s official responsibility 
which he or she has not acted upon. 
(D) Self-disqualification. A former employee, 
e.g., former patent examiner, cannot avoid the 
restrictions of this section through self-disqualification 
with respect to a patent or patent application for 
which he or she otherwise had official responsibility. 
However, an employee who through self-disqualification 
does not participate personally and substantially 
in a particular patent or patent application is not subject 
to the lifetime restriction of paragraph (b)(1) of 
this section. 


(vi) Pending means that the matter was in 
fact referred to or under consideration by persons 
within the employee’s area of official responsibility. 
(4) Measurement of the two-year restriction 
period. The two-year period under paragraph (b)(2) of 
this section is measured from the date when the 
employee’s official responsibility in a particular area 
ends, not from the termination of service in the Office, 
unless the two occur simultaneously. The prohibition 
applies to all particular patents or patent applications 
subject to such official responsibility in the one-year 
period before termination of such responsibility. 
(c) Former employees of the Office. This section 
imposes restrictions generally parallel to those 
imposed in 18 U.S.C. 207(a) and (b)(1). This section, 
however, does not interpret these statutory provisions 
or any other post-employment restrictions that may 
apply to former Office employees, and such former 
employees should not assume that conduct not prohibited 
by this section is otherwise permissible. 
Former employees of the Office, whether or not they 
are practitioners, are encouraged to contact the 
Department of Commerce for information concerning 
applicable post-employment restrictions. 
(d) An employee of the Office may not prosecute 
or aid in any manner in the prosecution of any 
patent application before the Office. 
(e) Practice before the Office by Government 
employees is subject to any applicable conflict of 
interest laws, regulations or codes of professional 
responsibility. 


[Added, 69 FR 35427, June 24, 2004, effective July 
26, 2004] 

§ 11.11 Notification.

 A registered attorney or agent must notify the OED 
Director of his or her postal address for his or her 
office, up to three e-mail addresses where he or she 
receives e-mail, and business telephone number, as 
well as every change to any of said addresses, or telephone 
numbers within thirty days of the date of the 
change. A registered attorney or agent shall, in addition 
to any notice of change of address and telephone 
number filed in individual patent applications, separately 
file written notice of the change of address or 
telephone number to the OED Director. A registered 
practitioner who is an attorney in good standing with 
the bar of the highest court of one or more States shall 

 

provide the OED Director with the State bar identifi-tion status as an attorney or agent of each registered 
cation number associated with each membership. The practitioner recognized to practice before the Office in 
OED Director shall publish from the roster a list con-patent cases. 
taining the name, postal business addresses, business 
telephone number, registration number, and registra-[Added, 69 FR 35427, June 24, 2004, effective July 

26, 2004] 

 

Index II – RULES RELATING TO
REPRESENTATION OF OTHERS BEFORE 
THE UNITED STATES PATENT AND 
TRADEMARK OFFICE


A 
Address change . . . . . . . . . . . . . . . . . . . . . . . 10.11, 11.11 
Advertising . . . . . . . . . . . . . . . . . . . . . . . . . .10.31, 10.32 
Agents, registration of. . . . . . . . . . . . . . . . . . . . . . . . 11.6 
Agreements restricting practice. . . . . . . . . . . . . . . . 10.38 
Aliens. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11.6, 11.9 
Applicant for patent, representation of . . . . . . 1.31, 11.10 
Attorneys, recognition of to practice in trademark 

cases. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.14 
Attorneys, registration of to practice in patent 

cases. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.6, 11.7 

B 
Breach of trust. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.23 
Business transactions or relations with client . . . . . 10.65 

C 
Candidate for judicial office . . . . . . . . . . . . . . . . . 10.103 
Canons and disciplinary rules . . . . . . . . . . 10.20 - 10.112 
Certificate of mailing. . . . . . . . . . . . . . 1.8, 10.23, 10.141 
Certification effect of signature. . . . . . . . . . . . . . . . 10.18 
Circumventing a disciplinary rule, amendment . . . 10.23 
Code of Professional Responsibility . . . . . 10.20 - 10.112 
Coercion, Use of. . . . . . . . . . . . . . . . . . . . . . . . . . . 10.23 
Committee on Discipline. . . . . . . . . . . . . . . . . . . . . . 10.4 
Communicating with person having adverse 

interest . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.67 
Communications concerning practitioner’s service 10.31 
Compensation for legal services . . . . . . . . . . . . . . . 10.68 
Competence. . . . . . . . . . . . . . . . . . . . . . . . . .10.76, 10.77 
Complaint instituting disciplinary proceedings. . . 10.134 
Concealment of material information . . . . . . . . . . . 10.23 
Conduct in proceeding before Office . . . . . . . . . . . 10.89 
Conduct prejudicial to the administration of 

justice. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.23 
Conflict of interest. . . . . . . . . . . . . . . . . . . . . . . . . . 10.66 
Conviction of criminaloffense . . . . . . . . . . . . . . . . 10.23 

D 
Deceit. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.23 
Decisions of the Commissioner. . . . . . . . . 10.156, 10.157 
Definitions: 

Affidavit.. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.1 

Agent. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.6 

Application . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.1 

Canon . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.20
Confidence . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.57
Differing interests. . . . . . . . . . . . . . . . . . . . . . . . .10.1
Director of Enrollment and Discipline . . . . . . . . . 10.1
Disciplinary rule. . . . . . . . . . . . . . . . . . . . . . . . .10.20
Excessive legal fees . . . . . . . . . . . . . . . . . . . . . .10.36
Excluded practitioner . . . . . . . . . . . . . . . . . . . . . .10.1
Giving information. . . . . . . . . . . . . . . . . . . . . . . .10.1
Invention development services . . . . . . . . . . . . . 10.23
Law firm. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Lawyer . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Legal counsel . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Legal profession. . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Legal service. . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Legal system. . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Non-practitioner . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Office . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Person. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Practitioner . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Proceeding before the Office . . . . . . . . . . . . . . . .10.1
Professional legal corporation . . . . . . . . . . . . . . . 10.1
Registration. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Respondent. . . . . . . . . . . . . . . . . . . . . . . . . . . .10.134
Secret . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.33, 10.57
State . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Suspended practitioner. . . . . . . . . . . . . . . . . . . . .10.1
Tribunal. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
United States. . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.1
Designation as registered attorney or agent . . . . . . . 10.34
Direct contact with prospective clients . . . . . . . . . . 10.33


Director of Enrollment and Discipline:
Appointment. . . . . . . . . . . . . . . . . . . . . . . . . . . . .11.2
Duties . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11.2
Review of decisions of OED Director . . . . . . . . . 11.2


Disbarment from practice on ethical grounds . . . . 10.130 

Discharge of attorney or agent by client. . . . . . . . . . 10.40 

Disciplinary proceedings and investigations:
Administrative Law Judge . . . . . . . . . . . . . . . .10.139
Administrative Procedures Act. . . . . . 10.132, 10.144
Review of interlocutory orders by
Administrative Law Judge . . . . . . . . . . . . . . .10.139
Amendment of complaint. . . . . . . . . . . . . . . . .10.145
Amendment of pleadings . . . . . . . . . . . . . . . . .10.145
Answer to complaint.. . . . . . . . . . . . . . . . . . . .10.136
Appeal of initial decision of Administrative
Law Judge . . . . . . . . . . . . . . . . . . . . . . . . . . .10.155
Burden of proof . . . . . . . . . . . . . . . . . . . . . . . .10.149
Certificate of mailing. . . . . . . . . . . . . . . . 1.8, 10.141
Complaint. . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.134
Contested case . . . . . . . . . . . . . . . . . . . . . . . . .10.138
Deliberations of Committee on Discipline . . . . . . 10.4


 

Discovery (see also Discovery in Disciplinary 

Proceedings) . . . . . . . . . . . . . . . . . . . . . . . . . 10.152 
Exception to ruling. . . . . . . . . . . . . . . . . . . . . . 10.150 
Filing papers after complaint filed. . . . . . . . . . 10.141 
Hearings before Administrative Law Judge . . 10.144 
Initial decision of Administrative 

Law Judge . . . . . . . . . . . . . . . . . . . . .10.139, 10.154 
Initiating disciplinary proceeding . . . . . . . . . . 10.132 
Investigations of violations of 

disciplinary rules. . . . . . . . . . . . . . . . . . . . . . 10.131 
Notice of suspension or exclusion of 

practitioner.. . . . . . . . . . . . . . . . . . . . . . . . . . 10.159 
Objections to evidence. . . . . . . . . . . . . . . . . . . 10.150 
Post hearing memorandum . . . . . . . . . . . . . . . 10.153 
Pre-hearing statement . . . . . . . . . . . . . . . . . . . 10.153 
Reinstatement of suspended or excluded 

practitioner. . . . . . . . . . . . . . . . . . . . . . . . . . 10.160 
Reprimand of registered attorney or agent . . . 10.130, 

10.132 
Resignation of practitioner. . . . . . . . . . . . . . . . 10.133 
Review of Commissioner’s final decision . . . . 10.157 
Review of decision denying reinstatement 

of practitioner . . . . . . . . . . . . . . . . . . . . . . . . . . 11.2 
Savings clause . . . . . . . . . . . . . . . . . . . . . . . . . 10.161 
Service of complaint . . . . . . . . . . . . . . . . . . . . 10.135 
Settlement of complaint. . . . . . . . . . . . . . . . . . 10.133 
Stay pending review of interlocutory order . . . 10.139 
Supplemental complaint . . . . . . . . . . . . . . . . . 10.137 

Disciplinary rule violation 
Disclosure of . . . . 10.23, 10.24, 10.84, 10.85, 10.131 

Discourteous conduct . . . . . . . . . . . . . . . . . . . . . . . 10.89 

Discovery in disciplinary proceedings: 

Copying of documents. . . . . . . . . . . . . . . . . . . 10.152 
Cross-examination. . . . . . . . . . . . . . . . . . . . . . 10.152 
Deliberations of committee on discipline . . . . . . 10.4 
Depositions . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.151 
Evidence. . . . . . . . . . . . . . . . . . . . . . . .10.150, 10.152 
Impeachment. . . . . . . . . . . . . . . . . . . . . . . . . . 10.152 
Inspection of documents . . . . . . . . . . . . . . . . . 10.152 
Interrogatories . . . . . . . . . . . . . . . . . . . . . . . . . 10.152 
Motions filed with Administrative Law Judge 10.143, 

10.152 
Privileged information. . . . . . . . . . . . . . . . . . . 10.152 
Undue delay in proceedings. . . . . . . . . . . . . . . 10.152 

Division of legal fees. . . . . . . . . . . . . . . . . . . . . . . . 10.37 
Duress, use of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.23 
Duty to make counsel available. . . . . . . . . . . . . . . . 10.30 

E 

Employment: 
Acceptance. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.39 
Failure to carry out contract. . . . . . . . . . . . . . . . 10.84 

Refusing employment. . . . . . . . . .10.62, 10.63, 10.66 

Withdrawal from employment . . . 10.40, 10.63, 10.66 
Exception to ruling. . . . . . . . . . . . . . . . . . . . . . . . .10.151 
Excessive legal fees . . . . . . . . . . . . . . . . . . . . . . . . .10.36 
Exclusion of practitioner . . . . . . . 10.130, 10.132, 10.158 

F 

Failure to disclose material fact with regard 

to registration . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.22 
Failure to notify client . . . . . . . . . . . . . . . . . . . . . . .10.23 
False accusations . . . . . . . . . . . . . . . . . . . . . . . . . . .10.23 
False statements concerning officials . . . . . . . . . . . 10.102 
Favors, improperly bestowing . . . . . . . . . . . . . . . . .10.23 
Fees: 

Petition to review decision of Director 

of Enrollment and Discipline . . . . . . . . . . . . . . .11.2 
Registration. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11.8 
Registration examination . . . . . . . . . . . . . . . . . . .11.7 
Reinstatement. . . . . . . . . . . . . . . . . . . . . . . . . . .10.11 
Fees for legal services . . . . . . . . . . . . . . . . . . . . . . .10.36 
Firm name, use of. . . . . . . . . . . . . . . . . . . . . . . . . . .10.35 
Fitness to practice before the Office. . . . . . . . . . . . .10.23 
Foreigners. . . . . . . . . . . . . . . . . . . . . . . .10.14, 11.6, 11.9 
Former Patent and Trademark Office employees. . 10.23, 

11.7, 11.10 
Fraud or inequitable conduct . . . . . . . . . . . . 10.23, 10.85 
Frivolous complaint . . . . . . . . . . . . . . . . . . . . . . . . .10.23 
Funds of client, preserving identity of . . . . . . . . . . 10.112 

G 
Gift, improperly bestowing . . . .. . . . . . . . . . . . . . .10.23 
Government employees, registration of to practice 

in patent cases. . . . . . . . . . . . . . . . . . . . . . . . . . . .11.10 

I 
Illegal conduct involving moral turpitude . . . . . . . . 10.23 
Illegal fees for services. . . . . . . . . . . . . . . . . . . . . . .10.36 
Improper alteration of patent application . . . . . . . . . 10.23 
Improper execution of oath or declaration . . . . . . . . 10.23 
Improper influence. . . . . . . . . . . . . . . . . . . . . . . . . .10.23 
Improper signature . . . . . . . . . . . . . . . . . . . . 10.18, 10.23 
Improperly bestowing thing of value . . . . . . . . . . . . 10.23 
Incompetence . . . . . . . . . . . . . . . . . . . . . . . . 10.77, 10.78 
Indecent statement, making of.. . . . . . . . . . . . . . . . .10.23 
Independent professional judgment, 

exercise of. . . . . . . . . . . . . . 10.61, 10.62, 10.66, 10.68 
Individual unqualified in respect to 

character, education, etc. . . . . . . . . . . . . . . 10.22, 11.7 
Influence by others than client. . . . . . . . . . . . . . . . .10.68 
Information precluding registration, failure 

to disclose . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.22 

 

Initial decision of Administrative Law Judge . . . . 10.139, 

10.154 
Integrity and competence of the legal profession, 
maintaining of . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.22 
Interest in litigation or proceeding before Office, 

acquiring of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.64 
Investigation of violations of disciplinary rules . . 10.131 

J 
Joint venture . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.23 
Judicial office, candidate for.. . . . . . . . . . . . . . . . 10.103 

L 
Legal fees: 

Division of. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.37 

Failure to pay. . . . . . . . . . . . . . . . . . . . . . . . . . . 10.40 

Sharing of . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.48 
Legal system, assistance in improving the . . . . . . 10.100 
Letterheads, use of. . . . . . . . . . . . . . . . . . . . . . . . . . 10.35 
Limited recognition to practice in patent matters . . . 11.9 

M 
Malpractice, limiting client’s liability . . . . . . . . . . . 10.78 
Materially false statements in application for 

registration. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.22 
Misappropriation of funds. . . . . . . . . . . . . . . . . . . . 10.23 
Misconduct . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.23 
Misrepresentations. . . . . . . . . . . . . . . . . . . . .10.22, 10.23 
Multiple employment . . . . . . . . . . . . . . . . . . . . . . . 10.66 

N 
Neglecting legal matters . . . . . . . . . . . . . . . . . . . . . 10.77 
Non-practitioner, formation of partnership with . . . 10.49 
Notice of suspension or exclusion. . . . . . . . . . . . . 10.159 

O 
Oath requirement. . . . . . . . . . . . . . . . . . . . . . . . . . . . 11.8 
Officials, contact with. . . . . . . . . . . . . . . . . . . . . . . 10.93 

P 
Petitions: 

Reinstatement . . . . . . . . . . . . . . . . . . . . . . . . . 10.160 

Review decision of Commissioner . . . . . . . . . 10.157 

Review decision of Director of Enrollment 
and Discipline. . . . . . . . . . . . . . . . . . . . . . . . . . .11.2 
Suspension of rules. . . . . . . . . . . . . . . . . . . . . .10.170 
Preserve secrets and confidence of client. . . 10.56, 10.57 
Professional impropriety, avoiding 
appearance of . . . . . . . . . . . . . . . . . . . . .10.110, 10.111 
Promise of advantage, offer of. . . . . . . . . . . . . . . . .10.23 
Property of client . . . . . . . . . . . . . . . . . . . . . . . . . .10.112 
Proprietary interest in subject matter . . . . . . . . . . . . 10.64 
Publication in Official Gazette . . . . 10.11, 10.159, 10.160 

R 

Recognition to practice before the Patent and 
Trademark Office: 
Agents. . . . . . . . . . . . . . . . . . . .10.14, 11.5, 11.6, 11.7 
Aliens . . . . . . . . . . . . . . . . . . . .10.14, 11.5, 11.6, 11.7 
Attorneys . . . . . . . . . . . . . . . . .10.14, 11.5, 11.6, 11.7 
Change of address, requirement to 
notify Director . . . . . . . . . . . . . . . . . . . .10.11, 11.11 
Examination for registration in patent cases. . . . . 11.7 
Examination fees . . . . . . . . . . . . . . . . . . . . 1.21, 11.7 
Foreigners. . . . . . . . . . . . . . . . . . . . . 10.14, 11.6, 11.9 
Former Patent and Trademark Office 
employees. . . . . . . . . . . . . . . . . . . 10.23, 11.7, 11.10 
Government employees . . . . . . . . . . . . . 10.23, 11.10 
Limited recognition in patent cases . . . . . . . . . . . 11.9 
Non-lawyers, recognition in trademark cases. . . 10.14 
Recognition for representation . . . . . . . . . 1.34, 10.14 
Refusal to recognize practitioner . . . . . . . . . . . . 10.15 
Register of attorneys and agents in patent 
cases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.5 
Registration fee. . . . . . . . . . . . . . . . . . . . . . . . . . .1.21 
Registration number. . . . . . . . . . . . . . . . . . . . . . .1.34 
Removal of attorneys and agents from the 
register . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.11 
Representation by registered attorney or agent 
in patent cases. . . . . . . . . . . . . . . . . . . . . . . . . . .1.31 
Requirements for registration. . . . . . . . . . . . . . . .11.7 
Review of Director’s decision refusing 
registration . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11.2 
Trademark cases. . . . . . . . . . . . . . . . . . . . . . . . .10.14 
Unauthorized representation by an 
agent. . . . . . . . . . . . . . . . . . . . . . . . . . . 10.31, 11.10 
Records, property and funds of client, 
maintaining of. . . . . . . . . . . . . . . . . . . . . . . . . . .10.112 

 

Reinstatement after removal from the

 register . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.11 
Reinstatement of suspended or excluded 

non-practitioner . . . . . . . . . . . . . . . . . . . . . . . . . 10.160 
Representing client within bounds of the law . . . . . 10.85 
Reprimand of registered attorney 

or agent. . . . . . . . . . . . . . . . . . . . . . . . . .10.130, 10.132 
Resignation . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.133 

S 
Scandalous statements, making of. . . . . . . . . . . . . . 10.23 
Secrets and confidence, preservation of clients. . . . 10.56,

 10.57 
Settlement of claims of clients . . . . . . . . . . . . . . . . 10.67 
Sharing legal fees . . . . . . . . . . . . . . . . . . . . . . . . . . 10.48 
Signature and certificate of practitioner . . . . . . . . . 10.18 
Solicitation.. . . . . . . . . . . . . . . . . . . . . . . . . .10.32, 10.33 
Statement concerning officials, making 

false . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.102 
Suspension of 
practitioner . . . . . . . . . . . 10.23, 10.130, 10.132, 10.158 
Suspension of rules . . . . . . . . . . . . . . . . . . . . . . . . 10.170 

T
Threats of criminal prosecution . . . . . . . . . . . . . . . .10.88
Threats, use of . . . . . . . . . . . . . . . . . . . . . . . . . . . . .10.23


U
Unauthorized practice. . 10.14, 10.23, 10.31, 10.46, 10.47
Undignified conduct.. . . . . . . . . . . . . . . . . . . . . . . .10.89


V
Violating duty of candor and good faith. . . . . . . . . .10.23
Violation of disciplinary rule, misconduct . . . . . . . . 10.23


W
Withdrawal from employment . . . . . . . . . . . . . . . . .10.40
Withdrawal material information . . . . . . . . . 10.22, 10.23
Witnesses . . . . . . . . . . . . . . . . . . . . . . . . . . . 10.63, 10.92


Z 

Zealously representing the client . . . . . . . . . 10.83, 10.84 

 

PART 15 — [Reserved] 

[Part 15 removed and reserved, 61 FR 42807, Aug. 19, 
1996] 

PART 15a — [Reserved] 

[Part 15a removed and reserved, 61 FR 42807, Aug. 
19, 1996] 

PART 41 — PRACTICE BEFORE THE 
BOARD OF PATENT APPEALS AND 
INTERFERENCES


Subpart A—General Provisions 

GENERAL INFORMATION 

Sec. 

41.1 Policy.


41.2 Definitions. 


41.3 Petitions. 


41.4 Timeliness. 


41.5 Counsel.


41.6 Public availability of Board records. 


41.7 Management of the record. 


41.8 Mandatory notices. 


41.9 Action by owner. 


41.10 Correspondence addresses. 


41.11 Ex parte communications in inter partes 
proceedings.


41.12 Citation of authority.


41.20 Fees.


Subpart B—Ex Parte Appeals 

41.30 Definitions. 


41.31 Appeal to Board. 


41.33 Amendments and affidavits or other evidence after 
appeal. 


41.35 Jurisdiction over appeal. 


41.37 Appeal brief. 


41.39 Examiner’s answer. 


41.41 Reply brief.


41.43 Examiner’s response to reply brief. 


41.47 Oral hearing. 


41.50 Decisions and other actions by the Board.


41.52 Rehearing.


41.54 Action following decision.


Subpart C—Inter Partes Appeals 

41.60 Definitions.


41.61 Notice of appeal and cross appeal to Board. 


41.63 Amendments and affidavits or other evidence after 
appeal. 


41.64 Jurisdiction over appeal in inter partes 
reexamination. 


41.66 Time for filing briefs. 


41.67 Appellant’s brief. 


41.68 Respondent’s brief. 


41.69 Examiner’s answer. 


41.71 Rebuttal brief. 


41.73 Oral hearing.


41.77 Decisions and other actions by the Board. 


41.79 Rehearing. 


41.81 Action following decision.


Subpart D—Contested Cases 

41.100 Definitions. 


41.101 Notice of proceeding. 


41.102 Completion of examination.


41.103 Jurisdiction over involved files. 


41.104 Conduct of contested case. 


41.106 Filing and service. 


41.108 Lead counsel. 


41.109Access to and copies of Office records. 


41.110 Filing claim information. 


41.120 Notice of basis for relief. 


41.121 Motions. 


41.122 Oppositions and replies. 


41.123 Default filing times. 


41.124 Oral argument. 


41.125 Decision on motions. 


41.126 Arbitration. 


41.127 Judgment. 


41.128 Sanctions. 


41.150 Discovery.


41.151 Admissibility. 


41.152Applicability of the Federal Rules of Evidence. 


41.153 Records of the Office. 


41.154 Form of evidence. 


41.155 Objection; motion to exclude; motion in limine. 


 

41.156 Compelling testimony and production. 

41.157 Taking testimony. 

41.158 Expert testimony; tests and data. 

Subpart E—Patent Interferences 

41.200 Procedure; pendency. 

41.201 Definitions. 

41.202 Suggesting an interference. 

41.203 Declaration. 

41.204 Notice of basis for relief. 

41.205 Settlement agreements. 

41.206 Common interests in the invention. 

41.207 Presumptions. 

41.208 Content of substantive and responsive motions. 

Subpart A — General Provisions 

§ 41.1 Policy. 

(a) Scope. Part 41 governs proceedings before 
the Board of Patent Appeals and Interferences. Sections 
1.1 to 1.36 and 1.181 to 1.183 of this title also 
apply to practice before the Board, as do other sections 
of part 1 of this title that are incorporated by reference 
into part 41. 
(b) Construction. The provisions of Part 41 
shall be construed to secure the just, speedy, and inexpensive 
resolution of every proceeding before the 
Board. 
(c) Decorum. Each party must act with courtesy 
and decorum in all proceedings before the Board, 
including interactions with other parties. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 41.2 Definitions. 

Unless otherwise clear from the context, the following 
definitions apply to proceedings under this 
part: 

Affidavit means affidavit, declaration under § 1.68 
of this title, or statutory declaration under 28 U.S.C. 
1746. A transcript of an ex parte deposition may be 
used as an affidavit in a contested case. 

Board means the Board of Patent Appeals and 
Interferences and includes: 

(1) For a final Board action: 

(i) In an appeal or contested case, a panel of 
the Board. 
(ii) In a proceeding under § 41.3, the Chief 
Administrative Patent Judge or another official acting 
under an express delegation from the Chief Administrative 
Patent Judge. 
(2) For non-final actions, a Board member or 
employee acting with the authority of the Board. 


Board member means the Under Secretary of Commerce 
for Intellectual Property and Director of the 
United States Patent and Trademark Office, the Deputy 
Under Secretary of Commerce for Intellectual 
Property and Deputy Director of the United States 
Patent and Trademark Office, the Commissioner for 
Patents, the Commissioner for Trademarks, and the 
administrative patent judges. 

Contested case means a Board proceeding other 
than an appeal under 35 U.S.C. 134 or a petition under 
§ 41.3. An appeal in an inter partes reexamination is 
not a contested case. 

Final means, with regard to a Board action, final 
for the purposes of judicial review. A decision is final 
only if: 

(1) In a panel proceeding. The decision is rendered 
by a panel, disposes of all issues with regard to 
the party seeking judicial review, and does not indicate 
that further action is required; and 
(2) In other proceedings. The decision disposes 
of all issues or the decision states it is final. 
Hearing means consideration of the issues of 
record. Rehearing means reconsideration. 
Office means United States Patent and Trademark 
Office. 
Panel means at least three Board members acting 
in a panel proceeding. 


Panel proceeding means a proceeding in which 
final action is reserved by statute to at least three 
Board members, but includes a non-final portion of 
such a proceeding whether administered by a panel or 
not. 

Party, in this part, means any entity participating 
in a Board proceeding, other than officers and 
employees of the Office, including: 

(1) An appellant; 
(2) A participant in a contested case; 
(3) A petitioner; and 
(4) Counsel for any of the above, where con


text permits. 

 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.3 Petitions. 

(a) Deciding official. Petitions must be addressed 
to the Chief Administrative Patent Judge. A 
panel or an administrative patent judge may certify a 
question of policy to the Chief Administrative Patent 
Judge for decision. The Chief Administrative Patent 
Judge may delegate authority to decide petitions. 
(b) Scope. This section covers petitions on matters 
pending before the Board (§§ 41.35, 41.64, 
41.103, and 41.205); otherwise, see §§ 1.181 to 1.183 
of this title. The following matters are not subject to 
petition: 
issues. See § 41.121 (a)(3) and § 41.125 (c). 


(c) Petition fee. The fee set in § 41.20 (a) must 
accompany any petition under this section except no 
fee is required for a petition under this section seeking 
supervisory review. 
(d) Effect on proceeding. The filing of a petition 
does not stay the time for any other action in a Board 
proceeding. 
(e) Time for action. (1) Except as otherwise 
provided in this part or as the Board may authorize in 
writing, a party may: 
(i) File the petition within 14 days from the 
date of the action from which the party is requesting 
relief, and 
(ii) File any request for reconsideration of 
a petition decision within 14 days of the decision on 
petition or such other time as the Board may set. 


(1) Issues committed by statute to a panel, 
and 
(2) In pending contested cases, procedural 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004; para. (e)(1) revised, 69 FR 58260, Sept. 30, 2004, 
effective Sept. 30, 2004] 

§ 41.4 Timeliness. 

(a) Extensions of time. Extensions of time will 
be granted only on a showing of good cause except as 
otherwise provided by rule. 
(b) Late filings. (1) A late filing that results in 
either an application becoming abandoned or a reexamination 
proceeding becoming terminated under §§ 


1.550(d) or 1.957(b) or (c) of this title may be revived 
as set forth in § 1.137 of this title. 

(2) A late filing that does not result in either 
an application becoming abandoned or a reexamination 
proceeding becoming terminated under §§ 
1.550(d) or 1.957(b) or (c) of this title will be excused 
upon a showing of excusable neglect or a Board determination 
that consideration on the merits would be in 
the interest of justice. 
(c) Scope. This section governs all proceedings 
before the Board, but does not apply to filings related 
to Board proceedings before or after the Board has 
jurisdiction, such as: 


(1) Extensions during prosecution (see § 

1.136 of this title), 

(2) Filing of a brief or request for oral hearing 
(see §§ 41.37, 41.41, 41.47, 41.67, 41.68, 41.71 
and 41.73), or 

(3) Seeking judicial review (see §§1.301 to 

1.304 of this title). 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.5 Counsel. 

While the Board has jurisdiction: 

(a) Appearance pro hac vice. The Board may 
authorize a person other than a registered practitioner 
to appear as counsel in a specific proceeding. 
(b) Disqualification. (1) The Board may disqualify 
counsel in a specific proceeding after notice 
and an opportunity to be heard. 
(2) A decision to disqualify is not final for 
the purposes of judicial review until certified by the 
Chief Administrative Patent Judge. 
(c) Withdrawal. Counsel may not withdraw 
from a proceeding before the Board unless the Board 
authorizes such withdrawal. See § 10.40 of this title 
regarding conditions for withdrawal. 
(d) Procedure. The Board may institute a 
proceeding under this section on its own or a party in 
a contested case may request relief under this section. 
(e) Referral to the Director of Enrollment 
and Discipline. Possible violations of the disciplinary 
rules in part 10 of this title may be referred to the 
Office of Enrollment and Discipline for investigation. 
See § 10.131 of this title. 


 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.6 Public availability of Board records. 

(a) Publication. (1) Generally. Any Board 
action is available for public inspection without a 
party’s permission if rendered in a file open to the 
public pursuant to § 1.11 of this title or in an application 
that has been published in accordance with §§ 

1.211 to 1.221 of this title. The Office may independently 
publish any Board action that is available for 
public inspection. 

(2) Determination of special circumstances. 
Any Board action not publishable under paragraph 
(a)(1) of this section may be published or made available 
for public inspection if the Director believes that 
special circumstances warrant publication and a party 
does not, within two months after being notified of the 
intention to make the action public, object in writing 
on the ground that the action discloses the objecting 
party’s trade secret or other confidential information 
and states with specificity that such information is not 
otherwise publicly available. If the action discloses 
such information, the party shall identify the deletions 
in the text of the action considered necessary to protect 
the information. If the affected party considers 
that the entire action must be withheld from the public 
to protect such information, the party must explain 
why. The party will be given time, not less than 
twenty days, to request reconsideration and seek court 
review before any contested portion of the action is 
made public over its objection. 
(b) Record of proceeding. (1) The record of a 
Board proceeding is available to the public unless a 
patent application not otherwise available to the public 
is involved. 
(2) Notwithstanding paragraph (b)(1) of this 
section, after a final Board action in or judgment in a 
Board proceeding, the record of the Board proceeding 
will be made available to the public if any involved 
file is or becomes open to the public under § 1.11 of 
this title or an involved application is or becomes published 
under §§ 1.211 to 1.221 of this title. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.7 Management of the record. 

(a) The Board may expunge any paper directed 
to a Board proceeding, or filed while an application or 
patent is under the jurisdiction of the Board, that is not 
authorized under this part or in a Board order, or that 
is filed contrary to a Board order. 
(b) A party may not file a paper previously filed 
in the same Board proceeding, not even as an exhibit 
or appendix, without Board authorization or as 
required by rule. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.8 Mandatory notices. 

(a) In an appeal brief (§§ 41.37, 41.67, or 
41.68) or at the initiation of a contested case (§ 
41.101), and within 20 days of any change during the 
proceeding, a party must identify: 
(1) Its real party-in-interest, and 


(2) Each judicial or administrative proceeding 
that could affect, or be affected by, the Board proceeding. 
(b) For contested cases, a party seeking judicial 
review of a Board proceeding must file a notice with 
the Board of the judicial review within 20 days of the 
filing of the complaint or the notice of appeal. The 
notice to the Board must include a copy of the complaint 
or notice of appeal. See also §§ 1.301 to 1.304 
of this title. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.9 Action by owner. 

(a) Entire interest. An owner of the entire interest 
in an application or patent involved in a Board 
proceeding may act in the proceeding to the exclusion 
of the inventor (see 3.73 (b) of this title). 
(b) Part interest. An owner of a part interest in 
an application or patent involved in a Board proceeding 
may petition to act in the proceeding to the exclusion 
of an inventor or a co-owner. The petition must 
show the inability or refusal of an inventor or coowner 
to prosecute the proceeding or other cause why 
it is in the interest of justice to permit the owner of a 
part interest to act in the proceeding. An order granting 
the petition may set conditions on the actions of 
the parties during the proceeding. 


 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.10 Correspondence addresses. 

Except as the Board may otherwise direct, 

(a) Appeals. Correspondence in an application 
or a patent involved in an appeal (subparts B and C of 
this part) during the period beginning when an appeal 
docketing notice is issued and ending when a decision 
has been rendered by the Board, as well as any request 
for rehearing of a decision by the Board, shall be 
mailed to: Board of Patent Appeals and Interferences, 
United States Patent and Trademark Office, PO Box 
1450, Alexandria, Virginia 22313-1450. Notices of 
appeal, appeal briefs, reply briefs, requests for oral 
hearing, as well as all other correspondence in an 
application or a patent involved in an appeal to the 
Board for which an address is not otherwise specified, 
should be addressed as set out in § 1.1 (a)(1)(i) of this 
title. 
(b) Contested cases. Mailed correspondence in 
contested cases (subpart D of this part) shall be sent to 
Mail Stop INTERFERENCE, Board of Patent 
Appeals and Interferences, United States Patent and 
Trademark Office, PO Box 1450, Alexandria, Virginia 
22313-1450. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.11 Ex parte communications in inter partes 
proceedings.

 An ex parte communication about an inter partes 
reexamination (subpart C of this part) or about a contested 
case (subparts D and E of this part) with a 
Board member, or with a Board employee assigned to 
the proceeding, is not permitted. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.12 Citation of authority. 

(a) Citations to authority must include: 

(1) For any United States Supreme Court 
decision, a United States Reports citation. 
(2) For any decision other than a United 
States Supreme Court decision, parallel citation to 
both the West Reporter System and to the United 
States Patents Quarterly whenever the case is pub


lished in both. Other parallel citations are discouraged. 


(3) Pinpoint citations whenever a specific 
holding or portion of an authority is invoked. 
(b) Non-binding authority should be used sparingly. 
If the authority is not an authority of the Office 
and is not reproduced in one of the reporters listed in 
paragraph (a) of this section, a copy of the authority 
should be filed with the first paper in which it is cited. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.20 Fees. 

(a) Petition fee. The fee for filing a petition 
under this part is: . . . . . . . .. . . . . . . . . . . . . . $400.00 
(b) Appeal fees. (1) For filing a notice of appeal 
from the examiner to the Board: 
By a small entity (§ 1.27(a) of this 
title) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $250.00 
By other than a small entity . . . . .$500.00 


(2) In addition to the fee for filing a notice of 
appeal, for filing a brief in support of an appeal: 
By a small entity (§ 1.27(a) of this 
title) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $250.00 
By other than a small entity . . . . $500.00 


(3) For filing a request for an oral hearing 
before the Board in an appeal under 35 U.S.C. 134: 
By a small entity (§ 1.27(a) of this 


title) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . $500.00 
By other than a small entity . . . $1,000.00 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004; paras. (b)(1) through (b)(3) revised, 69 FR 
52604, Aug. 27, 2004, effective Oct. 1, 2004; para. (b)(3) 
corrected, 69 FR 55505, Sept. 15, 2004, effective Oct. 1, 
2004; para. (a) revised, 69 FR 56481, Sept. 21, 2004, effective 
Nov. 22, 2004; para. (b) revised, 70 FR 3880, Jan. 27, 
2005, effective Dec. 8, 2004] 

Subpart B — Ex Parte Appeals 

§ 41.30 Definitions.

 In addition to the definitions in § 41.2, the following 
definitions apply to proceedings under this subpart 
unless otherwise clear from the context: 

Applicant means either the applicant in a national 
application for a patent or the applicant in an application 
for reissue of a patent. 

 

Owner means the owner of the patent undergoing 
ex parte reexamination under § 1.510 of this title. 

Proceeding means either a national application for 
a patent, an application for reissue of a patent, or an ex 
parte reexamination proceeding. Appeal to the Board 
in an inter partes reexamination proceeding is controlled 
by subpart C of this part. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.31 Appeal to Board. 

(a) Who may appeal and how to file an appeal. 

(1) Every applicant, any of whose claims has been 
twice rejected, may appeal from the decision of the 
examiner to the Board by filing a notice of appeal 
accompanied by the fee set forth in § 41.20(b)(1) 
within the time period provided under § 1.134 of this 
title for reply. 
(2) Every owner of a patent under ex parte 
reexamination filed under § 1.510 of this title before 
November 29, 1999, any of whose claims has been 
twice rejected, may appeal from the decision of the 
examiner to the Board by filing a notice of appeal 
accompanied by the fee set forth in § 41.20(b)(1) 
within the time period provided under § 1.134 of this 
title for reply. 
(3) Every owner of a patent under ex parte 
reexamination filed under § 1.510 of this title on or 
after November 29, 1999, any of whose claims has 
been finally (§ 1.113 of this title) rejected, may appeal 
from the decision of the examiner to the Board by filing 
a notice of appeal accompanied by the fee set 
forth in § 41.20(b)(1) within the time period provided 
under § 1.134 of this title for reply. 
(b) The signature requirement of § 1.33 of this 
title does not apply to a notice of appeal filed under 
this section. 
(c) An appeal, when taken, must be taken from 
the rejection of all claims under rejection which the 
applicant or owner proposes to contest. Questions 
relating to matters not affecting the merits of the 
invention may be required to be settled before an 
appeal can be considered. 
(d) The time periods set forth in paragraphs 
(a)(1) through (a)(3) of this section are extendable 
under the provisions of § 1.136 of this title for patent 
applications and § 1.550(c) of this title for ex parte 
reexamination proceedings. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.33 Amendments and affidavits or other evidence after appeal. 

(a) Amendments filed after the date of filing an 
appeal pursuant to § 41.31(a)(1) through (a)(3) and 
prior to the date a brief is filed pursuant to § 41.37 
may be admitted as provided in § 1.116 of this title. 
(b) Amendments filed on or after the date of filing 
a brief pursuant to § 41.37 may be admitted: 
(1) To cancel claims, where such cancellation 
does not affect the scope of any other pending claim 
in the proceeding, or 
(2) To rewrite dependent claims into independent 
form. 
(c) All other amendments filed after the date of 
filing an appeal pursuant to § 41.31(a)(1) through 
(a)(3) will not be admitted except as permitted by §§ 
41.39(b)(1), 41.50(a)(2)(i), 41.50(b)(1) and 41.50(c). 
(d)(1) An affidavit or other evidence filed after 
the date of filing an appeal pursuant to § 41.31(a)(1) 
through (a)(3) and prior to the date of filing a brief 
pursuant to § 41.37 may be admitted if the examiner 
determines that the affidavit or other evidence overcomes 
all rejections under appeal and that a showing 
of good and sufficient reasons why the affidavit or 
other evidence is necessary and was not earlier presented 
has been made. 


(2) All other affidavits or other evidence 
filed after the date of filing an appeal pursuant to § 
41.31(a)(1) through (a)(3) will not be admitted except 
as permitted by §§ 41.39(b)(1), 41.50(a)(2)(i) and 
41.50(b)(1). 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.35 Jurisdiction over appeal. 

(a) Jurisdiction over the proceeding passes to 
the Board upon transmittal of the file, including all 
briefs and examiner’s answers, to the Board. 
(b) If, after receipt and review of the proceeding, 
the Board determines that the file is not complete 
or is not in compliance with the requirements of this 
subpart, the Board may relinquish jurisdiction to the 
examiner or take other appropriate action to permit 
completion of the file. 


 

(c) Prior to the entry of a decision on the appeal 
by the Board, the Director may sua sponte order the 
proceeding remanded to the examiner. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.37 Appeal brief. 

(a)(1)Appellant must file a brief under this section 
within two months from the date of filing the notice of 
appeal under § 41.31. 

(2) The brief must be accompanied by the fee 
set forth in § 41.20(b)(2) 
(b) On failure to file the brief, accompanied by 
the requisite fee, within the period specified in paragraph 
(a) of this section, the appeal will stand dismissed. 
(c)(1)The brief shall contain the following items 
under appropriate headings and in the order indicated 
in paragraphs (c)(1)(i) through (c)(1)(x) of this section, 
except that a brief filed by an appellant who is 
not represented by a registered practitioner need only 
substantially comply with paragraphs (c)(1)(i) 
through (c)(1)(iv) and (c)(1)(vii) through (c)(1)(x) of 
this section: 


(i) Real party in interest. A statement 
identifying by name the real party in interest. 
(ii) Related appeals and interferences. A 
statement identifying by application, patent, appeal or 
interference number all other prior and pending 
appeals, interferences or judicial proceedings known 
to appellant, the appellant’s legal representative, or 
assignee which may be related to, directly affect or be 
directly affected by or have a bearing on the Board’s 
decision in the pending appeal. Copies of any decisions 
rendered by a court or the Board in any proceeding 
identified under this paragraph must be included 
in an appendix as required by paragraph (c)(1)(x) of 
this section. 


(iii) Status of claims. A statement of the status 
of all the claims in the proceeding (e.g., rejected, 
allowed or confirmed, withdrawn, objected to, canceled) 
and an identification of those claims that are 
being appealed. 

(iv) Status of amendments. A statement of 
the status of any amendment filed subsequent to final 
rejection. 
(v) Summary of claimed subject matter. A 
concise explanation of the subject matter defined in 


each of the independent claims involved in the appeal, 
which shall refer to the specification by page and line 
number, and to the drawing, if any, by reference characters. 
For each independent claim involved in the 
appeal and for each dependent claim argued separately 
under the provisions of paragraph (c)(1)(vii) of 
this section, every means plus function and step plus 
function as permitted by 35 U.S.C. 112, sixth paragraph, 
must be identified and the structure, material, 
or acts described in the specification as corresponding 
to each claimed function must be set forth with reference 
to the specification by page and line number, and 
to the drawing, if any, by reference characters. 

(vi) Grounds of rejection to be reviewed on 
appeal. A concise statement of each ground of rejection 
presented for review. 

(vii) Argument. The contentions of appellant 
with respect to each ground of rejection presented for 
review in paragraph (c)(1)(vi) of this section, and the 
basis therefor, with citations of the statutes, regulations, 
authorities, and parts of the record relied on. 
Any arguments or authorities not included in the brief 
or a reply brief filed pursuant to § 41.41 will be 
refused consideration by the Board, unless good cause 
is shown. Each ground of rejection must be treated 
under a separate heading. For each ground of rejection 
applying to two or more claims, the claims may be 
argued separately or as a group. When multiple claims 
subject to the same ground of rejection are argued as a 
group by appellant, the Board may select a single 
claim from the group of claims that are argued 
together to decide the appeal with respect to the group 
of claims as to the ground of rejection on the basis of 
the selected claim alone. Notwithstanding any other 
provision of this paragraph, the failure of appellant to 
separately argue claims which appellant has grouped 
together shall constitute a waiver of any argument that 
the Board must consider the patentability of any 
grouped claim separately. Any claim argued separately 
should be placed under a subheading identifying 
the claim by number. Claims argued as a group 
should be placed under a subheading identifying the 
claims by number. A statement which merely points 
out what a claim recites will not be considered an 
argument for separate patentability of the claim. 

(viii) Claims appendix. An appendix containing 
a copy of the claims involved in the appeal. 

 

(ix) Evidence appendix. An appendix containing 
copies of any evidence submitted pursuant to 
§§ 1.130, 1.131, or 1.132 of this title or of any other 
evidence entered by the examiner and relied upon by 
appellant in the appeal, along with a statement setting 
forth where in the record that evidence was entered in 
the record by the examiner. Reference to unentered 
evidence is not permitted in the brief. See § 41.33 for 
treatment of evidence submitted after appeal. This 
appendix may also include copies of the evidence 
relied upon by the examiner as to grounds of rejection 
to be reviewed on appeal. 
(x) Related proceedings appendix. An 
appendix containing copies of decisions rendered by a 
court or the Board in any proceeding identified pursuant 
to paragraph (c)(1)(ii) of this section. 
(2) A brief shall not include any new or nonadmitted 
amendment, or any new or non-admitted 
affidavit or other evidence. See § 1.116 of this title for 
amendments, affidavits or other evidence filed after 
final action but before or on the same date of filing an 
appeal and § 41.33 for amendments, affidavits or 
other evidence filed after the date of filing the appeal. 
(d) If a brief is filed which does not comply 
with all the requirements of paragraph (c) of this section, 
appellant will be notified of the reasons for noncompliance 
and given a time period within which to 
file an amended brief. If appellant does not file an 
amended brief within the set time period, or files an 
amended brief which does not overcome all the reasons 
for non-compliance stated in the notification, the 
appeal will stand dismissed. 
(e) The time periods set forth in this section are 
extendable under the provisions of § 1.136 of this title 
for patent applications and § 1.550(c) of this title for 
ex parte reexamination proceedings. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.39 Examiner’s answer. 

(a)(1)The primary examiner may, within such 
time as may be directed by the Director, furnish a 
written answer to the appeal brief including such 
explanation of the invention claimed and of the references 
relied upon and grounds of rejection as may be 
necessary, supplying a copy to appellant. If the primary 
examiner determines that the appeal does not 
comply with the provisions of §§ 41.31 and 41.37 or 
does not relate to an appealable action, the primary 
examiner shall make such determination of record. 

(2) An examiner’s answer may include a new 
ground of rejection. 
(b) If an examiner’s answer contains a rejection 
designated as a new ground of rejection, appellant 
must within two months from the date of the examiner’s 
answer exercise one of the following two 
options to avoid sua sponte dismissal of the appeal as 
to the claims subject to the new ground of rejection: 
(1) Reopen prosecution. Request that prosecution 
be reopened before the primary examiner by 
filing a reply under § 1.111 of this title with or without 
amendment or submission of affidavits (§§ 1.130, 


1.131 or 1.132 of this title) or other evidence. Any 
amendment or submission of affidavits or other evidence 
must be relevant to the new ground of rejection. 
A request that complies with this paragraph will be 
entered and the application or the patent under ex 
parte reexamination will be reconsidered by the examiner 
under the provisions of § 1.112 of this title. Any 
request that prosecution be reopened under this paragraph 
will be treated as a request to withdraw the 
appeal. 

(2) Maintain appeal. Request that the appeal 
be maintained by filing a reply brief as set forth in § 

41.41. Such a reply brief must address each new 
ground of rejection as set forth in § 41.37(c)(1)(vii) 
and should follow the other requirements of a brief as 
set forth in § 41.37(c). A reply brief may not be 
accompanied by any amendment, affidavit (§§ 1.130, 

1.131 or 1.132 of this title) or other evidence. If a 
reply brief filed pursuant to this section is accompanied 
by any amendment, affidavit or other evidence, it 
shall be treated as a request that prosecution be 
reopened before the primary examiner under paragraph 
(b)(1) of this section. 

(c) Extensions of time under § 1.136 (a) of this 
title for patent applications are not applicable to the 
time period set forth in this section. See § 1.136 (b) of 
this title for extensions of time to reply for patent 
applications and § 1.550 (c) of this title for extensions 
of time to reply for ex parte reexamination proceedings. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

 

§ 41.41 Reply brief. 

(a)(1)Appellant may file a reply brief to an examiner’s 
answer within two months from the date of the 
examiner’s answer. 

(2) A reply brief shall not include any new or 
non-admitted amendment, or any new or non-admitted 
affidavit or other evidence. See § 1.116 of this title 
for amendments, affidavits or other evidence filed 
after final action but before or on the same date of filing 
an appeal and § 41.33 for amendments, affidavits 
or other evidence filed after the date of filing the 
appeal. 
(b) A reply brief that is not in compliance with 
paragraph (a) of this section will not be considered. 
Appellant will be notified if a reply brief is not in 
compliance with paragraph (a) of this section. 
(c) Extensions of time under § 1.136 (a) of this 
title for patent applications are not applicable to the 
time period set forth in this section. See § 1.136 (b) of 
this title for extensions of time to reply for patent 
applications and § 1.550 (c) of this title for extensions 
of time to reply for ex parte reexamination proceedings. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.43 Examiner’s response to reply brief. 

(a)(1)After receipt of a reply brief in compliance 
with § 41.41, the primary examiner must acknowledge 
receipt and entry of the reply brief. In addition, 
the primary examiner may withdraw the final rejection 
and reopen prosecution or may furnish a supplemental 
examiner’s answer responding to any new 
issue raised in the reply brief. 

(2) A supplemental examiner’s answer 
responding to a reply brief may not include a new 
ground of rejection. 
(b) If a supplemental examiner’s answer is furnished 
by the examiner, appellant may file another 
reply brief under § 41.41 to any supplemental examiner’s 
answer within two months from the date of the 
supplemental examiner’s answer. 
(c) Extensions of time under § 1.136(a) of this 
title for patent applications are not applicable to the 
time period set forth in this section. See § 1.136(b) of 
this title for extensions of time to reply for patent 
applications and § 1.550(c) of this title for extensions 


of time to reply for ex parte reexamination proceedings. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.47 Oral hearing. 

(a) An oral hearing should be requested only in 
those circumstances in which appellant considers such 
a hearing necessary or desirable for a proper presentation 
of the appeal. An appeal decided on the briefs 
without an oral hearing will receive the same consideration 
by the Board as appeals decided after an oral 
hearing. 
(b) If appellant desires an oral hearing, appellant 
must file, as a separate paper captioned 
“REQUEST FOR ORAL HEARING,” a written 
request for such hearing accompanied by the fee set 
forth in § 41.20(b)(3) within two months from the 
date of the examiner’s answer or supplemental examiner’s 
answer. 
(c) If no request and fee for oral hearing have 
been timely filed by appellant as required by paragraph 
(b) of this section, the appeal will be assigned 
for consideration and decision on the briefs without 
an oral hearing. 
(d) If appellant has complied with all the 
requirements of paragraph (b) of this section, a date 
for the oral hearing will be set, and due notice thereof 
given to appellant. If an oral hearing is held, an oral 
argument may be presented by, or on behalf of, the 
primary examiner if considered desirable by either the 
primary examiner or the Board. A hearing will be held 
as stated in the notice, and oral argument will ordinarily 
be limited to twenty minutes for appellant and 
fifteen minutes for the primary examiner unless otherwise 
ordered. 


(e)(1)Appellant will argue first and may reserve 
time for rebuttal. At the oral hearing, appellant may 
only rely on evidence that has been previously entered 
and considered by the primary examiner and present 
argument that has been relied upon in the brief or 
reply brief except as permitted by paragraph (e)(2) of 
this section. The primary examiner may only rely on 
argument and evidence relied upon in an answer or a 
supplemental answer except as permitted by paragraph 
(e)(2) of this section. 

 

(2) Upon a showing of good cause, appellant 
and/or the primary examiner may rely on a new argument 
based upon a recent relevant decision of either 
the Board or a Federal Court. 
(f) Notwithstanding the submission of a request 
for oral hearing complying with this rule, if the Board 
decides that a hearing is not necessary, the Board will 
so notify appellant. 
(g) Extensions of time under § 1.136(a) of this 
title for patent applications are not applicable to the 
time periods set forth in this section. See § 1.136(b) of 
this title for extensions of time to reply for patent 
applications and § 1.550(c) of this title for extensions 
of time to reply for ex parte reexamination proceedings. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.50 Decisions and other actions by the Board. 

(a)(1)The Board, in its decision, may affirm or 
reverse the decision of the examiner in whole or in 
part on the grounds and on the claims specified by the 
examiner. The affirmance of the rejection of a claim 
on any of the grounds specified constitutes a general 
affirmance of the decision of the examiner on that 
claim, except as to any ground specifically reversed. 
The Board may also remand an application to the 
examiner. 

(2) If a supplemental examiner’s answer is 
written in response to a remand by the Board for further 
consideration of a rejection pursuant to paragraph 
(a)(1) of this section, the appellant must within two 
months from the date of the supplemental examiner’s 
answer exercise one of the following two options to 
avoid sua sponte dismissal of the appeal as to the 
claims subject to the rejection for which the Board has 
remanded the proceeding: 
(i) Reopen prosecution. Request that prosecution 
be reopened before the examiner by filing a 
reply under § 1.111 of this title with or without 
amendment or submission of affidavits (§§ 1.130, 


1.131 or 1.132 of this title) or other evidence. Any 
amendment or submission of affidavits or other evidence 
must be relevant to the issues set forth in the 
remand or raised in the supplemental examiner’s 
answer. A request that complies with this paragraph 
will be entered and the application or the patent under 
ex parte reexamination will be reconsidered by the 
examiner under the provisions of § 1.112 of this title. 
Any request that prosecution be reopened under this 
paragraph will be treated as a request to withdraw the 
appeal. 

(ii) Maintain appeal. Request that the 
appeal be maintained by filing a reply brief as provided 
in § 41.41. If such a reply brief is accompanied 
by any amendment, affidavit or other evidence, it 
shall be treated as a request that prosecution be 
reopened before the examiner under paragraph 
(a)(2)(i) of this section. 
(b) Should the Board have knowledge of any 
grounds not involved in the appeal for rejecting any 
pending claim, it may include in its opinion a statement 
to that effect with its reasons for so holding, 
which statement constitutes a new ground of rejection 
of the claim. A new ground of rejection pursuant to 
this paragraph shall not be considered final for judicial 
review. When the Board makes a new ground of 
rejection, the appellant, within two months from the 
date of the decision, must exercise one of the following 
two options with respect to the new ground of 
rejection to avoid termination of the appeal as to the 
rejected claims: 
(1) Reopen prosecution. Submit an appropriate 
amendment of the claims so rejected or new evidence 
relating to the claims so rejected, or both, and 
have the matter reconsidered by the examiner, in 
which event the proceeding will be remanded to the 
examiner. The new ground of rejection is binding 
upon the examiner unless an amendment or new evidence 
not previously of record is made which, in the 
opinion of the examiner, overcomes the new ground 
of rejection stated in the decision. Should the examiner 
reject the claims, appellant may again appeal to 
the Board pursuant to this subpart. 
(2) Request rehearing. Request that the proceeding 
be reheard under § 41.52 by the Board upon 
the same record. The request for rehearing must 
address any new ground of rejection and state with 
particularity the points believed to have been misapprehended 
or overlooked in entering the new ground 
of rejection and also state all other grounds upon 
which rehearing is sought. 
(c) The opinion of the Board may include an 
explicit statement of how a claim on appeal may 
be amended to overcome a specific rejection. When 
the opinion of the Board includes such a statement, 


 

appellant has the right to amend in conformity therewith. 
An amendment in conformity with such statement 
will overcome the specific rejection. An 
examiner may reject a claim so-amended, provided 
that the rejection constitutes a new ground of rejection. 


(d) The Board may order appellant to additionally 
brief any matter that the Board considers to be of 
assistance in reaching a reasoned decision on the 
pending appeal. Appellant will be given a non-extendable 
time period within which to respond to such an 
order. Failure to timely comply with the order may 
result in the sua sponte dismissal of the appeal. 
(e) Whenever a decision of the Board includes 
a remand, that decision shall not be considered final 
for judicial review. When appropriate, upon conclusion 
of proceedings on remand before the examiner, 
the Board may enter an order otherwise making its 
decision final for judicial review. 
(f) Extensions of time under § 1.136(a) of this 
title for patent applications are not applicable to the 
time periods set forth in this section. See § 1.136(b) of 
this title for extensions of time to reply for patent 
applications and § 1.550(c) of this title for extensions 
of time to reply for ex parte reexamination proceedings. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.52 Rehearing. 

(a)(1)Appellant may file a single request for 
rehearing within two months of the date of the original 
decision of the Board. No request for rehearing 
from a decision on rehearing will be permitted, unless 
the rehearing decision so modified the original decision 
as to become, in effect, a new decision, and the 
Board states that a second request for rehearing would 
be permitted. The request for rehearing must state 
with particularity the points believed to have been 
misapprehended or overlooked by the Board. Arguments 
not raised in the briefs before the Board and 
evidence not previously relied upon in the brief and 
any reply brief(s) are not permitted in the request for 
rehearing except as permitted by paragraphs (a)(2) 
and (a)(3) of this section. When a request for rehearing 
is made, the Board shall render a decision on the 
request for rehearing. The decision on the request for 
rehearing is deemed to incorporate the earlier opinion 
reflecting its decision for appeal, except for those portions 
specifically withdrawn on rehearing, and is final 
for the purpose of judicial review, except when noted 
otherwise in the decision on rehearing. 

(2) Upon a showing of good cause, appellant 
may present a new argument based upon a recent relevant 
decision of either the Board or a Federal Court. 
(3) New arguments responding to a new 
ground of rejection made pursuant to § 41.50(b) are 
permitted. 
(b) Extensions of time under § 1.136(a) of this 
title for patent applications are not applicable to the 
time period set forth in this section. See § 1.136(b) of 
this title for extensions of time to reply for patent 
applications and § 1.550(c) of this title for extensions 
of time to reply for ex parte reexamination proceedings. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.54 Action following decision.

 After decision by the Board, the proceeding will be 
returned to the examiner, subject to appellant’s right 
of appeal or other review, for such further action by 
appellant or by the examiner, as the condition of the 
proceeding may require, to carry into effect the decision. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

Subpart C — Inter Partes Appeals 

§ 41.60 Definitions.

 In addition to the definitions in § 41.2, the following 
definitions apply to proceedings under this subpart 
unless otherwise clear from the context: 

Appellant means any party, whether the owner or a 
requester, filing a notice of appeal or cross appeal 
under § 41.61. If more than one party appeals or cross 
appeals, each appealing or cross appealing party is an 
appellant with respect to the claims to which his or 
her appeal or cross appeal is directed. 

Filing means filing with a certificate indicating service 
of the document under § 1.903 of this title. 

Owner means the owner of the patent undergoing 
inter partes reexamination under § 1.915 of this title. 

 

Proceeding means an inter partes reexamination 
proceeding. Appeal to the Board in an ex parte reexamination 
proceeding is controlled by subpart B of 
this part. An inter partes reexamination proceeding is 
not a contested case subject to subpart D. 

Requester means each party, other than the owner, 
who requested that the patent undergo inter partes 
reexamination under § 1.915 of this title. 

Respondent means any requester responding under 
§ 41.68 to the appellant’s brief of the owner, or the 
owner responding under § 41.68 to the appellant’s 
brief of any requester. No requester may be a respondent 
to the appellant brief of any other requester.

 [Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.61 Notice of appeal and cross appeal to 
Board. 

(a)(1)Upon the issuance of a Right of Appeal 
Notice under § 1.953 of this title, the owner may 
appeal to the Board with respect to the final rejection 
of any claim of the patent by filing a notice of appeal 
within the time provided in the Right of Appeal 
Notice and paying the fee set forth in § 41.20(b)(1). 

(2) Upon the issuance of a Right of Appeal 
Notice under § 1.953 of this title, the requester may 
appeal to the Board with respect to any final decision 
favorable to the patentability, including any final 
determination not to make a proposed rejection, of 
any original, proposed amended, or new claim of the 
patent by filing a notice of appeal within the time provided 
in the Right of Appeal Notice and paying the 
fee set forth in § 41.20(b)(1). 
(b)(1)Within fourteen days of service of a 
requester’s notice of appeal under paragraph (a)(2) of 
this section and upon payment of the fee set forth in § 
41.20(b)(1), an owner who has not filed a notice of 
appeal may file a notice of cross appeal with respect 
to the final rejection of any claim of the patent. 


(2) Within fourteen days of service of an 
owner’s notice of appeal under paragraph (a)(1) of 
this section and upon payment of the fee set forth in § 


41.20 (b)(1), a requester who has not filed a notice of 
appeal may file a notice of cross appeal with respect 
to any final decision favorable to the patentability, 
including any final determination not to make a proposed 
rejection, of any original, proposed amended, 
or new claim of the patent. 

(c) The notice of appeal or cross appeal in the 
proceeding must identify the appealed claim(s) and 
must be signed by the owner, the requester, or a duly 
authorized attorney or agent. 
(d) An appeal or cross appeal, when taken, must 
be taken from all the rejections of the claims in a 
Right of Appeal Notice which the patent owner proposes 
to contest or from all the determinations favorable 
to patentability, including any final determination 
not to make a proposed rejection, in a Right of Appeal 
Notice which a requester proposes to contest. Questions 
relating to matters not affecting the merits of the 
invention may be required to be settled before an 
appeal is decided. 
(e) The time periods for filing a notice of 
appeal or cross appeal may not be extended. 
(f) If a notice of appeal or cross appeal is 
timely filed but does not comply with any requirement 
of this section, appellant will be notified of the 
reasons for non-compliance and given a non-extendable 
time period within which to file an amended 
notice of appeal or cross appeal. If the appellant does 
not then file an amended notice of appeal or cross 
appeal within the set time period, or files a notice 
which does not overcome all the reasons for non-compliance 
stated in the notification of the reasons for 
non-compliance, that appellant’s appeal or cross 
appeal will stand dismissed. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.63 Amendments and affidavits or other evidence after appeal. 

(a) Amendments filed after the date of filing an 
appeal pursuant to § 41.61 canceling claims may be 
admitted where such cancellation does not affect the 
scope of any other pending claim in the proceeding. 
(b) All other amendments filed after the date of 
filing an appeal pursuant to § 41.61 will not be admitted 
except as permitted by § 41.77(b)(1). 
(c) Affidavits or other evidence filed after the 
date of filing an appeal pursuant to § 41.61 will not be 
admitted except as permitted by reopening prosecution 
under § 41.77(b)(1). 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

 

§ 41.64 Jurisdiction over appeal in inter partes 
reexamination. 

(a) Jurisdiction over the proceeding passes to 
the Board upon transmittal of the file, including all 
briefs and examiner’s answers, to the Board. 
(b) If, after receipt and review of the proceeding, 
the Board determines that the file is not complete 
or is not in compliance with the requirements of this 
subpart, the Board may relinquish jurisdiction to the 
examiner or take other appropriate action to permit 
completion of the file. 
(c) Prior to the entry of a decision on the appeal 
by the Board, the Director may sua sponte order the 
proceeding remanded to the examiner. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.66 Time for filing briefs. 

(a) An appellant’s brief must be filed no later 
than two months from the latest filing date of the last-
filed notice of appeal or cross appeal or, if any party to 
the proceeding is entitled to file an appeal or cross 
appeal but fails to timely do so, no later than two 
months from the expiration of the time for filing (by 
the last party entitled to do so) such notice of appeal 
or cross appeal. The time for filing an appellant’s brief 
or an amended appellant’s brief may not be extended. 
(b) Once an appellant’s brief has been properly 
filed, any brief must be filed by respondent within one 
month from the date of service of the appellant’s brief. 
The time for filing a respondent’s brief or an amended 
respondent’s brief may not be extended. 
(c) The examiner will consider both the appellant’s 
and respondent’s briefs and may prepare an 
examiner’s answer under § 41.69. 
(d) Any appellant may file a rebuttal brief under 
§ 41.71 within one month of the date of the examiner’s 
answer. The time for filing a rebuttal brief or an 
amended rebuttal brief may not be extended. 
(e) No further submission will be considered 
and any such submission will be treated in accordance 
with § 1.939 of this title. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.67 Appellant’s brief. 

(a)(1)Appellant(s) may once, within time limits 
for filing set forth in § 41.66, file a brief and serve the 
brief on all other parties to the proceeding in accordance 
with § 1.903 of this title. 

(2) The brief must be signed by the appellant, 
or the appellant’s duly authorized attorney or agent 
and must be accompanied by the requisite fee set forth 
in § 41.20(b)(2). 
(b) An appellant’s appeal shall stand dismissed 
upon failure of that appellant to file an appellant’s 
brief, accompanied by the requisite fee, within the 
time allowed under § 41.66(a). 
(c)(1)The appellant’s brief shall contain the following 
items under appropriate headings and in the 
order indicated in paragraphs (c)(1)(i) through 
(c)(1)(xi) of this section. 


(i) Real party in interest. A statement 
identifying by name the real party in interest. 
(ii) Related appeals and interferences. A 
statement identifying by application, patent, appeal or 
interference number all other prior and pending 
appeals, interferences or judicial proceedings known 
to appellant, the appellant’s legal representative, or 
assignee which may be related to, directly affect or be 
directly affected by or have a bearing on the Board’s 
decision in the pending appeal. Copies of any decisions 
rendered by a court or the Board in any proceeding 
identified under this paragraph must be included 
in an appendix as required by paragraph (c)(1)(xi) of 
this section. 


(iii) Status of claims. A statement of the status 
of all the claims in the proceeding (e.g., rejected, 
allowed or confirmed, withdrawn, objected to, canceled). 
If the appellant is the owner, the appellant 
must also identify the rejected claims whose rejection 
is being appealed. If the appellant is a requester, the 
appellant must identify the claims that the examiner 
has made a determination favorable to patentability, 
which determination is being appealed. 

(iv) Status of amendments. A statement of 
the status of any amendment filed subsequent to the 
close of prosecution. 
(v) Summary of claimed subject matter. A 
concise explanation of the subject matter defined 
in each of the independent claims involved in the 
appeal, which shall refer to the specification by column 
and line number, and to the drawing(s), if any, by 


 

reference characters. For each independent claim 
involved in the appeal and for each dependent claim 
argued separately under the provisions of paragraph 
(c)(1)(vii) of this section, every means plus function 
and step plus function as permitted by 35 U.S.C. 112, 
sixth paragraph, must be identified and the structure, 
material, or acts described in the specification as corresponding 
to each claimed function must be set forth 
with reference to the specification by page and line 
number, and to the drawing, if any, by reference characters. 


(vi) Issues to be reviewed on appeal. A 
concise statement of each issue presented for review. 
No new ground of rejection can be proposed by a 
third party requester appellant, unless such ground 
was withdrawn by the examiner during the prosecution 
of the proceeding, and the third party requester 
has not yet had an opportunity to propose it as a third 
party requester proposed ground of rejection. 

(vii) Argument. The contentions of appellant 
with respect to each issue presented for review in 
paragraph (c)(1)(vi) of this section, and the basis 
therefor, with citations of the statutes, regulations, 
authorities, and parts of the record relied on. Any 
arguments or authorities not included in the brief permitted 
under this section or §§ 41.68 and 41.71 will 
be refused consideration by the Board, unless good 
cause is shown. Each issue must be treated under a 
separate heading. If the appellant is the patent owner, 
for each ground of rejection in the Right of Appeal 
Notice which appellant contests and which applies to 
two or more claims, the claims may be argued separately 
or as a group. When multiple claims subject to 
the same ground of rejection are argued as a group by 
appellant, the Board may select a single claim from 
the group of claims that are argued together to decide 
the appeal with respect to the group of claims as to the 
ground of rejection on the basis of the selected claim 
alone. Notwithstanding any other provision of this 
paragraph, the failure of appellant to separately argue 
claims which appellant has grouped together shall 
constitute a waiver of any argument that the Board 
must consider the patentability of any grouped claim 
separately. Any claim argued separately should be 
placed under a subheading identifying the claim by 
number. Claims argued as a group should be placed 
under a subheading identifying the claims by number. 
A statement which merely points out what a claim 
recites will not be considered an argument for separate 
patentability of the claim. 

(viii) Claims appendix. An appendix containing 
a copy of the claims to be reviewed on appeal. 

(ix) Evidence appendix. An appendix containing 
copies of any evidence submitted pursuant to 
§§ 1.130, 1.131, or 1.132 of this title or of any other 
evidence entered by the examiner and relied upon by 
appellant in the appeal, along with a statement setting 
forth where in the record that evidence was entered in 
the record by the examiner. Reference to unentered 
evidence is not permitted in the brief. See § 41.63 for 
treatment of evidence submitted after appeal. This 
appendix may also include copies of the evidence 
relied upon by the examiner in any ground of rejection 
to be reviewed on appeal. 
(x) Related proceedings appendix. An 
appendix containing copies of decisions rendered by a 
court or the Board in any proceeding identified pursuant 
to paragraph (c)(1)(ii) of this section. 
(xi) Certificate of service. A certification 
that a copy of the brief has been served in its entirety 
on all other parties to the reexamination proceeding. 
The names and addresses of the parties served must 
be indicated. 
(2) A brief shall not include any new or nonadmitted 
amendment, or any new or non-admitted 
affidavit or other evidence. See § 1.116 of this title for 
amendments, affidavits or other evidence filed after 
final action but before or on the same date of filing an 
appeal and § 41.63 for amendments, affidavits or 
other evidence after the date of filing the appeal. 
(d) If a brief is filed which does not comply 
with all the requirements of paragraph (a) and paragraph 
(c) of this section, appellant will be notified of 
the reasons for non-compliance and given a non-
extendable time period within which to file an 
amended brief. If appellant does not file an amended 
brief within the set time period, or files an amended 
brief which does not overcome all the reasons for 
non-compliance stated in the notification, that appellant’s 
appeal will stand dismissed. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.68 Respondent’s brief. 

(a)(1)Respondent(s) in an appeal may once, 
within the time limit for filing set forth in § 41.66, file 

 

a respondent brief and serve the brief on all parties in 
accordance with § 1.903 of this title. 

(2) The brief must be signed by the party, or 
the party’s duly authorized attorney or agent, and 
must be accompanied by the requisite fee set forth in 
§ 41.20(b)(2). 
(3) The respondent brief shall be limited to 
issues raised in the appellant brief to which the 
respondent brief is directed. 
(4) A requester’s respondent brief may not 
address any brief of any other requester. 
(b)(1)The respondent brief shall contain the following 
items under appropriate headings and in the 
order here indicated, and may include an appendix 
containing only those portions of the record on which 
reliance has been made. 


(i) Real Party in Interest. A statement 
identifying by name the real party in interest. 
(ii) Related Appeals and Interferences. A 
statement identifying by application, patent, appeal or 
interference number all other prior and pending 
appeals, interferences or judicial proceedings known 
to respondent, the respondent’s legal representative, 
or assignee which may be related to, directly affect or 
be directly affected by or have a bearing on the 
Board’s decision in the pending appeal. Copies of any 
decisions rendered by a court or the Board in any proceeding 
identified under this paragraph must be 
included in an appendix as required by paragraph 
(b)(1)(ix) of this section. 


(iii) Status of claims. A statement accepting 
or disputing appellant’s statement of the status of 
claims. If appellant’s statement of the status of claims 
is disputed, the errors in appellant’s statement must be 
specified with particularity. 

(iv) Status of amendments. A statement 
accepting or disputing appellant’s statement of the 
status of amendments. If appellant’s statement of the 
status of amendments is disputed, the errors in appellant’s 
statement must be specified with particularity. 
(v) Summary of claimed subject matter. A 
statement accepting or disputing appellant’s summary 
of the subject matter defined in each of the independent 
claims involved in the appeal. If appellant’s summary 
of the subject matter is disputed, the errors in 
appellant’s summary must be specified. 
(vi) Issues to be reviewed on appeal. A 
statement accepting or disputing appellant’s statement 


of the issues presented for review. If appellant’s statement 
of the issues presented for review is disputed, 
the errors in appellant’s statement must be specified. 
A counter statement of the issues for review may be 
made. No new ground of rejection can be proposed by 
a requester respondent. 

(vii) Argument. A statement accepting or 
disputing the contentions of appellant with each of the 
issues presented by the appellant for review. If a contention 
of the appellant is disputed, the errors in 
appellant’s argument must be specified, stating the 
basis therefor, with citations of the statutes, regulations, 
authorities, and parts of the record relied on. 
Each issue must be treated under a separate heading. 
An argument may be made with each of the issues 
stated in the counter statement of the issues, with each 
counter-stated issue being treated under a separate 
heading. 

(viii) Evidence appendix. An appendix containing 
copies of any evidence submitted pursuant to 
§§ 1.130, 1.131, or 1.132 of this title or of any other 
evidence entered by the examiner and relied upon by 
respondent in the appeal, along with a statement setting 
forth where in the record that evidence was 
entered in the record by the examiner. Reference to 
unentered evidence is not permitted in the respondent’s 
brief. See § 41.63 for treatment of evidence 
submitted after appeal. 

(ix) Related proceedings appendix. An 
appendix containing copies of decisions rendered by a 
court or the Board in any proceeding identified pursuant 
to paragraph (b)(1)(ii) of this section. 
(x) Certificate of service. A certification 
that a copy of the respondent brief has been served in 
its entirety on all other parties to the reexamination 
proceeding. The names and addresses of the parties 
served must be indicated. 
(2) A respondent brief shall not include any 
new or non-admitted amendment, or any new or nonadmitted 
affidavit or other evidence. See § 1.116 of 
this title for amendments, affidavits or other evidence 
filed after final action but before or on the same date 
of filing an appeal and § 41.63 for amendments, affidavits 
or other evidence filed after the date of filing 
the appeal. 
(c) If a respondent brief is filed which does not 
comply with all the requirements of paragraph (a) 
and paragraph (b) of this section, respondent will be 


 

notified of the reasons for non-compliance and given 
a non-extendable time period within which to file an 
amended brief. If respondent does not file an amended 
respondent brief within the set time period, or files an 
amended respondent brief which does not overcome 
all the reasons for non-compliance stated in the notification, 
the respondent brief and any amended respondent 
brief by that respondent will not be considered. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.69 Examiner’s answer. 

(a) The primary examiner may, within such 
time as directed by the Director, furnish a written 
answer to the owner’s and/or requester’s appellant 
brief or respondent brief including, as may be necessary, 
such explanation of the invention claimed and of 
the references relied upon, the grounds of rejection, 
and the reasons for patentability, including grounds 
for not adopting any proposed rejection. A copy of the 
answer shall be supplied to the owner and all requesters. 
If the primary examiner determines that the 
appeal does not comply with the provisions of §§ 
41.61, 41.66, 41.67 and 41.68 or does not relate to an 
appealable action, the primary examiner shall make 
such determination of record. 
(b) An examiner’s answer may not include a 
new ground of rejection. 
(c) An examiner’s answer may not include a 
new determination not to make a proposed rejection 
of a claim. 
(d) Any new ground of rejection, or any new 
determination not to make a proposed rejection, must 
be made in an Office action reopening prosecution. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.71 Rebuttal brief. 

(a) Within one month of the examiner’s answer, 
any appellant may once file a rebuttal brief. 
(b)(1)The rebuttal brief of the owner may be 
directed to the examiner’s answer and/or any respondent 
brief. 


(2) The rebuttal brief of the owner shall not 
include any new or non-admitted amendment, or an 
affidavit or other evidence. See § 1.116 of this title for 
amendments, affidavits or other evidence filed after 


final action but before or on the same date of filing an 
appeal and § 41.63 for amendments, affidavits or 
other evidence filed after the date of filing the appeal. 

(c)(1)The rebuttal brief of any requester may be 
directed to the examiner’s answer and/or the respondent 
brief of the owner. 

(2) The rebuttal brief of a requester may not 
be directed to the respondent brief of any other 
requester. 
(3) No new ground of rejection can be proposed 
by a requester. 
(4) The rebuttal brief of a requester shall not 
include any new or non-admitted affidavit or other 
evidence. See § 1.116(d) of this title for affidavits or 
other evidence filed after final action but before or on 
the same date of filing an appeal and § 41.63(c) for 
affidavits or other evidence filed after the date of filing 
the appeal. 
(d) The rebuttal brief must include a certification 
that a copy of the rebuttal brief has been served in 
its entirety on all other parties to the proceeding. The 
names and addresses of the parties served must be 
indicated. 
(e) If a rebuttal brief is timely filed under paragraph 
(a) of this section but does not comply with all 
the requirements of paragraphs (a) through (d) of this 
section, appellant will be notified of the reasons for 
non-compliance and provided with a non-extendable 
period of one month within which to file an amended 
rebuttal brief. If the appellant does not file an 
amended rebuttal brief during the one-month period, 
or files an amended rebuttal brief which does not 
overcome all the reasons for non-compliance stated in 
the notification, that appellant’s rebuttal brief and any 
amended rebuttal brief by that appellant will not be 
considered. 


[Added, 69 FR 4995 9, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.73 Oral hearing. 

(a) An oral hearing should be requested only in 
those circumstances in which an appellant or a 
respondent considers such a hearing necessary or 
desirable for a proper presentation of the appeal. An 
appeal decided on the briefs without an oral hearing 
will receive the same consideration by the Board as an 
appeal decided after an oral hearing. 

 

(b) If an appellant or a respondent desires an 
oral hearing, he or she must file, as a separate paper 
captioned “REQUEST FOR ORAL HEARING,” a 
written request for such hearing accompanied by the 
fee set forth in § 41.20(b)(3) within two months after 
the date of the examiner’s answer. The time for 
requesting an oral hearing may not be extended. The 
request must include a certification that a copy of the 
request has been served in its entirety on all other parties 
to the proceeding. The names and addresses of the 
parties served must be indicated. 
(c) If no request and fee for oral hearing have 
been timely filed by appellant or respondent as 
required by paragraph (b) of this section, the appeal 
will be assigned for consideration and decision on the 
briefs without an oral hearing. 
(d) If appellant or respondent has complied 
with all the requirements of paragraph (b) of this section, 
a hearing date will be set, and notice given to the 
owner and all requesters. If an oral hearing is held, an 
oral argument may be presented by, or on behalf of, 
the primary examiner if considered desirable by either 
the primary examiner or the Board. The notice shall 
set a non-extendable period within which all requests 
for oral hearing shall be submitted by any other party 
to the appeal desiring to participate in the oral hearing. 
A hearing will be held as stated in the notice, and 
oral argument will be limited to thirty minutes for 
each appellant or respondent who has requested an 
oral hearing, and twenty minutes for the primary 
examiner unless otherwise ordered. No appellant or 
respondent will be permitted to participate in an oral 
hearing unless he or she has requested an oral hearing 
and submitted the fee set forth in § 41.20(b)(3). 
(e)(1)At the oral hearing, each appellant and 
respondent may only rely on evidence that has been 
previously entered and considered by the primary 
examiner and present argument that has been relied 
upon in the briefs except as permitted by paragraph 
(e)(2) of this section. The primary examiner may only 
rely on argument and evidence relied upon in an 
answer except as permitted by paragraph (e)(2) of this 
section. The Board will determine the order of the 
arguments presented at the oral hearing. 


(2) Upon a showing of good cause, appellant, 
respondent and/or the primary examiner may rely on a 
new argument based upon a recent relevant decision 
of either the Board or a Federal Court. 


(f) Notwithstanding the submission of a request 
for oral hearing complying with this rule, if the Board 
decides that a hearing is not necessary, the Board will 
so notify the owner and all requesters. 

[Added, 69 FR 4 9959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.77 Decisions and other actions by the Board. 

(a) The Board of Patent Appeals and Interferences, 
in its decision, may affirm or reverse each decision 
of the examiner on all issues raised on each 
appealed claim, or remand the reexamination proceeding 
to the examiner for further consideration. The 
reversal of the examiner’s determination not to make 
a rejection proposed by the third party requester constitutes 
a decision adverse to the patentability of the 
claims which are subject to that proposed rejection 
which will be set forth in the decision of the Board of 
Patent Appeals and Interferences as a new ground of 
rejection under paragraph (b) of this section. The 
affirmance of the rejection of a claim on any of the 
grounds specified constitutes a general affirmance of 
the decision of the examiner on that claim, except as 
to any ground specifically reversed. 
(b) Should the Board reverse the examiner’s 
determination not to make a rejection proposed by a 
requester, the Board shall set forth in the opinion in 
support of its decision a new ground of rejection; or 
should the Board have knowledge of any grounds not 
raised in the appeal for rejecting any pending claim, it 
may include in its opinion a statement to that effect 
with its reasons for so holding, which statement shall 
constitute a new ground of rejection of the claim. Any 
decision which includes a new ground of rejection 
pursuant to this paragraph shall not be considered 
final for judicial review. When the Board makes a 
new ground of rejection, the owner, within one month 
from the date of the decision, must exercise one of the 
following two options with respect to the new ground 
of rejection to avoid termination of the appeal proceeding 
as to the rejected claim: 
(1) Reopen prosecution. The owner may file 
a response requesting reopening of prosecution before 
the examiner. Such a response must be either an 
amendment of the claims so rejected or new evidence 
relating to the claims so rejected, or both. 
(2) Request rehearing. The owner may 
request that the proceeding be reheard under § 41.79 


 

by the Board upon the same record. The request for 
rehearing must address any new ground of rejection 
and state with particularity the points believed to have 
been misapprehended or overlooked in entering the 
new ground of rejection and also state all other 
grounds upon which rehearing is sought. 

(c) Where the owner has filed a response 
requesting reopening of prosecution under paragraph 
(b)(1) of this section, any requester, within one month 
of the date of service of the owner’s response, may 
once file comments on the response. Such written 
comments must be limited to the issues raised by the 
Board’s opinion reflecting its decision and the 
owner’s response. Any requester that had not previously 
filed an appeal or cross appeal and is seeking 
under this subsection to file comments or a reply to 
the comments is subject to the appeal and brief fees 
under § 41.20 (b)(1) and (2), respectively, which must 
accompany the comments or reply. 
(d) Following any response by the owner under 
paragraph (b)(1) of this section and any written comments 
from a requester under paragraph (c) of this 
section, the proceeding will be remanded to the examiner. 
The statement of the Board shall be binding upon 
the examiner unless an amendment or new evidence 
not previously of record is made which, in the opinion 
of the examiner, overcomes the new ground of rejection 
stated in the decision. The examiner will consider 
any owner response under paragraph (b)(1) of this 
section and any written comments by a requester 
under paragraph (c) of this section and issue a determination 
that the rejection is maintained or has been 
overcome. 
(e) Within one month of the examiner’s determination 
pursuant to paragraph (d) of this section, the 
owner or any requester may once submit comments in 
response to the examiner’s determination. Within one 
month of the date of service of comments in response 
to the examiner’s determination, the owner and any 
requesters may file a reply to the comments. No 
requester reply may address the comments of any 
other requester reply. Any requester that had not previously 
filed an appeal or cross appeal and is seeking 
under this subsection to file comments or a reply to 
the comments is subject to the appeal and brief fees 
under § 41.20 (b)(1) and (2), respectively, which must 
accompany the comments or reply. 


(f) After submission of any comments and any 
reply pursuant to paragraph (e) of this section, or after 
time has expired, the proceeding will be returned to 
the Board which shall reconsider the matter and issue 
a new decision. The new decision is deemed to incorporate 
the earlier decision, except for those portions 
specifically withdrawn. 
(g) The time period set forth in paragraph (b) of 
this section is subject to the extension of time provisions 
of § 1.956 of this title when the owner is 
responding under paragraph (b)(1) of this section. The 
time period set forth in paragraph (b) of this section 
may not be extended when the owner is responding 
under paragraph (b)(2) of this section. The time periods 
set forth in paragraphs (c) and (e) of this section 
may not be extended. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.79 Rehearing. 

(a) Parties to the appeal may file a request for 
rehearing of the decision within one month of the date 
of: 
(1) The original decision of the Board under 
§ 41.77(a), 
(2) The original § 41.77(b) decision under 
the provisions of § 41.77(b)(2), 
(3) The expiration of the time for the owner 
to take action under § 41.77(b)(2), or 
(4) The new decision of the Board under § 
41.77(f). 
(b)(1)The request for rehearing must state with 
particularity the points believed to have been misapprehended 
or overlooked in rendering the Board’s 
opinion reflecting its decision. Arguments not raised 
in the briefs before the Board and evidence not previously 
relied upon in the briefs are not permitted in the 
request for rehearing except as permitted by paragraphs 
(b)(2) and (b)(3) of this section. 


(2) Upon a showing of good cause, appellant 
and/or respondent may present a new argument based 
upon a recent relevant decision of either the Board or 
a Federal Court. 
(3) New arguments responding to a new 
ground of rejection made pursuant to § 41.77(b) are 
permitted. 


 

(c) Within one month of the date of service of 
any request for rehearing under paragraph (a) of this 
section, or any further request for rehearing under 
paragraph (d) of this section, the owner and all 
requesters may once file comments in opposition to 
the request for rehearing or the further request for 
rehearing. The comments in opposition must be limited 
to the issues raised in the request for rehearing or 
the further request for rehearing. 
(d) If a party to an appeal files a request for 
rehearing under paragraph (a) of this section, or a further 
request for rehearing under this section, the 
Board shall render a decision on the request for 
rehearing. The decision on the request for rehearing is 
deemed to incorporate the earlier opinion reflecting its 
decision for appeal, except for those portions specifically 
withdrawn on rehearing and is final for the purpose 
of judicial review, except when noted otherwise 
in the decision on rehearing. If the Board opinion 
reflecting its decision on rehearing becomes, in effect, 
a new decision, and the Board so indicates, then any 
party to the appeal may, within one month of the new 
decision, file a further request for rehearing of the 
new decision under this subsection. Such further 
request for rehearing must comply with paragraph (b) 
of this section. 
(e) The times for requesting rehearing under 
paragraph (a) of this section, for requesting further 
rehearing under paragraph (c) of this section, and for 
submitting comments under paragraph (b) of this section 
may not be extended.


 [Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.81 Action following decision. 

The parties to an appeal to the Board may not 
appeal to the U.S. Court of Appeals for the Federal 
Circuit under § 1.983 of this title until all parties’ 
rights to request rehearing have been exhausted, at 
which time the decision of the Board is final and 
appealable by any party to the appeal to the Board. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

Subpart D — Contested Cases 

§ 41.100 Definitions.

 In addition to the definitions in § 41.2, the following 
definitions apply to proceedings under this subpart: 


Business day means a day other than a Saturday, 
Sunday, or Federal holiday within the District of 
Columbia. 

Involved means the Board has declared the patent 
application, patent, or claim so described to be a subject 
of the contested case. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.101 Notice of proceeding. 

(a) Notice of a contested case will be sent to 
every party to the proceeding. The entry of the notice 
initiates the proceeding. 
(b) When the Board is unable to provide actual 
notice of a contested case on a party through the correspondence 
address of record for the party, the Board 
may authorize other modes of notice, including: 
(1) Sending notice to another address associated 
with the party, or 
(2) Publishing the notice in the Official 
Gazette of the United States Patent and Trademark 
Office. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.102 Completion of examination.

 Before a contested case is initiated, except as the 
Board may otherwise authorize, for each involved 
application and patent: 

(a) Examination or reexamination must be 
completed, and 
(b) There must be at least one claim that: 


(1) Is patentable but for a judgment in the 
contested case, and 


(2) Would be involved in the contested case. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

 

§ 41.103 Jurisdiction over involved files.

 The Board acquires jurisdiction over any involved 
file when the Board initiates a contested case. Other 
proceedings for the involved file within the Office are 
suspended except as the Board may order. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.104 Conduct of contested cases. 

(a) The Board may determine a proper course 
of conduct in a proceeding for any situation not specifically 
covered by this part and may enter non-final 
orders to administer the proceeding. 
(b) An administrative patent judge may waive 
or suspend in a proceeding the application of any rule 
in this subpart, subject to such conditions as the 
administrative patent judge may impose. 
(c) Times set in this subpart are defaults. In the 
event of a conflict between a time set by rule and a 
time set by order, the time set by order is controlling. 
Action due on a day other than a business day may be 
completed on the next business day unless the Board 
expressly states otherwise. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.106 Filing and service. 

(a) General format requirements. (1) The paper 
used for filings must be durable and white. A party 
must choose to file on either A4-sized paper or 8½ 
inch x 11 inch paper except in the case of exhibits that 
require a larger size in order to preserve details of the 
original. A party may not switch between paper sizes 
in a single proceeding. Only one side of the paper may 
be used. 
(2) In papers, including affidavits, created for 
the proceeding: 
(i) Markings must be in black ink or must 
otherwise provide an equivalently permanent, dark, 
high-contrast image on the paper. The quality of printing 
must be equivalent to the quality produced by a 
laser printer. Either a proportional or monospaced font 
may be used, but the proportional font must be 12point 
or larger and a monospaced font must not contain 
more than 4 characters per centimeter (10 characters 
per inch). Case names must be underlined or 
italicized. 


(ii) Double spacing must be used except in 
headings, tables of contents, tables of authorities, 
indices, signature blocks, and certificates of service. 
Block quotations may be single-spaced and must be 
indented. Margins must be at least 2.5 centimeters (1 
inch) on all sides. 
(b) Papers other than exhibits—(1) Cover 
sheet. (i) The cover sheet must include the caption the 
Board specifies for the proceeding, a header indicating 
the party and contact information for the party, 
and a title indicating the sequence and subject of the 
paper. For example, “JONES MOTION 2, For benefit 
of an earlier application”. 
(ii) If the Board specifies a color other than 
white for the cover sheet, the cover sheet must be that 
color. 
(2) Papers must have two 0.5 cm (¼ inch) 
holes with centers 1 cm (½ inch) from the top of the 
page and 7 cm (2¾ inch) apart, centered horizontally 
on the page. 
(3) Incorporation by reference; combined 
papers. Arguments must not be incorporated by reference 
from one paper into another paper. Combined 
motions, oppositions, replies, or other combined 
papers are not permitted. 
(4) Exhibits. Additional requirements for 
exhibits appear in § 41.154(c). 
(c) Working copy. Every paper filed must be 
accompanied by a working copy marked “APJ Copy”. 
(d) Specific filing forms. (1) Filing by mail. A 
paper filed using the EXPRESS MAIL® service of 
the United States Postal Service will be deemed to be 
filed as of “date-in” on the EXPRESS MAIL® mailing 
label; otherwise, mail will be deemed to be filed 
as of the stamped date of receipt at the Board. 
(2) Other modes of filing. The Board may 
authorize other modes of filing, including electronic 
filing and hand filing, and may set conditions for the 
use of such other modes. 
(e) Service. (1) Papers filed with the Board, if 
not previously served, must be served simultaneously 
on every opposing party except as the Board 
expressly directs. 
(2) If a party is represented by counsel, service 
must be on counsel. 
(3) Service must be by EXPRESS MAIL® or 
by means at least as fast and reliable as EXPRESS 


 

MAIL®. Electronic service is not permitted without 
Board authorization. 

(4) The date of service does not count in 
computing the time for responding. 
(f) Certificate of service. (1) Papers other than 
exhibits must include a certificate of service as a separate 
page at the end of each paper that must be served 
on an opposing party. 
(2) Exhibits must be accompanied by a certificate 
of service, but a single certificate may accompany 
any group of exhibits submitted together. 
(3) A certificate of service must state: 
(i) The date and manner of service, 


(ii) The name and address of every person 
served, and 


(iii) For exhibits filed as a group, the name 
and number of each exhibit served. 

(4) A certificate made by a person other than 
a registered patent practitioner must be in the form of 
an affidavit. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.108 Lead counsel. 

(a) A party may be represented by counsel. The 
Board may require a party to appoint a lead counsel. If 
counsel is not of record in a party’s involved application 
or patent, then a power of attorney for that counsel 
for the party’s involved application or patent must 
be filed with the notice required in paragraph (b) of 
this section. 
(b) Within 14 days of the initiation of each contested 
case, each party must file a separate notice 
identifying its counsel, if any, and providing contact 
information for each counsel identified or, if the party 
has no counsel, then for the party. Contact information 
must, at a minimum, include: 
(1) A mailing address; 


(2) An address for courier delivery when the 
mailing address is not available for such delivery (for 
example, when the mailing address is a Post Office 
box); 
(3) A telephone number; 
(4) A facsimile number; and 
(5) An electronic mail address. 




(c) A party must promptly notify the Board of 
any change in the contact information required in 
paragraph (b) of this section. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.109 Access to and copies of Office records. 

(a) Request for access or copies. Any request 
from a party for access to or copies of Office records 
directly related to a contested case must be filed with 
the Board. The request must precisely identify the 
records and in the case of copies include the appropriate 
fee set under § 1.19(b) of this title. 
(b) Authorization of access and copies. Access 
and copies will ordinarily only be authorized for the 
following records: 
(1) The application file for an involved 
patent; 
(2) An involved application; and 


(3) An application for which a party has been 
accorded benefit under subpart E of this part. 
(c) Missing or incomplete copies. If a party 
does not receive a complete copy of a record within 
21 days of the authorization, the party must promptly 
notify the Board. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.110 Filing claim information. 

(a) Clean copy of claims. Within 14 days of the 
initiation of the proceeding, each party must file a 
clean copy of its involved claims and, if a biotechnology 
material sequence is a limitation, a clean copy of 
the sequence. 
(b) Annotated copy of claims. Within 28 days of 
the initiation of the proceeding, each party must: 
(1) For each involved claim having a limitation 
that is illustrated in a drawing or biotechnology 
material sequence, file an annotated copy of the claim 
indicating in bold face between braces ({}) where 
each limitation is shown in the drawing or sequence. 
(2) For each involved claim that contains a 
means-plus-function or step-plus-function limitation 
in the form permitted under 35 U.S.C. 112(6), file an 
annotated copy of the claim indicating in bold face 
between braces ({}) the specific portions of the specification 
that describe the structure, material, or acts 
corresponding to each claimed function. 
(c) Any motion to add or amend a claim must 
include: 


 

(1) A clean copy of the claim, 

(2) A claim chart showing where the disclosure 
of the patent or application provides written 
description of the subject matter of the claim, and 
(3) Where applicable, a copy of the claims 
annotated according to paragraph (b) of this section. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.120 Notice of basis for relief. 

(a) The Board may require a party to provide a 
notice stating the relief it requests and the basis for its 
entitlement to relief. The Board may provide for the 
notice to be maintained in confidence for a limited 
time. 
(b) Effect. If a notice under paragraph (a) of this 
section is required, a party will be limited to filing 
substantive motions consistent with the notice. Ambiguities 
in the notice will be construed against the 
party. A notice is not evidence except as an admission 
by a party-opponent. 
(c) Correction. A party may move to correct its 
notice. The motion should be filed promptly after the 
party becomes aware of the basis for the correction. A 
correction filed after the time set for filing notices will 
only be entered if entry would serve the interests of 
justice. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.121 Motions. 

(a) Types of motions—(1) Substantive motions. 
Consistent with the notice of requested relief, if any, 
and to the extent the Board authorizes, a party may 
file a motion: 
(i) To redefine the scope of the contested 
case, 
(ii) To change benefit accorded for the 
contested subject matter, or 
(iii) For judgment in the contested case. 


(2) Responsive motions. The Board may 
authorize a party to file a motion to amend or add a 
claim, to change inventorship, or otherwise to cure a 
defect raised in a notice of requested relief or in a substantive 
motion. 


(3) Miscellaneous motions. Any request for 
relief other than a substantive or responsive motion 
must be filed as a miscellaneous motion. 
(b) Burden of proof. The party filing the motion 
has the burden of proof to establish that it is entitled to 
the requested relief. 
(c) Content of motions; oppositions and replies. 


(1) Each motion must be filed as a separate paper and 
must include: 
(i) A statement of the precise relief 
requested, 
(ii) A statement of material facts (see paragraph 
(d) of this section), and 


(iii) A full statement of the reasons for the 
relief requested, including a detailed explanation of 
the significance of the evidence and the governing 
law, rules, and precedent. 

(2) Compliance with rules. Where a rule in 
part 1 of this title ordinarily governs the relief sought, 
the motion must make any showings required under 
that rule in addition to any showings required in this 
part. 
(3) The Board may order additional showings 
or explanations as a condition for filing a motion. 
(d) Statement of material facts. (1) Each material 
fact shall be set forth as a separate numbered sentence 
with specific citations to the portions of the 
record that support the fact. 
(2) The Board may require that the statement 
of material facts be submitted as a separate paper. 
(e) Claim charts. Claim charts must be used in 
support of any paper requiring the comparison of a 
claim to something else, such as another claim, prior 
art, or a specification. Claim charts must accompany 
the paper as an appendix. Claim charts are not a substitute 
for appropriate argument and explanation in the 
paper. 
(f) The Board may order briefing on any issue 
that could be raised by motion. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.122 Oppositions and replies. 

(a) Oppositions and replies must comply with 
the content requirements for motions and must 
include a statement identifying material facts in dispute. 
Any material fact not specifically denied shall 
be considered admitted. 

 

(b) All arguments for the relief requested in a 
motion must be made in the motion. A reply may only 
respond to arguments raised in the corresponding 
opposition.

 [Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.123 Default filing times. 

(a) A motion, other than a miscellaneous 
motion, may only be filed according to a schedule the 
Board sets. The default times for acting are: 
(1) An opposition is due 30 days after service 
of the motion. 
(2) A reply is due 30 days after service of the 
opposition. 
(3) A responsive motion is due 30 days after the 
service of the motion. 
(b) Miscellaneous motions. (1) If no time for 
filing a specific miscellaneous motion is provided in 
this part or in a Board order: 
(i) The opposing party must be consulted 
prior to filing the miscellaneous motion, and 
(ii) If an opposing party plans to oppose 
the miscellaneous motion, the movant may not file the 
motion without Board authorization. Such authorization 
should ordinarily be obtained through a telephone 
conference including the Board and every other party 
to the proceeding. Delay in seeking relief may justify 
a denial of the motion. 
(2) An opposition may not be filed without 
authorization. The default times for acting are: 
(i) An opposition to a miscellaneous 
motion is due five business days after service of the 
motion. 
(ii) A reply to a miscellaneous motion 
opposition is due three business days after service of 
the opposition. 
(c) Exhibits. Each exhibit must be filed and 
served with the first paper in which it is cited except 
as the Board may otherwise order. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.124 Oral argument. 

(a) Request for oral argument. A party may 
request an oral argument on an issue raised in a paper 
within five business days of the filing of the paper. 

The request must be filed as a separate paper and must 
specify the issues to be considered. 

(b) Copies for panel. If an oral argument is set 
for a panel, the movant on any issue to be argued must 
provide three working copies of the motion, the opposition, 
and the reply. Each party is responsible for providing 
three working copies of its exhibits relating to 
the motion. 
(c) Length of argument. If a request for oral 
argument is granted, each party will have a total of 20 
minutes to present its arguments, including any time 
for rebuttal. 
(d) Demonstrative exhibits must be served at 
least five business days before the oral argument and 
filed no later than the time of the oral argument. 
(e) Transcription. The Board encourages the 
use of a transcription service at oral arguments but, if 
such a service is to be used, the Board must be notified 
in advance to ensure adequate facilities are available 
and a transcript must be filed with the Board 
promptly after the oral argument. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.125 Decision on motions. 

(a) Order of consideration. The Board may take 
up motions for decisions in any order, may grant, 
deny, or dismiss any motion, and may take such other 
action appropriate to secure the just, speedy, and inexpensive 
determination of the proceeding. A decision 
on a motion may include deferral of action on an issue 
until a later point in the proceeding. 
(b) Interlocutory decisions. A decision on 
motions without a judgment is not final for the purposes 
of judicial review. A panel decision on an issue 
will govern further proceedings in the contested case. 
(c) Rehearing—(1) Time for request. A request 
for rehearing of a decision on a motion must be filed 
within fourteen days of the decision. 
(2) No tolling. The filing of a request for 
rehearing does not toll times for taking action. 
(3) Burden on rehearing. The burden of 
showing a decision should be modified lies with the 
party attacking the decision. The request must specifically 
identify: 
(i) All matters the party believes to have 
been misapprehended or overlooked, and 


 

(ii) The place where the matter was previously 
addressed in a motion, opposition, or reply. 
(4) Opposition; reply. Neither an opposition 
nor a reply to a request for rehearing may be filed 
without Board authorization. 
(5) Panel rehearing. If a decision is not a 
panel decision, the party requesting rehearing may 
request that a panel rehear the decision. A panel 
rehearing a procedural decision will review the decision 
for an abuse of discretion. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.126 Arbitration. 

(a) Parties to a contested case may resort to 
binding arbitration to determine any issue in a contested 
case. The Office is not a party to the arbitration. 
The Board is not bound and may independently determine 
questions of patentability, jurisdiction, and 
Office practice. 
(b) The Board will not authorize arbitration 
unless: 
(1) It is to be conducted according to Title 9 
of the United States Code. 
(2) The parties notify the Board in writing of 
their intention to arbitrate. 


(3) The agreement to arbitrate: 

(i) Is in writing, 
(ii) Specifies the issues to be arbitrated, 


(iii) Names the arbitrator, or provides a date 
not more than 30 days after the execution of the 
agreement for the selection of the arbitrator, and 

(iv) Provides that the arbitrator’s award 
shall be binding on the parties and that judgment 
thereon can be entered by the Board. 
(4) A copy of the agreement is filed within 
20 days after its execution. 
(5) The arbitration is completed within the 
time the Board sets. 
(c) The parties are solely responsible for the 
selection of the arbitrator and the conduct of proceedings 
before the arbitrator. 
(d) Issues not disposed of by the arbitration will 
be resolved in accordance with the procedures established 
in this subpart. 
(e) The Board will not consider the arbitration 
award unless it: 


(1) Is binding on the parties, 
(2) Is in writing, 

(3) States in a clear and definite manner each 
issue arbitrated and the disposition of each issue, and 
(4) Is filed within 20 days of the date of the 
award. 
(f) Once the award is filed, the parties to the 
award may not take actions inconsistent with the 
award. If the award is dispositive of the contested subject 
matter for a party, the Board may enter judgment 
as to that party. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.127 Judgment. 

(a) Effect within Office—(1) Estoppel. A judgment 
disposes of all issues that were, or by motion 
could have properly been, raised and decided. A losing 
party who could have properly moved for relief on 
an issue, but did not so move, may not take action in 
the Office after the judgment that is inconsistent with 
that party’s failure to move, except that a losing party 
shall not be estopped with respect to any contested 
subject matter for which that party was awarded a 
favorable judgment. 
(2) Final disposal of claim. Adverse judgment 
against a claim is a final action of the Office 
requiring no further action by the Office to dispose of 
the claim permanently. 
(b) Request for adverse judgment. A party may 
at any time in the proceeding request judgment 
against itself. Actions construed to be a request for 
adverse judgment include: 
(1) Abandonment of an involved application 
such that the party no longer has an application or 
patent involved in the proceeding, 
(2) Cancellation or disclaiming of a claim 
such that the party no longer has a claim involved in 
the proceeding, 
(3) Concession of priority or unpatentability 
of the contested subject matter, and 
(4) Abandonment of the contest. 


(c) Recommendation. The judgment may 
include a recommendation for further action by the 
examiner or by the Director. If the Board recommends 
rejection of a claim of an involved application, the 
examiner must enter and maintain the recommended 
rejection unless an amendment or showing of facts 
not previously of record is filed which, in the opinion 


 

of the examiner, overcomes the recommended rejection. 


(d) Rehearing. A party dissatisfied with the 
judgment may file a request for rehearing within 30 
days of the entry of the judgment The request must 
specifically identify all matters the party believes to 
have been misapprehended or overlooked, and the 
place where the matter was previously addressed in a 
motion, opposition or reply. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004; para. (d) revised, 69 FR 58260, Sept. 30, 2004, 
effective Sept. 30, 2004] 

§ 41.128 Sanctions. 

(a) The Board may impose a sanction against a 
party for misconduct, including: 
(1) Failure to comply with an applicable rule 
or order in the proceeding; 
(2) Advancing a misleading or frivolous 
request for relief or argument; or 
(3) Engaging in dilatory tactics. 
(b) Sanctions include entry of: 


(1) An order holding certain facts to have 
been established in the proceeding; 
(2) An order expunging, or precluding a 
party from filing, a paper; 
(3) An order precluding a party from presenting 
or contesting a particular issue; 
(4) An order precluding a party from requesting, 
obtaining, or opposing discovery; 
(5) An order excluding evidence; 


(6) An order awarding compensatory 
expenses, including attorney fees; 
(7) An order requiring terminal disclaimer of 
patent term; or 


(8) Judgment in the contested case. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.150 Discovery. 

(a) Limited discovery. A party is not entitled to 
discovery except as authorized in this subpart. The 
parties may agree to discovery among themselves at 
any time. 
(b) Automatic discovery. (1) Within 21 days of 
a request by an opposing party, a party must: 


(i) Serve a legible copy of every requested 
patent, patent application, literature reference, and test 
standard mentioned in the specification of the party’s 
involved patent or application, or application upon 
which the party will rely for benefit, and, if the 
requested material is in a language other than English, 
a translation, if available, and 
(ii) File with the Board a notice (without 
copies of the requested materials) of service of the 
requested materials. 
(2) Unless previously served, or the Board 
orders otherwise, any exhibit cited in a motion or in 
testimony must be served with the citing motion or 
testimony. 
(c) Additional discovery. (1) A party may 
request additional discovery. The requesting party 
must show that such additional discovery is in the 
interests of justice. The Board may specify conditions 
for such additional discovery. 
(2) When appropriate, a party may obtain 
production of documents and things during cross 
examination of an opponent’s witness or during testimony 
authorized under § 41.156. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.151 Admissibility. 

Evidence that is not taken, sought, or filed in accordance 
with this subpart shall not be admissible. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.152 Applicability of the Federal Rules of 
Evidence. 

(a) Generally. Except as otherwise provided in 
this subpart, the Federal Rules of Evidence shall apply 
to contested cases. 
(b) Exclusions. Those portions of the Federal 
Rules of Evidence relating to criminal proceedings, 
juries, and other matters not relevant to proceedings 
under this subpart shall not apply. 
(c) Modifications in terminology. Unless otherwise 
clear from context, the following terms of the 
Federal Rules of Evidence shall be construed as indicated: 


Appellate court means United States Court 
of Appeals for the Federal Circuit or a United States 

 

district court when judicial review is under 35 U.S.C. 

146. 
Civil action, civil proceeding, action, and trial 
mean contested case. 
Courts of the United States, U.S. Magistrate, 

court, trial court, and trier of fact mean Board. 
Hearing means: 

(i) In Federal Rule of Evidence 703, the 
time when the expert testifies. 

(ii) In Federal Rule of Evidence 804(a)(5), 
the time for taking testimony. 

Judge means the Board. 

Judicial notice means official notice. 

Trial or hearing means, in Federal Rule of 

Evidence 807, the time for taking testimony. 

(d) The Board, in determining foreign law, may 
consider any relevant material or source, including 
testimony, whether or not submitted by a party or 
admissible under the Federal Rules of Evidence. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.153 Records of the Office.

 Certification is not necessary as a condition to 
admissibility when the evidence to be submitted is a 
record of the Office to which all parties have access. 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.154 Form of evidence. 

(a) Evidence consists of affidavits, transcripts 
of depositions, documents, and things. All evidence 
must be submitted in the form of an exhibit. 
(b) Translation required. When a party relies on 
a document or is required to produce a document in a 
language other than English, a translation of the document 
into English and an affidavit attesting to the 
accuracy of the translation must be filed with the document. 


(c)(1) Each exhibit must have an exhibit label 
with a unique number in a range assigned by the 
Board, the names of the parties, and the proceeding 
number in the following format: 

JONES EXHIBIT 2001
Jones v. Smith
Contested Case 104,999


(2) When the exhibit is a paper: 

(i) Each page must be uniquely numbered 
in sequence, and 
(ii) The exhibit label must be affixed to the 
lower right corner of the first page of the exhibit without 
obscuring information on the first page or, if 
obscuring is unavoidable, affixed to a duplicate first 
page. 
(d) Exhibit list. Each party must maintain an 
exhibit list with the exhibit number and a brief 
description of each exhibit. If the exhibit is not filed, 
the exhibit list should note that fact. The Board may 
require the filing of a current exhibit list prior to acting 
on a motion.


 [Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004; para. (c)(1) revised, 69 FR 58260, Sept. 30, 2004, 
effective Sept. 30, 2004] 

§ 41.155 Objection; motion to exclude; motion in 
limine. 

(a) Deposition. Objections to deposition evidence 
must be made during the deposition. Evidence 
to cure the objection must be provided during the deposition 
unless the parties to the deposition stipulate 
otherwise on the deposition record. 
(b) Other than deposition. For evidence other 
than deposition evidence: 
(1) Objection. Any objection must be served 
within five business days of service of evidence, other 
than deposition evidence, to which the objection is 
directed. 
(2) Supplemental evidence. The party relying 
on evidence for which an objection is timely served 
may respond to the objection by serving supplemental 
evidence within ten business days of service of the 
objection. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004; para. (b) revised, 69 FR 58260, Sept. 30, 2004, 
effective Sept. 30, 2004] 

§ 41.156 Compelling testimony and production. 

(a) Authorization required. A party seeking to 
compel testimony or production of documents or 
things must file a miscellaneous motion for authorization. 
The miscellaneous motion must describe the 
general relevance of the testimony, document, or thing 
and must: 

 

(1) In the case of testimony, identify the witness 
by name or title, and 
(2) In the case of a document or thing, the 
general nature of the document or thing. 
(b) Outside the United States. For testimony or 
production sought outside the United States, the 
motion must also: 
(1) In the case of testimony. (i) Identify the 
foreign country and explain why the party believes 
the witness can be compelled to testify in the foreign 
country, including a description of the procedures that 
will be used to compel the testimony in the foreign 
country and an estimate of the time it is expected to 
take to obtain the testimony; and 
(ii) Demonstrate that the party has made 
reasonable efforts to secure the agreement of the witness 
to testify in the United States but has been unsuccessful 
in obtaining the agreement, even though the 
party has offered to pay the expenses of the witness to 
travel to and testify in the United States. 
(2) In the case of production of a document 
or thing. (i) Identify the foreign country and explain 
why the party believes production of the document or 
thing can be compelled in the foreign country, including 
a description of the procedures that will be used to 
compel production of the document or thing in the 
foreign country and an estimate of the time it is 
expected to take to obtain production of the document 
or thing; and 
(ii) Demonstrate that the party has made 
reasonable efforts to obtain the agreement of the individual 
or entity having possession, custody, or control 
of the document to produce the document or thing in 
the United States but has been unsuccessful in obtaining 
that agreement, even though the party has offered 
to pay the expenses of producing the document or 
thing in the United States. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.157 Taking testimony. 

(a) Form. Direct testimony must be submitted 
in the form of an affidavit except when the testimony 
is compelled under 35 U.S.C. 24, in which case it may 
be in the form of a deposition transcript. 
(b) Time and location. (1) Uncompelled direct 
testimony may be taken at any time; otherwise, testi


mony may only be taken during such time period as 
the Board may authorize. 

(2) Other testimony. (i) Except as the Board 
otherwise orders, authorized testimony may be taken 
at any reasonable time and location within the United 
States before any disinterested official authorized to 
administer oaths at that location. 
(ii) Testimony outside the United States 
may only be taken as the Board specifically directs. 
(c) Notice of deposition. (1) Prior to the taking 
of testimony, all parties to the proceeding must agree 
on the time and place for taking testimony. If the parties 
cannot agree, the party seeking the testimony 
must initiate a conference with the Board to set a time 
and place. 
(2) Cross-examination should ordinarily take 
place after any supplemental evidence relating to the 
direct testimony has been filed and more than a week 
before the filing date for any paper in which the cross-
examination testimony is expected to be used. A party 
requesting cross-examination testimony of more than 
one witness may choose the order in which the witnesses 
are to be cross-examined. 
(3) In the case of direct testimony, at least 
three business days prior to the conference in paragraph 
(c)(1) of this section, the party seeking the 
direct testimony must serve: 
(i) A list and copy of each document 
under the party’s control and on which the party 
intends to rely, and 
(ii) A list of, and proffer of reasonable 
access to, any thing other than a document under the 
party’s control and on which the party intends to rely. 
(4) Notice of the deposition must be filed at 
least two business days before a deposition. The 
notice limits the scope of the testimony and must list: 
(i) The time and place of the deposition, 
(ii) The name and address of the witness, 






(iii) A list of the exhibits to be relied upon 
during the deposition, and 

(iv) A general description of the scope and 
nature of the testimony to be elicited. 
(5) Motion to quash. Objection to a defect in 
the notice is waived unless a miscellaneous motion to 
quash is promptly filed. 
(d) Deposition in a foreign language. If an 
interpreter will be used during the deposition, the 
party calling the witness must initiate a conference 


 

with the Board at least five business days before the 
deposition. 

(e) Manner of taking testimony. (1) Each witness 
before giving a deposition shall be duly sworn 
according to law by the officer before whom the deposition 
is to be taken. The officer must be authorized to 
take testimony under 35 U.S.C. 23. 
(2) The testimony shall be taken in answer to 
interrogatories with any questions and answers 
recorded in their regular order by the officer, or by 
some other disinterested person in the presence of the 
officer, unless the presence of the officer is waived on 
the record by agreement of all parties. 
(3) Any exhibits relied upon must be numbered 
according to the numbering scheme assigned 
for the contested case and must, if not previously 
served, be served at the deposition. 
(4) All objections made at the time of the 
deposition to the qualifications of the officer taking 
the deposition, the manner of taking it, the evidence 
presented, the conduct of any party, and any other 
objection to the proceeding shall be noted on the 
record by the officer. Evidence objected to shall be 
taken subject to a ruling on the objection. 
(5) When the testimony has been transcribed, 
the witness shall read and sign (in the form of an affidavit) 
a transcript of the deposition unless: 
(i) The parties otherwise agree in writing, 


(ii) The parties waive reading and signature 
by the witness on the record at the deposition, or 


(iii) The witness refuses to read or sign the 
transcript of the deposition. 

(6) The officer shall prepare a certified transcript 
by attaching to the transcript of the deposition a 
certificate in the form of an affidavit signed and 
sealed by the officer. Unless the parties waive any of 
the following requirements, in which case the certificate 
shall so state, the certificate must state: 
(i) The witness was duly sworn by the 
officer before commencement of testimony by the 
witness; 
(ii) The transcript is a true record of the 
testimony given by the witness; 


(iii) The name of the person who recorded 
the testimony and, if the officer did not record it, 
whether the testimony was recorded in the presence of 
the officer; 

(iv) The presence or absence of any opponent; 
(v) The place where the deposition was 
taken and the day and hour when the deposition began 
and ended; 
(vi) The officer has no disqualifying interest, 
personal or financial, in a party; and 


(vii) If a witness refuses to read or sign the 
transcript, the circumstances under which the witness 
refused. 

(7) The officer must promptly provide a copy 
of the transcript to all parties. The proponent of the 
testimony must file the original as an exhibit. 
(8) Any objection to the content, form, or 
manner of taking the deposition, including the qualifications 
of the officer, is waived unless made on the 
record during the deposition and preserved in a timely 
filed miscellaneous motion to exclude. 
(f) Costs. Except as the Board may order or the 
parties may agree in writing, the proponent of the testimony 
shall bear all costs associated with the testimony, 
including the reasonable costs associated with 
making the witness available for the cross-examination.


 [Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.158 Expert testimony; tests and data. 

(a) Expert testimony that does not disclose the 
underlying facts or data on which the opinion is based 
is entitled to little or no weight. Testimony on United 
States patent law will not be admitted. 
(b) If a party relies on a technical test or data 
from such a test, the party must provide an affidavit 
explaining: 
(1) Why the test or data is being used, 


(2) How the test was performed and the data 
was generated, 
(3) How the data is used to determine a 
value, 
(4) How the test is regarded in the relevant 
art, and 
(5) Any other information necessary for the 
Board to evaluate the test and data. 


 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

Subpart E — Patent Interferences 

§ 41.200 Procedure; pendency. 

(a) A patent interference is a contested case 
subject to the procedures set forth in subpart D of this 
part. 
(b) A claim shall be given its broadest reasonable 
construction in light of the specification of the 
application or patent in which it appears. 
(c) Patent interferences shall be administered 
such that pendency before the Board is normally no 
more than two years. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.201 Definitions.

 In addition to the definitions in §§ 41.2 and 41.100, 
the following definitions apply to proceedings under 
this subpart: 

Accord benefit means Board recognition that a 
patent application provides a proper constructive 
reduction to practice under 35 U.S.C. 102(g)(1). 

Constructive reduction to practice means a 
described and enabled anticipation under 35 U.S.C. 
102(g)(1) in a patent application of the subject matter 
of a count. Earliest constructive reduction to practice 
means the first constructive reduction to practice that 
has been continuously disclosed through a chain of 
patent applications including in the involved application 
or patent. For the chain to be continuous, each 
subsequent application must have been co-pending 
under 35 U.S.C. 120 or 121 or timely filed under 35 

U.S.C. 119 or 365(a). 

Count means the Board’s description of the interfering 
subject matter that sets the scope of admissible 
proofs on priority. Where there is more than one 
count, each count must describe a patentably distinct 
invention. 

Involved claim means, for the purposes of 35 
U.S.C.135(a), a claim that has been designated as corresponding 
to the count. 

Senior party means the party entitled to the presumption 
under § 41.207(a)(1) that it is the prior 
inventor. Any other party is a junior party. 

Threshold issue means an issue that, if resolved in 
favor of the movant, would deprive the opponent of 
standing in the interference. Threshold issues may 
include: 

(1) No interference-in-fact, and 

(2) In the case of an involved application 
claim first made after the publication of the movant’s 
application or issuance of the movant’s patent: 
(i) Repose under 35 U.S.C. 135(b) in view 
of the movant’s patent or published application, or 
(ii) Unpatentability for lack of written 
description under 35 U. S.C. 112(1) of an involved 
application claim where the applicant suggested, or 
could have suggested, an interference under § 
41.202(a). 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.202 Suggesting an interference. 

(a) Applicant. An applicant, including a reissue 
applicant, may suggest an interference with another 
application or a patent. The suggestion must: 
(1) Provide sufficient information to identify 
the application or patent with which the applicant 
seeks an interference, 
(2) Identify all claims the applicant believes 
interfere, propose one or more counts, and show how 
the claims correspond to one or more counts, 
(3) For each count, provide a claim chart 
comparing at least one claim of each party corresponding 
to the count and show why the claims interfere 
within the meaning of § 41.203(a), 
(4) Explain in detail why the applicant will 
prevail on priority, 
(5) If a claim has been added or amended to 
provoke an interference, provide a claim chart showing 
the written description for each claim in the applicant’s 
specification, and 
(6) For each constructive reduction to practice 
for which the applicant wishes to be accorded 
benefit, provide a chart showing where the disclosure 
provides a constructive reduction to practice within 
the scope of the interfering subject matter. 
(b) Patentee. A patentee cannot suggest an 
interference under this section but may, to the extent 
permitted under § 1.99 and § 1.291 of this title, alert 
the examiner of an application claiming interfering 
subject matter to the possibility of an interference. 


 

(c) Examiner. An examiner may require an 
applicant to add a claim to provoke an interference. 
Failure to satisfy the requirement within a period (not 
less than one month) the examiner sets will operate as 
a concession of priority for the subject matter of the 
claim. If the interference would be with a patent, the 
applicant must also comply with paragraphs (a)(2) 
through (a)(6) of this section. The claim the examiner 
proposes to have added must, apart from the question 
of priority under 35 U.S.C. 102 (g): 
(1) Be patentable to the applicant, and 


(2) Be drawn to patentable subject matter 
claimed by another applicant or patentee. 


(d) Requirement to show priority under 35 

U.S.C. 102(g).(1) When an applicant has an earliest 
constructive reduction to practice that is later than the 
apparent earliest constructive reduction to practice for 
a patent or published application claiming interfering 
subject matter, the applicant must show why it would 
prevail on priority. 

(2) If an applicant fails to show priority 
under paragraph (d)(1) of this section, an administrative 
patent judge may nevertheless declare an interference 
to place the applicant under an order to show 
cause why judgment should not be entered against the 
applicant on priority. New evidence in support of priority 
will not be admitted except on a showing of 
good cause. The Board may authorize the filing of 
motions to redefine the interfering subject matter or to 
change the benefit accorded to the parties. 
(e) Sufficiency of showing. (1) A showing of 
priority under this section is not sufficient unless it 
would, if unrebutted, support a determination of priority 
in favor of the party making the showing. 
(2) When testimony or production necessary 
to show priority is not available without authorization 
under § 41.150(c) or § 41.156(a), the showing shall 
include: 
(i) Any necessary interrogatory, request 
for admission, request for production, or deposition 
request, and 
(ii) A detailed proffer of what the response 
to the interrogatory or request would be expected to 
be and an explanation of the relevance of the response 
to the question of priority. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.203 Declaration. 

(a) Interfering subject matter. An interference 
exists if the subject matter of a claim of one party 
would, if prior art, have anticipated or rendered obvious 
the subject matter of a claim of the opposing party 
and vice versa. 
(b) Notice of declaration. An administrative 
patent judge declares the patent interference on behalf 
of the Director. A notice declaring an interference 
identifies: 
(1) The interfering subject matter; 


(2) The involved applications, patents, and 
claims; 
(3) The accorded benefit for each count; and 
(4) The claims corresponding to each count. 




(c) Redeclaration. An administrative patent 
judge may redeclare a patent interference on behalf of 
the Director to change the declaration made under 
paragraph (b) of this section. 
(d) A party may suggest the addition of a patent 
or application to the interference or the declaration of 
an additional interference. The suggestion should 
make the showings required under § 41.202(a) of this 
part. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.204 Notice of basis for relief. 

(a) Priority statement. (1) A party may not submit 
evidence of its priority in addition to its accorded 
benefit unless it files a statement setting forth all 
bases on which the party intends to establish its entitlement 
to judgment on priority. 
(2) The priority statement must: 


(i) State the date and location of the 
party’s earliest corroborated conception, 
(ii) State the date and location of the 
party’s earliest corroborated actual reduction to practice, 


(iii) State the earliest corroborated date on 
which the party’s diligence began, and 

(iv) Provide a copy of the earliest document 
upon which the party will rely to show conception. 
(3) If a junior party fails to file a priority 
statement overcoming a senior party’s accorded benefit, 
judgment shall be entered against the junior party 
absent a showing of good cause. 


 

(b) Other substantive motions. The Board may 
require a party to list the motions it intends to file, 
including sufficient detail to place the Board and the 
opponent on notice of the precise relief sought. 
(c) Filing and service. The Board will set the 
times for filing and serving statements required under 
this section. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.205 Settlement agreements. 

(a) Constructive notice; time for filing. Pursuant 
to 35 U.S.C. 135(c), an agreement or understanding, 
including collateral agreements referred to 
therein, made in connection with or in contemplation 
of the termination of an interference must be filed 
prior to the termination of the interference between 
the parties to the agreement. After a final decision is 
entered by the Board, an interference is considered 
terminated when no appeal (35 U.S.C. 141) or other 
review (35 U.S.C. 146) has been or can be taken or 
had. If an appeal to the U.S. Court of Appeals for the 
Federal Circuit (under 35 U.S.C. 141) or a civil action 
(under 35 U.S.C. 146) has been filed the interference 
is considered terminated when the appeal or civil 
action is terminated. A civil action is terminated when 
the time to appeal the judgment expires. An appeal to 
the U.S. Court of Appeals for the Federal Circuit, 
whether from a decision of the Board or a judgment in 
a civil action, is terminated when the mandate is 
issued by the Court. 
(b) Untimely filing. The Chief Administrative 
Patent Judge may permit the filing of an agreement 
under paragraph (a) of this section up to six months 
after termination upon petition and a showing of good 
cause for the failure to file prior to termination. 
(c) Request to keep separate. Any party to an 
agreement under paragraph (a) of this section may 
request that the agreement be kept separate from the 
interference file. The request must be filed with or 
promptly after the agreement is filed. 
(d) Access to agreement. Any person, other 
than a representative of a Government agency, may 
have access to an agreement kept separate under paragraph 
(c) of this section only upon petition and on a 
showing of good cause. The agreement will be available 
to Government agencies on written request. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.206 Common interests in the invention. 

An administrative patent judge may decline to 
declare, or if already declared the Board may issue 
judgment in, an interference between an application 
and another application or patent that are commonly 
owned. 

[Added, 69 FR 49959, Aug. 12, 2004, effective 
Sept. 13, 2004] 

§ 41.207 Presumptions. 

(a) Priority—(1) Order of invention. Parties are 
presumed to have invented interfering subject matter 
in the order of the dates of their accorded benefit for 
each count. If two parties are accorded the benefit of 
the same earliest date of constructive reduction to 
practice, then neither party is entitled to a presumption 
of priority with respect to the other such party. 
(2) Evidentiary standard. Priority may be 
proved by a preponderance of the evidence except a 
party must prove priority by clear and convincing evidence 
if the date of its earliest constructive reduction 
to practice is after the issue date of an involved patent 
or the publication date under 35 U.S.C. 122(b) of an 
involved application or patent. 
(b) Claim correspondence. (1) For the purposes 
of determining priority and derivation, all claims of a 
party corresponding to the count are presumed to 
stand or fall together. To challenge this presumption, a 
party must file a timely substantive motion to have a 
corresponding claim designated as not corresponding 
to the count. No presumption based on claim correspondence 
regarding the grouping of claims exists for 
other grounds of unpatentability. 
(2) A claim corresponds to a count if the subject 
matter of the count, treated as prior art to the 
claim, would have anticipated or rendered obvious the 
subject matter of the claim. 
(c) Cross-applicability of prior art. When a 
motion for judgment of unpatentability against an 
opponent’s claim on the basis of prior art is granted, 
each of the movant’s claims corresponding to the 
same count as the opponent’s claim will be presumed 
to be unpatentable in view of the same prior art unless 
the movant in its motion rebuts this presumption. 


 

[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

§ 41.208 Content of substantive and responsive 
motions.

 The general requirements for motions in contested 
cases are stated at § 41.121(c). 

(a) In an interference, substantive motions 
must: 
(1) Raise a threshold issue, 


(2) Seek to change the scope of the definition 
of the interfering subject matter or the correspondence 
of claims to the count, 
(3) Seek to change the benefit accorded for 
the count, or 
(4) Seek judgment on derivation or on priority. 
(b) To be sufficient, a motion must provide a 
showing, supported with appropriate evidence, such 
that, if unrebutted, it would justify the relief sought. 
The burden of proof is on the movant. 
(c) Showing patentability. (1) A party moving 
to add or amend a claim must show the claim is patentable. 
(2) A party moving to add or amend a count 
must show the count is patentable over prior art. 


[Added, 69 FR 49959, Aug. 12, 2004, effective Sept. 
13, 2004] 

SUBCHAPTER B – ADMINISTRATION 

PART 102 — DISCLOSURE OF 
GOVERNMENT INFORMATION


Subpart A - Freedom of Information Act

 Sec. 

102.1 General. 

102.2 Public reference facilities. 

102.3 Records under FOIA. 

102.4 Requirements for making requests. 

102.5 Responsibility for responding to requests. 

102.6 Time limits and expedited processing. 

102.7 Responses to requests. 

102.9 Business Information. 

102.10 Appeals from initial determinations or 
untimely delays. 

102.11 Fees. 

Subpart B - Privacy Act 

102.21 Purpose and scope. 

102.22 Definitions. 

102.23 Procedures for making inquiries. 

102.24 Procedures for making requests for records. 

102.25 Disclosure of requested records to individuals. 

102.26 Special procedures: Medical records. 

102.27 Procedures for making requests for correction 
or amendment. 

102.28 Review of requests for correction or amendment. 

102.29 Appeal of initial adverse determination on 
correction or amendment. 

102.30 Disclosure of record to person other than the 
individual to whom it pertains. 

102.31 Fees. 

102.32 Penalties. 

102.33 General exemptions. 

102.34 Specific exemptions.

 Appendix to Part 102— Systems of Records Noticed by 
Other Federal Agencies and Applicable to USPTO 
Records, and Applicability of this Part Thereto 

Subpart A — Freedom of Information Act 

§ 102.1 General. 

(a) The information in this part is furnished for 
the guidance of the public and in compliance with the 
requirements of the Freedom of Information Act 
(FOIA), as amended (5 U.S.C. 552). This part sets 
forth the procedures the United States Patent and 
Trademark Office (USPTO) follows to make publicly 
available the materials and indices specified in 
5 U.S.C. 552(a)(2) and records requested under 
5 U.S.C. 552(a)(3). Information routinely provided to 
the public as part of a regular USPTO activity (for 
example, press releases issued by the Office of Public 
Affairs) may be provided to the public without following 
this part. USPTO’s policy is to make discretionary 
disclosures of records or information exempt 
from disclosure under FOIA whenever disclosure 
would not foreseeably harm an interest protected by a 

 

FOIA exemption, but this policy does not create any 
right enforceable in court. 

(b) As used in this subpart, FOIA Officer means 
the USPTO employee designated to administer FOIA 
for USPTO. To ensure prompt processing of a request, 
correspondence should be addressed to the FOIA 
Officer, United States Patent and Trademark Office, 

P.O. Box 1450, Alexandria, Virginia 22313-1450, or 
delivered by hand to 10B20, Madison Building East, 
600 Dulany Street, Alexandria, Virginia. 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; para. (b) revised, 70 FR 10488, Mar. 4, 
2005, effective Mar. 4, 2005] 

§ 102.2 Public reference facilities. 

(a) USPTO maintains a public reference facility 
that contains the records FOIA requires to be made 
regularly available for public inspection and copying; 
furnishes information and otherwise assists the public 
concerning USPTO operations under FOIA; and 
receives and processes requests for records under 
FOIA. The FOIA Officer is responsible for determining 
which of USPTO’s records are required to be 
made available for public inspection and copying, 
and for making those records available in USPTO’s 
reference and records inspection facility. The FOIA 
Officer shall maintain and make available for public 
inspection and copying a current subject-matter index 
of USPTO’s public inspection facility records. Each 
index shall be updated regularly, at least quarterly, 
with respect to newly included records. In accordance 
with 5 U.S.C. 552(a)(2), USPTO has determined that 
it is unnecessary and impracticable to publish quarterly, 
or more frequently, and distribute copies of the 
index and supplements thereto. The public reference 
facility is located in the Public Search Room, Crystal 
Plaza Three, 2021 South Clark Place, Room 1A01, 
Arlington, Virginia. 
(b) The FOIA Officer shall also make public 
inspection facility records created by USPTO on or 
after November 1, 1996, available electronically 
through USPTO’s World Wide Web site (http:// 
www.uspto.gov). Information available at the site 
shall include: 


(1) The FOIA Officer’s index of the public 
inspection facility records, which indicates which 
records are available electronically; and 
(2) The general index referred to in paragraph 
(c)(3) of this section. 
(c) USPTO maintains and makes available for 
public inspection and copying: 
(1) A current index providing identifying 
information for the public as to any matter that is 
issued, adopted, or promulgated after July 4, 1967, 
and that is retained as a record and is required to be 
made available or published. Copies of the index are 
available upon request after payment of the direct cost 
of duplication; 
(2) Copies of records that have been released 
and that the FOIA Officer determines, because of 
their subject matter, have become or are likely to 
become the subject of subsequent requests for substantially 
the same records; 
(3) A general index of the records described 
in paragraph (c)(2) of this section; 
(4) Final opinions and orders, including concurring 
and dissenting opinions made in the adjudication 
of cases; 
(5) Those statements of policy and interpretations 
that have been adopted by USPTO and are not 
published in the ; and 
(6) Administrative staff manuals and instructions 
to staff that affect a member of the public. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.3 Records under FOIA. 

(a) Records under FOIA include all Government 
records, regardless of format, medium or physical 
characteristics, and include electronic records and 
information, audiotapes, videotapes, and photographs. 
(b) There is no obligation to create, compile, or 
obtain from outside USPTO a record to satisfy a 
FOIA request. With regard to electronic data, the 
issue of whether records are created or merely 
extracted from an existing database is not always 
apparent. When responding to FOIA requests for electronic 
data where creation of a record or programming 
becomes an issue, USPTO shall undertake reasonable 
efforts to search for the information in electronic format. 


 

(c) USPTO officials may, upon request, create 
and provide new information pursuant to user fee statutes, 
such as the first paragraph of 15 U.S.C. 1525, or 
in accordance with authority otherwise provided by 
law. This is outside the scope of FOIA. 
(d) The FOIA Officer shall preserve all correspondence 
pertaining to the requests received under 
this subpart, as well as copies of all requested records, 
until disposition or destruction is authorized by Title 
44 of the United States Code or a National Archives 
and Records Administration’s General Records 
Schedule. The FOIA Officer shall not dispose of 
records while they are the subject of a pending 
request, appeal, or lawsuit under FOIA. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.4 Requirements for making requests. 

(a) A request for USPTO records that are not 
customarily made available to the public as part of 
USPTO’s regular informational services must be 
in writing, and shall be processed under FOIA, 
regardless of whether FOIA is mentioned in the 
request. Requests should be sent to the USPTO FOIA 
Officer, United States Patent and Trademark Office, 

P.O. Box 1450, Alexandria, Virginia 22313-1450 
(records FOIA requires to be made regularly available 
for public inspection and copying are addressed in 
§ 102.2(c)). For the quickest handling, the request letter 
and envelope should be marked “Freedom of 
Information Act Request.” For requests for records 
about oneself, § 102.24 contains additional requirements. 
For requests for records about another individual, 
either a written authorization signed by that 
individual permitting disclosure of those records to 
the requester or proof that individual is deceased (for 
example, a copy of a death certificate or an obituary) 
facilitates processing the request. 

(b) The records requested must be described in 
enough detail to enable USPTO personnel to locate 
them with a reasonable amount of effort. Whenever 
possible, a request should include specific information 
about each record sought, such as the date, title or 
name, author, recipient, and subject matter of the 
record, and the name and location of the office where 
the record is located. Also, if records about a court 
case are sought, the title of the case, the court in 
which the case was filed, and the nature of the case 
should be included. If known, any file designations or 
descriptions for the requested records should be 
included. In general, the more specifically the request 
describes the records sought, the greater the likelihood 
that USPTO will locate those records. If the 
FOIA Officer determines that a request does not reasonably 
describe records, the FOIA Officer will 
inform the requester what additional information is 
needed or why the request is otherwise insufficient. 
The FOIA Officer also may give the requester an 
opportunity to discuss the request so that it may be 
modified to meet the requirements of this section. 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 102.5 Responsibility for responding to requests. 

(a) In general. Except as stated in paragraph (b) 
of this section, the USPTO will process FOIA 
requests directed to USPTO. In determining records 
responsive to a request, the FOIA Officer shall 
include only those records within USPTO’s possession 
and control as of the date the FOIA Officer 
receives the request. 
(b) Consultations and referrals. If the FOIA 
Officer receives a request for a record in USPTO’s 
possession in which another Federal agency subject to 
FOIA has the primary interest, the FOIA Officer shall 
refer the record to that agency for direct response to 
the requester. The FOIA Officer shall consult with 
another Federal agency before responding to a 
requester if the FOIA Officer receives a request for a 
record in which another Federal agency subject to 
FOIA has a significant interest, but not the primary 
interest; or another Federal agency not subject to 
FOIA has the primary interest or a significant interest. 
Ordinarily, the agency that originated a record will be 
presumed to have the primary interest in it. 
(c) Notice of referral. Whenever a FOIA 
Officer refers a document to another Federal agency 
for direct response to the requester, the FOIA Officer 
will ordinarily notify the requester in writing of the 
referral and inform the requester of the name of the 
agency to which the document was referred. 
(d) Timing of responses to consultations and 
referrals. All consultations and referrals shall be handled 
according to the date the FOIA request was 
received by the first Federal agency. 


 

(e) Agreements regarding consultations and 
referrals. The FOIA Officer may make agreements 
with other Federal agencies to eliminate the need for 
consultations or referrals for particular types of 
records. 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.6 Time limits and expedited processing. 

(a) In general. The FOIA Officer ordinarily 
shall respond to requests according to their order of 
receipt. 
(b) Initial response and appeal. Subject to paragraph 
(c)(1) of this section, an initial response shall be 
made within 20 working days (i.e., excluding Saturdays, 
Sundays, and legal public holidays) of the 
receipt of a request for a record under this part by the 
proper FOIA Officer identified in accordance with 
§ 102.5(a), and an appeal shall be decided within 
20 working days of its receipt by the Office of the 
General Counsel. 
(c) Unusual circumstances. 


(1) In unusual circumstances as specified in 
paragraph (c)(2) of this section, the FOIA Officer may 
extend the time limits in paragraph (b) of this section 
by notifying the requester in writing as soon as practicable 
of the unusual circumstances and of the date by 
which processing of the request is expected to be 
completed. Extensions of time for the initial determination 
and extensions on appeal may not exceed a 
total of ten working days, unless the requester agrees 
to a longer extension, or the FOIA Officer provides 
the requester with an opportunity either to limit the 
scope of the request so that it may be processed within 
the applicable time limit, or to arrange an alternative 
time frame for processing the request or a modified 
request. 
(2) As used in this section, unusual circumstances, means, but only to the extent reasonably necessary 
to properly process the particular request: 
(i) The need to search for and collect the 
requested records from field facilities or other establishments 
separate from the office processing the 
request; 
(ii) The need to search for, collect, and 
appropriately examine a voluminous amount of separate 
and distinct records that are the subject of a single 
request; or 


(iii) The need for consultation, which shall 
be conducted with all practicable speed, with another 
Federal agency having a substantial interest in the 
determination of the request. 

(3) Unusual circumstances do not include a 
delay that results from a predictable workload of 
requests, unless USPTO demonstrates reasonable 
progress in reducing its backlog of pending requests. 
Refusal to reasonably modify the scope of a request or 
arrange an alternate time frame may affect a 
requester’s ability to obtain judicial review. 
(4) If the FOIA Officer reasonably believes 
that multiple requests submitted by a requester, or by 
a group of requesters acting in concert, constitute a 
single request that would otherwise involve unusual 
circumstances, and the requests involve clearly 
related matters, the FOIA Officer may aggregate 
them. Multiple requests involving unrelated matters 
will not be aggregated. 
(d) Multitrack processing. 


(1) The FOIA Officer may use two or more 
processing tracks by distinguishing between simple 
and more complex requests based on the number of 
pages involved, or some other measure of the amount 
of work and/or time needed to process the request, 
and whether the request qualifies for expedited processing 
as described in paragraph (e) of this section. 
(2) The FOIA Officer may provide requesters 
in a slower track with an opportunity to limit the 
scope of their requests in order to qualify for faster 
processing. The FOIA Officer may contact the 
requester by telephone or by letter, whichever is most 
efficient in each case. 
(e) Expedited processing. 


(1) Requests and appeals shall be taken out 
of order and given expedited treatment whenever it is 
determined they involve: 
(i) Circumstances in which the lack of 
expedited treatment could reasonably be expected to 
pose an imminent threat to the life or physical safety 
of an individual; 
(ii) The loss of substantial due process 
rights; 


(iii) A matter of widespread and exceptional 
media interest in which there exist questions 
about the Government’s integrity that affect public 
confidence; or 

 

(iv) An urgency to inform the public about 
an actual or alleged Federal Government activity, if 
made by a person primarily engaged in disseminating 
information. 
(2) A request for expedited processing may 
be made at the time of the initial request for records or 
at any later time. For a prompt determination, a 
request for expedited processing should be sent to the 
FOIA Officer. 
(3) A requester who seeks expedited processing 
must submit a statement, certified to be true and 
correct to the best of that person’s knowledge and 
belief, explaining in detail the basis for requesting 
expedited processing. For example, a requester within 
the category described in paragraph (e)(1)(iv) of this 
section, if not a full-time member of the news media, 
must establish that he or she is a person whose main 
professional activity or occupation is information dissemination, 
though it need not be his or her sole occupation. 
A requester within the category described in 
paragraph (e)(1)(iv) of this section must also establish 
a particular urgency to inform the public about the 
Government activity involved in the request, beyond 
the public’s right to know about Government activity 
generally. The formality of certification may be 
waived as a matter of administrative discretion. 
(4) Within ten calendar days of receipt of a 
request for expedited processing, the FOIA Officer 
will decide whether to grant it and shall notify the 
requester of the decision. If a request for expedited 
treatment is granted, the request shall be given priority 
and processed as soon as practicable. If a request 
for expedited processing is denied, any appeal of that 
decision shall be acted on expeditiously. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.7 Responses to requests. 

(a) Grants of requests. If the FOIA Officer 
makes a determination to grant a request in whole or 
in part, the FOIA Officer will notify the requester in 
writing. The FOIA Officer will inform the requester 
in the notice of any fee charged under § 102.11 and 
disclose records to the requester promptly upon payment 
of any applicable fee. Records disclosed in part 
shall be marked or annotated to show each applicable 
FOIA exemption and the amount of information 
deleted, unless doing so would harm an interest protected 
by an applicable exemption. The location of the 
information deleted shall also be indicated on the 
record, if feasible. 

(b) Adverse determinations of requests. If the 
FOIA Officer makes an adverse determination regarding 
a request, the FOIA Officer will notify the 
requester of that determination in writing. An adverse 
determination is a denial of a request in any respect, 
namely: A determination to withhold any requested 
record in whole or in part; a determination that a 
requested record does not exist or cannot be located; a 
determination that a record is not readily reproducible 
in the form or format sought by the requester; a determination 
that what has been requested is not a record 
subject to FOIA (except that a determination under 
§ 102.11(j) that records are to be made available 
under a fee statute other than FOIA is not an adverse 
determination); a determination against the requester 
on any disputed fee matter, including a denial of a 
request for a fee waiver; or a denial of a request for 
expedited treatment. Each denial letter shall be signed 
by the FOIA Officer and shall include: 
(1) The name and title or position of the 
denying official; 
(2) A brief statement of the reason(s) for the 
denial, including applicable FOIA exemption(s); 
(3) An estimate of the volume of records or 
information withheld, in number of pages or some 
other reasonable form of estimation. This estimate 
need not be provided if the volume is otherwise indicated 
through deletions on records disclosed in part, 
or if providing an estimate would harm an interest 
protected by an applicable FOIA exemption; and 
(4) A statement that the denial may be 
appealed, and a list of the requirements for filing an 
appeal under § 102.10(b). 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.9 Business Information. 

(a) In general. Business information obtained 
by USPTO from a submitter will be disclosed under 
FOIA only under this section. 
(b) Definitions. For the purposes of this section: 


(1) Business information means commercial 
or financial information, obtained by USPTO from a 
submitter, which may be protected from disclosure 
under FOIA exemption 4 (5 U.S.C. 552(b)(4)). 


 

(2) Submitter means any person or entity outside 
the Federal Government from whom USPTO 
obtains business information, directly or indirectly. 
The term includes corporations; state, local and tribal 
governments; and foreign governments. 
(c) Designation of business information. A submitter 
of business information should designate by 
appropriate markings, either at the time of submission 
or at a reasonable time thereafter, any portions of its 
submission that it considers to be protected from disclosure 
under FOIA exemption 4. These designations 
will expire ten years after the date of the submission 
unless the submitter requests, and provides justification 
for, a longer designation period. 
(d) Notice to submitters. The FOIA Officer 
shall provide a submitter with prompt written notice 
of a FOIA request or administrative appeal that seeks 
its business information whenever required under 
paragraph (e) of this section, except as provided in 
paragraph (h) of this section, in order to give the submitter 
an opportunity under paragraph (f) of this section 
to object to disclosure of any specified portion of 
that information. Such written notice shall be sent via 
certified mail, return receipt requested, or similar 
means. The notice shall either describe the business 
information requested or include copies of the 
requested records containing the information. When 
notification of a large number of submitters is 
required, notification may be made by posting or publishing 
the notice in a place reasonably likely to 
accomplish notification. 
(e) When notice is required. Notice shall be 
given to the submitter whenever: 
(1) The information has been designated in 
good faith by the submitter as protected from disclosure 
under FOIA exemption 4; or 
(2) The FOIA Officer has reason to believe 
that the information may be protected from disclosure 
under FOIA exemption 4. 
(f) Opportunity to object to disclosure. The 
FOIA Officer shall allow a submitter seven working 
days (i.e., excluding Saturdays, Sundays, and legal 
public holidays) from the date of receipt of the written 
notice described in paragraph (d) of this section to 
provide the FOIA Officer with a detailed statement of 
any objection to disclosure. The statement must specify 
all grounds for withholding any portion of the 
information under any exemption of FOIA and, in the 


case of exemption 4, it must show why the information 
is a trade secret or commercial or financial information 
that is privileged or confidential. If a submitter 
fails to respond to the notice within the time specified, 
the submitter will be considered to have no objection 
to disclosure of the information. Information a submitter 
provides under this paragraph may itself be 
subject to disclosure under FOIA. 

(g) Notice of intent to disclose. The FOIA 
Officer shall consider a submitter’s objections and 
specific grounds under FOIA for nondisclosure in 
deciding whether to disclose business information. If 
the FOIA Officer decides to disclose business information 
over the objection of a submitter, the FOIA 
Officer shall give the submitter written notice via certified 
mail, return receipt requested, or similar means, 
which shall include: 
(1) A statement of reason(s) why the submitter’s 
objections to disclosure were not sustained; 
(2) A description of the business information 
to be disclosed; and 
(3) A statement that the FOIA Officer 
intends to disclose the information seven working 
days from the date the submitter receives the notice. 
(h) Exceptions to notice requirements. The 
notice requirements of paragraphs (d) and (g) of this 
section shall not apply if: 
(1) The FOIA Officer determines that the 
information should not be disclosed; 
(2) The information has been lawfully published 
or has been officially made available to the 
public; 
(3) Disclosure of the information is required 
by statute (other than FOIA) or by a regulation issued 
in accordance with Executive Order 12600; or 
(4) The designation made by the submitter 
under paragraph (c) of this section appears obviously 
frivolous, in which case the FOIA Officer shall provide 
the submitter written notice of any final decision 
to disclose the information seven working days from 
the date the submitter receives the notice. 
(i) Notice of FOIA lawsuit. Whenever a 
requester files a lawsuit seeking to compel the disclosure 
of business information, the FOIA Officer shall 
promptly notify the submitter. 
(j) Corresponding notice to requesters. Whenever 
a FOIA Officer provides a submitter with 
notice and an opportunity to object to disclosure 


 

under paragraph (d) of this section, the FOIA Officer 
shall also notify the requester(s). Whenever a submitter 
files a lawsuit seeking to prevent the disclosure of 
business information, the FOIA Officer shall notify 
the requester(s). 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.10 Appeals from initial determinations or 
untimely delays. 

(a) If a request for records is initially denied in 
whole or in part, or has not been timely determined, or 
if a requester receives an adverse initial determination 
regarding any other matter under this subpart (as 
described in § 102.7(b)), the requester may file a written 
appeal, which must be received by the Office of 
General Counsel within thirty calendar days of the 
date of the written denial or, if there has been no 
determination, may be submitted anytime after the 
due date, including the last extension under 
§ 102.6(c), of the determination. 
(b) Appeals shall be decided by a Deputy General 
Counsel. Appeals should be addressed to the 
General Counsel, United States Patent and Trademark 
Office, PO Box 1450, Alexandria, Virginia 223131450. 
Both the letter and the appeal envelope should 
be clearly marked “Freedom of Information Appeal”. 
The appeal must include a copy of the original request 
and the initial denial, if any, and may include a statement 
of the reasons why the records requested should 
be made available and why the initial denial, if any, 
was in error. No opportunity for personal appearance, 
oral argument or hearing on appeal is provided. 
(c) If an appeal is granted, the person making 
the appeal shall be immediately notified and copies of 
the releasable documents shall be made available 
promptly thereafter upon receipt of appropriate fees 
determined in accordance with § 102.11. 
(d) If no determination of an appeal has been 
sent to the requester within the twenty-working-day 
period specified in § 102.6(b) or the last extension 
thereof, the requester is deemed to have exhausted his 
administrative remedies with respect to the request, 
giving rise to a right of judicial review under 5 U.S.C. 
552(a)(6)(C). If the person making a request initiates 
a civil action against USPTO based on the provision 


in this paragraph, the administrative appeal process 
may continue. 

(e) A determination on appeal shall be in writing 
and, when it denies records in whole or in part, the 
letter to the requester shall include: 
(1) A brief explanation of the basis for the 
denial, including a list of applicable FOIA exemptions 
and a description of how the exemptions apply; 
(2) A statement that the decision is final; 


(3) Notification that judicial review of the 
denial is available in the United States district court 
for the district in which the requester resides or has its 
principal place of business, the United States District 
Court for the Eastern District of Virginia, or the District 
of Columbia; and 
(4) The name and title or position of the official 
responsible for denying the appeal. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 102.11 Fees. 

(a) In general. USPTO shall charge for processing 
requests under FOIA in accordance with paragraph 
(c) of this section, except when fees are limited 
under paragraph (d) of this section or when a waiver 
or reduction of fees is granted under paragraph (k) of 
this section. USPTO shall collect all applicable fees 
before sending copies of requested records to a 
requester. Requesters must pay fees by check or 
money order made payable to the Treasury of the 
United States. 
(b) Definitions. For purposes of this section: 


(1) Commercial use request means a request 
from or on behalf of a person who seeks information 
for a use or purpose that furthers his or her commercial, 
trade, or profit interests, which can include furthering 
those interests through litigation. The FOIA 
Officer shall determine, whenever reasonably possible, 
the use to which a requester will put the requested 
records. When it appears that the requester will put 
the records to a commercial use, either because of the 
nature of the request itself or because the FOIA 
Officer has reasonable cause to doubt a requester’s 
stated use, the FOIA Officer shall provide the 
requester a reasonable opportunity to submit further 
clarification. 


 

(2) Direct costs means those expenses 
USPTO incurs in searching for and duplicating (and, 
in the case of commercial use requests, reviewing) 
records to respond to a FOIA request. Direct costs 
include, for example, the labor costs of the employee 
performing the work (the basic rate of pay for the 
employee, plus 16 percent of that rate to cover benefits). 
Not included in direct costs are overhead 
expenses such as the costs of space and heating or 
lighting of the facility in which the records are kept. 
(3) Duplication means the making of a copy 
of a record, or of the information contained in it, necessary 
to respond to a FOIA request. Copies may take 
the form of paper, microform, audiovisual materials, 
or electronic records (for example, magnetic tape or 
disk), among others. The FOIA Officer shall honor a 
requester’s specified preference of form or format of 
disclosure if the record is readily reproducible with 
reasonable efforts in the requested form or format. 
(4) Educational institution means a preschool, 
a public or private elementary or secondary 
school, an institution of undergraduate higher education, 
an institution of graduate higher education, an 
institution of professional education, or an institution 
of vocational education, that operates a program of 
scholarly research. To be in this category, a requester 
must show that the request is authorized by and is 
made under the auspices of a qualifying institution, 
and that the records are sought to further scholarly 
research rather than for a commercial use. 
(5) Noncommercial scientific institution 
means an institution that is not operated on a “commercial” 
basis, as that term is defined in paragraph 
(b)(1) of this section, and that is operated solely for 
the purpose of conducting scientific research, the 
results of which are not intended to promote any particular 
product or industry. To be in this category, a 
requester must show that the request is authorized by 
and is made under the auspices of a qualifying institution 
and that the records are sought to further scientific 
research rather than for a commercial use. 
(6) Representative of the news media, or 
news media requester means any person actively 
gathering news for an entity that is organized and 
operated to publish or broadcast news to the public. 
The term “news” means information that is about cur


rent events or that would be of current interest to the 
public. Examples of news media entities include television 
or radio stations broadcasting to the public at 
large and publishers of periodicals (but only if they 
can qualify as disseminators of “news”) that make 
their products available for purchase or subscription 
by the general public. For “freelance” journalists to be 
regarded as working for a news organization, they 
must demonstrate a solid basis for expecting publication 
through that organization. A publication contract 
would be the clearest proof, but the FOIA Officer 
shall also look to the past publication record of a 
requester in making this determination. To be in this 
category, a requester must not be seeking the 
requested records for a commercial use. However, a 
request for records supporting the news-dissemination 
function of the requester shall not be considered to be 
for a commercial use. 

(7) Review means the examination of a 
record located in response to a request in order to 
determine whether any portion of it is exempt from 
disclosure. It also includes processing any record for 
disclosure—for example, doing all that is necessary to 
redact it and prepare it for disclosure. Review costs 
are recoverable even if a record ultimately is not disclosed. 
Review time does not include time spent 
resolving general legal or policy issues regarding the 
application of exemptions. 
(8) Search means the process of looking for 
and retrieving records or information responsive to a 
request. It includes page-by-page or line-by-line identification 
of information within records and also 
includes reasonable efforts to locate and retrieve 
information from records maintained in electronic 
form or format. The FOIA Officer shall ensure that 
searches are done in the most efficient and least 
expensive manner reasonably possible. 
(c) Fees. In responding to FOIA requests, the 
FOIA Officer shall charge the fees summarized in 
chart form in paragraphs (c)(1) and (c)(2) of this section 
and explained in paragraphs (c)(3) through (c)(5) 
of this section, unless a waiver or reduction of fees 
has been granted under paragraph (k) of this section. 
(1) The four categories and chargeable fees 
are: 


 

Category 

(i) Commercial Use 
Requesters 
(ii) Educational and Noncommercial 
Scientific 
Institution Requesters 


(iii) Representatives of 
the News Media 

(iv) All Other Requesters 
Chargeable fees 

Search, Review, and 
Duplication. 

Duplication (excluding 
the cost of the first 100 
pages). 

Duplication (excluding 
the cost of the first 100 
pages). 

Search and Duplication 
(excluding the cost of the 
first 2 hours of search and 
100 pages). 

(2) Uniform fee schedule. 

Service 

(i) Manual search 
(ii) Computerized search 


(iii) Duplication of 
records: (A) Paper copy 
reproduction (B) 
Other reproduction (e.g., 
computer disk or printout, 
microfilm, microfiche, 
or microform)

(iv) Review of records 
(includes preparation for 
release, i.e. excising) 

(3) Search. 

Rate 

Actual salary rate of 
employee involved, plus 
16 percent of salary rate. 

Actual direct cost, including 
operator time. 

 $.15 per page Actual 
direct cost, including 
operator time 

Actual salary rate of 
employee conducting 
review, plus 16 percent of 
salary rate. 

(i) Search fees shall be charged for all 
requests—other than requests made by educational 
institutions, noncommercial scientific institutions, or 
representatives of the news media—subject to the 
limitations of paragraph (d) of this section. The FOIA 
Officer will charge for time spent searching even if no 
responsive records are located or if located records are 
entirely exempt from disclosure. Search fees shall be 
the direct costs of conducting the search by the 
involved employees 

(ii) For computer searches of records, 
requesters will be charged the direct costs of conducting 
the search, although certain requesters (as provided 
in paragraph (d)(1) of this section) will be 
charged no search fee and certain other requesters (as 
provided in paragraph (d)(3) of this section) are entitled 
to the cost equivalent of two hours of manual 
search time without charge. These direct costs include 
the costs, attributable to the search, of operating a 
central processing unit and operator/programmer salary. 
(4) Duplication. Duplication fees will be 
charged to all requesters, subject to the limitations of 
paragraph (d) of this section. For a paper photocopy 
of a record (no more than one copy of which need be 
supplied), the fee shall be $.15 cents per page. For 
copies produced by computer, such as tapes or printouts, 
the FOIA Officer shall charge the direct costs, 
including operator time, of producing the copy. For 
other forms of duplication, the FOIA Officer will 
charge the direct costs of that duplication. 
(5) Review. Review fees shall be charged to 
requesters who make a commercial use request. 
Review fees shall be charged only for the initial 
record review—the review done when the FOIA 
Officer determines whether an exemption applies to a 
particular record at the initial request level. No charge 
will be made for review at the administrative appeal 
level for an exemption already applied. However, 
records withheld under an exemption that is subsequently 
determined not to apply may be reviewed 
again to determine whether any other exemption not 
previously considered applies, and the costs of that 
review are chargeable. Review fees shall be the direct 
costs of conducting the review by the involved 
employees. 
(d) Limitations on charging fees. 


(1) No search fee will be charged for requests 
by educational institutions, noncommercial scientific 
institutions, or representatives of the news media. 
(2) No search fee or review fee will be 
charged for a quarter-hour period unless more than 
half of that period is required for search or review. 


 

(3) Except for requesters seeking records for 
a commercial use, the FOIA Officer will provide 
without charge: 
(i) The first 100 pages of duplication (or 
the cost equivalent); and 
(ii) The first two hours of search (or the 
cost equivalent). 
(4) Whenever a total fee calculated under 
paragraph (c) of this section is $20.00 or less for any 
request, no fee will be charged. 
(5) The provisions of paragraphs (d) (3) and 


(4) of this section work together. This means that for 
requesters other than those seeking records for a commercial 
use, no fee will be charged unless the cost of 
the search in excess of two hours plus the cost of 
duplication in excess of 100 pages totals more than 
$20.00. 
(e) Notice of anticipated fees over $20.00. 
When the FOIA Officer determines or estimates that 
the fees to be charged under this section will be more 
than $20.00, the FOIA Officer shall notify the 
requester of the actual or estimated fees, unless the 
requester has indicated a willingness to pay fees as 
high as those anticipated. If only a portion of the fee 
can be estimated readily, the FOIA Officer shall 
advise the requester that the estimated fee may be 
only a portion of the total fee. If the FOIA Officer has 
notified a requester that actual or estimated fees are 
more than $20.00, the FOIA Officer shall not consider 
the request received or process it further until the 
requester agrees to pay the anticipated total fee. Any 
such agreement should be in writing. A notice under 
this paragraph shall offer the requester an opportunity 
to discuss the matter with USPTO personnel in order 
to reformulate the request to meet the requester’s 
needs at a lower cost. 
(f) Charges for other services. Apart from the 
other provisions of this section, the FOIA Officer 
shall ordinarily charge the direct cost of special services. 
Such special services could include certifying 
that records are true copies or sending records by 
other than ordinary mail. 
(g) Charging interest. The FOIA Officer shall 
charge interest on any unpaid bill starting on the 31st 
calendar day following the date of billing the 
requester. Interest charges shall be assessed at the rate 


provided in 31 U.S.C. 3717 and accrue from the date 
of the billing until payment is received by the FOIA 
Officer. The FOIA Officer shall follow the provisions 
of the Debt Collection Improvement Act of 1996 
(Pub. L. 104-134), as amended, and its administrative 
procedures, including the use of consumer reporting 
agencies, collection agencies, and offset. 

(h) Aggregating requests. If a FOIA Officer 
reasonably believes that a requester or a group of 
requesters acting together is attempting to divide a 
request into a series of requests for the purpose of 
avoiding fees, the FOIA Officer may aggregate those 
requests and charge accordingly. The FOIA Officer 
may presume that multiple requests of this type made 
within a 30-calendar-day period have been made in 
order to avoid fees. If requests are separated by a 
longer period, the FOIA Officer shall aggregate them 
only if a solid basis exists for determining that aggregation 
is warranted under all the circumstances 
involved. Multiple requests involving unrelated matters 
shall not be aggregated. 
(i) Advance payments. 


(1) For requests other than those described in 
paragraphs (i)(2) and (3) of this section, the FOIA 
Officer shall not require the requester to make an 
advance payment: a payment made before work is 
begun or continued on a request. Payment owed for 
work already completed (i.e., a payment before copies 
are sent to a requester) is not an advance payment. 
(2) If the FOIA Officer determines or estimates 
that a total fee to be charged under this section 
will be more than $250.00, the requester must pay the 
entire anticipated fee before beginning to process the 
request, unless the FOIA Officer receives a satisfactory 
assurance of full payment from a requester who 
has a history of prompt payment. 
(3) If a requester has previously failed to pay 
a properly charged FOIA fee to USPTO or another 
responsible Federal agency within 30 calendar days of 
the date of billing, the FOIA Officer shall require the 
requester to pay the full amount due, plus any applicable 
interest, and to make an advance payment of the 
full amount of any anticipated fee, before the FOIA 
Officer begins to process a new request or continues 
to process a pending request from that requester. 


 

(4) In cases in which the FOIA Officer 
requires payment under paragraphs (i)(2) or (3) of this 
section, the request shall not be considered received 
and further work will not be done on it until the 
required payment is received. 
(5) Upon the completion of processing of a 
request, when a specific fee is determined to be payable 
and appropriate notice has been given to the 
requester, the FOIA Officer shall make records available 
to the requester only upon receipt of full payment 
of the fee. 
(j) Other statutes specifically providing for 
fees. The fee schedule of this section does not apply to 
fees charged under any statute (except for FOIA) that 
specifically requires USPTO or another responsible 
Federal agency to set and collect fees for particular 
types of records. If records responsive to requests are 
maintained for distribution by agencies operating such 
statutorily based fee schedule programs, the FOIA 
Officer shall inform requesters of how to obtain 
records from those sources. 
(k) Requirements for waiver or reduction of 
fees. 
(1) Records responsive to a request will be 
furnished without charge or at a charge reduced below 
that established under paragraph (c) of this section if 
the FOIA Officer determines, based on all available 
information, that the requester has demonstrated that: 
(i) Disclosure of the requested information 
is in the public interest because it is likely to contribute 
significantly to public understanding of the 
operations or activities of the Government; and 
(ii) Disclosure of the information is not 
primarily in the commercial interest of the requester. 
(2) To determine whether the first fee waiver 
requirement is met, the FOIA Officer shall consider 
the following factors: 
(i) The subject of the request: whether the 
subject of the requested records concerns the operations 
or activities of the Government. The subject of 
the requested records must concern identifiable operations 
or activities of the Federal Government, with a 
connection that is direct and clear, not remote or attenuated. 
(ii) The informative value of the information to be disclosed: whether the disclosure is “likely 
to contribute” to an understanding of Government 
operations or activities. The disclosable portions of 


the requested records must be meaningfully informative 
about Government operations or activities in 
order to be “likely to contribute” to an increased public 
understanding of those operations or activities. The 
disclosure of information that already is in the public 
domain, in either a duplicative or a substantially identical 
form, would not be likely to contribute to such 
understanding. 

(iii) The contribution to an understanding 
of the subject by the public likely to result from disclosure: whether disclosure of the requested information 
will contribute to the understanding of a reasonably 
broad audience of persons interested in the subject, as 
opposed to the individual understanding of the 
requester. A requester’s expertise in the subject area 
and ability and intention to effectively convey information 
to the public shall be considered. It shall be 
presumed that a representative of the news media satisfies 
this consideration. It shall be presumed that a 
requester who merely provides information to media 
sources does not satisfy this consideration. 

(iv) The significance of the contribution to 
public understanding: whether the disclosure is likely 
to contribute “significantly” to public understanding 
of Government operations or activities. The public’s 
understanding of the subject in question prior to the 
disclosure must be significantly enhanced by the disclosure. 
(3) To determine whether the second fee 
waiver requirement is met, the FOIA Officer shall 
consider the following factors: 
(i) The existence and magnitude of a commercial interest: whether the requester has a commercial 
interest that would be furthered by the requested 
disclosure. The FOIA Officer shall consider any commercial 
interest of the requester (with reference to the 
definition of “commercial use request” in paragraph 
(b)(1) of this section), or of any person on whose 
behalf the requester may be acting, that would be furthered 
by the requested disclosure. Requesters shall 
be given an opportunity to provide explanatory information 
regarding this consideration. 
(ii) The primary interest in disclosure: 
whether any identified commercial interest of the 
requester is sufficiently large, in comparison with 
the public interest in disclosure, that disclosure is 
“primarily in the commercial interest of the 
requester.” A fee waiver or reduction is justified if the 


 

public interest standard (paragraph (k)(1)(i) of this 
section) is satisfied and the public interest is greater 
than any identified commercial interest in disclosure. 
The FOIA Officer ordinarily shall presume that if a 
news media requester has satisfied the public interest 
standard, the public interest is the primary interest 
served by disclosure to that requester. Disclosure to 
data brokers or others who merely compile and market 
Government information for direct economic 
return shall not be presumed to primarily serve the 
public interest. 

(4) If only some of the records to be released 
satisfy the requirements for a fee waiver, a waiver 
shall be granted for those records. 
(5) Requests for the waiver or reduction of 
fees should address the factors listed in paragraphs 
(k)(2) and (3) of this section, insofar as they apply to 
each request. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

Subpart B — Privacy Act 

§ 102.21 Purpose and scope. 

(a) The purpose of this subpart is to establish 
policies and procedures for implementing the Privacy 
Act of 1974, as amended (5 U.S.C. 552a) (the Act). 
The main objectives are to facilitate full exercise of 
rights conferred on individuals under the Act and to 
ensure the protection of privacy as to individuals on 
whom USPTO maintains records in systems of 
records under the Act. USPTO accepts the responsibility 
to act promptly and in accordance with the Act 
upon receipt of any inquiry, request or appeal from a 
citizen of the United States or an alien lawfully admitted 
for permanent residence into the United States, 
regardless of the age of the individual. Further, 
USPTO accepts the obligations to maintain only such 
information on individuals as is relevant and necessary 
to the performance of its lawful functions, to 
maintain that information with such accuracy, relevancy, 
timeliness, and completeness as is reasonably 
necessary to assure fairness in determinations made 
by USPTO about the individual, to obtain information 
from the individual to the extent practicable, and to 
take every reasonable step to protect that information 
from unwarranted disclosure. USPTO will maintain 
no record describing how an individual exercises 
rights guaranteed by the First Amendment unless 
expressly authorized by statute or by the individual 
about whom the record is maintained or unless pertinent 
to and within the scope of an authorized law 
enforcement activity. An individual’s name and 
address will not be sold or rented by USPTO unless 
such action is specifically authorized by law; however, 
this provision shall not be construed to require 
the withholding of names and addresses otherwise 
permitted to be made public. 

(b) This subpart is administered by the Privacy 
Officer of USPTO. 
(c) Matters outside the scope of this subpart 
include the following: 
(1) Requests for records which do not pertain 
to the individual making the request, or to the individual 
about whom the request is made if the requester is 
the parent or guardian of the individual; 
(2) Requests involving information pertaining 
to an individual which is in a record or file but not 
within the scope of a system of records notice published 
in the ; 
(3) Requests to correct a record where a 
grievance procedure is available to the individual 
either by regulation or by provision in a collective 
bargaining agreement with USPTO, and the individual 
has initiated, or has expressed in writing the intention 
of initiating, such grievance procedure. An individual 
selecting the grievance procedure waives the use of 
the procedures in this subpart to correct or amend a 
record; and, 
(4) Requests for employee-employer services 
and counseling which were routinely granted prior to 
enactment of the Act, including, but not limited to, 
test calculations of retirement benefits, explanations 
of health and life insurance programs, and explanations 
of tax withholding options. 
(d) Any request for records which pertains to 
the individual making the request, or to the individual 
about whom the request is made if the requester is the 
parent or guardian of the individual, shall be processed 
under the Act and this subpart and under the 
Freedom of Information Act and USPTO’s implementing 
regulations at Subpart A of this part, regardless 
whether the Act or the Freedom of Information 
Act is mentioned in the request. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

 

§ 102.22 Definitions. 

(a) All terms used in this subpart which are 
defined in 5 U.S.C. 552a shall have the same meaning 
herein. 
(b) As used in this subpart: 


(1) Act means the “Privacy Act of 1974, as 
amended (5 U.S.C. 552a)”. 
(2) Appeal means a request by an individual 
to review and reverse an initial denial of a request by 
that individual for correction or amendment. 
(3) USPTO means the United States Patent 
and Trademark Office. 
(4) Inquiry means either a request for general 
information regarding the Act and this subpart or a 
request by an individual (or that individual’s parent or 
guardian) that USPTO determine whether it has any 
record in a system of records which pertains to that 
individual. 
(5) Person means any human being and also 
shall include but not be limited to, corporations, associations, 
partnerships, trustees, receivers, personal 
representatives, and public or private organizations. 
(6) Privacy Officer means a USPTO 
employee designated to administer this subpart. 
(7) Request for access means a request by an 
individual or an individual’s parent or guardian to see 
a record which is in a particular system of records and 
which pertains to that individual. 
(8) Request for correction or amendment 
means the request by an individual or an individual’s 
parent or guardian that USPTO change (either by correction, 
amendment, addition or deletion) a particular 
record in a system of records which pertains to that 
individual. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.23 Procedures for making inquiries. 

(a) Any individual, regardless of age, who is a 
citizen of the United States or an alien lawfully admitted 
for permanent residence into the United States 
may submit an inquiry to USPTO. The inquiry should 
be made either in person at 10B20, Madison Building 
East, 600 Dulany Street, Alexandria, Virginia, or by 
mail addressed to the Privacy Officer, United States 
Patent and Trademark Office, P.O. Box 1450, Alexandria, 
Virginia 22313-1450, or to the official identified 
in the notification procedures paragraph of the systems 
of records notice published in the Federal Register. If an individual believes USPTO maintains a 
record pertaining to that individual but does not know 
which system of records might contain such a record, 
the USPTO Privacy Officer will provide assistance in 
person or by mail. 

(b) Inquiries submitted by mail should include 
the words “PRIVACY ACT INQUIRY” in capital letters 
at the top of the letter and on the face of the envelope. 
If the inquiry is for general information 
regarding the Act and this subpart, no particular information 
is required. USPTO reserves the right to 
require compliance with the identification procedures 
appearing at § 102.24(d) where circumstances warrant. 
If the inquiry is a request that USPTO determine 
whether it has, in a given system of records, a record 
which pertains to the individual, the following information 
should be submitted: 
(1) Name of individual whose record is 
sought; 
(2) Individual whose record is sought is 
either a U.S. citizen or an alien lawfully admitted for 
permanent residence; 
(3) Identifying data that will help locate the 
record (for example, maiden name, occupational 
license number, period or place of employment, etc.); 
(4) Record sought, by description and by 
record system name, if known; 
(5) Action requested (that is, sending information 
on how to exercise rights under the Act; determining 
whether requested record exists; gaining 
access to requested record; or obtaining copy of 
requested record); 
(6) Copy of court guardianship order or 
minor’s birth certificate, as provided in § 
102.24(f)(3), but only if requester is guardian or parent 
of individual whose record is sought; 
(7) Requester’s name (printed), signature, 
address, and telephone number (optional); 
(8) Date; and, 


(9) Certification of request by notary or other 
official, but only if 
(i) Request is for notification that 
requested record exists, for access to requested record 
or for copy of requested record; 
(ii) Record is not available to any person 
under 5 U.S.C. 552; and 


 

(iii) Requester does not appear before an 
employee of USPTO for verification of identity. 

(c) Any inquiry which is not addressed as specified 
in paragraph (a) of this section or which is not 
marked as specified in paragraph (b) of this section 
will be so addressed and marked by USPTO personnel 
and forwarded immediately to the Privacy Officer. An 
inquiry which is not properly addressed by the individual 
will not be deemed to have been “received” 
for purposes of measuring the time period for 
response until actual receipt by the Privacy Officer. In 
each instance when an inquiry so forwarded is 
received, the Privacy Officer shall notify the individual 
that his or her inquiry was improperly addressed 
and the date the inquiry was received at the proper 
address. 
(d)(1)Each inquiry received shall be acted upon 
promptly by the Privacy Officer. Every effort will be 
made to respond within ten working days (i.e., 
excluding Saturdays, Sundays and legal public holidays) 
of the date of receipt. If a response cannot be 
made within ten working days, the Privacy Officer 
shall send an acknowledgment during that period providing 
information on the status of the inquiry and 
asking for such further information as may be necessary 
to process the inquiry. The first correspondence 
sent by the Privacy Officer to the requester shall contain 
USPTO’s control number assigned to the request, 
as well as a note that the requester should use that 
number in all future contacts in order to facilitate processing. 
USPTO shall use that control number in all 
subsequent correspondence. 


(2) If the Privacy Officer fails to send an 
acknowledgment within ten working days, as provided 
above, the requester may ask the General Counsel 
to take corrective action. No failure of the Privacy 
Officer to send an acknowledgment shall confer 
administrative finality for purposes of judicial review. 
(e) An individual shall not be required to state a 
reason or otherwise justify his or her inquiry. 
(f) Special note should be taken of the fact that 
certain agencies are responsible for publishing notices 
of systems of records having Government-wide application 
to other agencies, including USPTO. The agencies 
known to be publishing these general notices and 
the types of records covered therein appear in an 
appendix to this part. The provisions of this section, 
and particularly paragraph (a) of this section, should 


be followed in making inquiries with respect to such 
records. Such records in USPTO are subject to the 
provisions of this part to the extent indicated in the 
appendix to this part. The exemptions, if any, determined 
by an agency publishing a general notice shall 
be invoked and applied by USPTO after consultation, 
as necessary, with that other agency. 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; para. (a) revised, 70 FR 10488, Mar. 4, 
2005, effective Mar. 4, 2005] 

§ 102.24 Procedures for making requests for 
records. 

(a) Any individual, regardless of age, who is a 
citizen of the United States or an alien lawfully admitted 
for permanent residence into the United States 
may submit a request for access to records to USPTO. 
The request should be made either in person at 10B20, 
Madison Building East, 600 Dulany Street, Alexandria, 
Virginia, or by mail addressed to the Privacy 
Officer, United States Patent and Trademark Office, 

P.O. Box 1450, Alexandria, Virginia 22313-1450. 

(b) Requests submitted by mail should include 
the words “PRIVACY ACT REQUEST” in capital 
letters at the top of the letter and on the face of the 
envelope. Any request which is not addressed as specified 
in paragraph (a) of this section or which is not 
marked as specified in this paragraph will be so 
addressed and marked by USPTO personnel and forwarded 
immediately to the Privacy Officer. A request 
which is not properly addressed by the individual will 
not be deemed to have been “received” for purposes 
of measuring time periods for response until actual 
receipt by the Privacy Officer. In each instance when 
a request so forwarded is received, the Privacy Officer 
shall notify the individual that his or her request was 
improperly addressed and the date when the request 
was received at the proper address. 
(c) If the request follows an inquiry under 
§ 102.23 in connection with which the individual’s 
identity was established by USPTO, the individual 
need only indicate the record to which access is 
sought, provide the USPTO control number assigned 
to the request, and sign and date the request. If the 
request is not preceded by an inquiry under § 102.23, 
the procedures of this section should be followed. 


 

(d) The requirements for identification of individuals 
seeking access to records are as follows: 
(1) In person. Each individual making a 
request in person shall be required to present satisfactory 
proof of identity. The means of proof, in the order 
of preference and priority, are: 
(i) A document bearing the individual’s 
photograph (for example, driver’s license, passport or 
military or civilian identification card); 
(ii) A document, preferably issued for participation 
in a federally sponsored program, bearing 
the individual’s signature (for example, unemployment 
insurance book, employer’s identification card, 
national credit card, and professional, craft or union 
membership card); and 


(iii) A document bearing neither the photograph 
nor the signature of the individual, preferably 
issued for participation in a federally sponsored program 
(for example, Medicaid card). In the event the 
individual can provide no suitable documentation of 
identity, USPTO will require a signed statement 
asserting the individual’s identity and stipulating that 
the individual understands the penalty provision of 
5 U.S.C. 552a(i)(3) recited in § 102.32(a). In order to 
avoid any unwarranted disclosure of an individual’s 
records, USPTO reserves the right to determine the 
adequacy of proof of identity offered by any individual, 
particularly when the request involves a sensitive 
record. 

(2) Not in person. If the individual making a 
request does not appear in person before the Privacy 
Officer or other employee authorized to determine 
identity, a certification of a notary public or equivalent 
officer empowered to administer oaths must 
accompany the request under the circumstances prescribed 
in § 102.23(b)(9). The certification in or 
attached to the letter must be substantially in accordance 
with the following text: 

City of _________________ 

County of ____________________:ss 

(Name of individual), who affixed (his) (her) 
signature below in my presence, came before me, a 
(title), in and for the aforesaid County and State, this 
_______ day of _________________, 20__, and 
established (his) (her) identity to my satisfaction. 

My commission expires _________________. 
(Signature) 

(3) Parents of minors and legal guardians. 
An individual acting as the parent of a minor or the 
legal guardian of the individual to whom a record pertains 
shall establish his or her personal identity in the 
same manner prescribed in either paragraph (d)(1) or 
(d)(2) of this section. In addition, such other individual 
shall establish his or her identity in the representative 
capacity of parent or legal guardian. In the case of 
the parent of a minor, the proof of identity shall be a 
certified or authenticated copy of the minor’s birth 
certificate. In the case of a legal guardian of an individual 
who has been declared incompetent due to 
physical or mental incapacity or age by a court of 
competent jurisdiction, the proof of identity shall be a 
certified or authenticated copy of the court’s order. 
For purposes of the Act, a parent or legal guardian 
may represent only a living individual, not a decedent. 
A parent or legal guardian may be accompanied during 
personal access to a record by another individual, 
provided the provisions of § 102.25(f) are satisfied. 
(e) When the provisions of this subpart are 
alleged to impede an individual in exercising his or 
her right to access, USPTO will consider, from an 
individual making a request, alternative suggestions 
regarding proof of identity and access to records. 
(f) An individual shall not be required to state a 
reason or otherwise justify his or her request for 
access to a record. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000; para. (a) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003; para. (a) revised, 70 FR 10488, Mar. 4, 
2005, effective Mar. 4, 2005] 

§ 102.25 Disclosure of requested records to individuals. 

(a)(1) The Privacy Officer shall act promptly 
upon each request. Every effort will be made to 
respond within ten working days (i.e., excluding Saturdays, 
Sundays, and legal public holidays) of the 
date of receipt. If a response cannot be made within 
ten working days due to unusual circumstances, the 
Privacy Officer shall send an acknowledgment during 
that period providing information on the status of the 
request and asking for any further information that 
may be necessary to process the request. “Unusual 
circumstances” shall include circumstances in which 

 

(i) A search for and collection of 
requested records from inactive storage, field facilities 
or other establishments is required; 
(ii) A voluminous amount of data is 
involved; 


(iii) Information on other individuals must 
be separated or expunged from the particular record; 
or 

(iv) Consultations with other agencies having 
a substantial interest in the determination of the 
request are necessary. 
(2) If the Privacy Officer fails to send an 
acknowledgment within ten working days, as provided 
above in paragraph (a) of this section, the 
requester may ask the General Counsel to take corrective 
action. No failure of the Privacy Officer to send 
an acknowledgment shall confer administrative finality 
for purposes of judicial review. 
(b) Grant of access— 


(1) Notification. An individual shall be 
granted access to a record pertaining to him or her, 
except where the provisions of paragraph (g)(1) of 
this section apply. The Privacy Officer will notify the 
individual of a determination to grant access, and provide 
the following information: 
(i) The methods of access, as set forth in 
paragraph (b)(2) of this section; 
(ii) The place at which the record may be 
inspected; 


(iii) The earliest date on which the record 
may be inspected and the period of time that the 
records will remain available for inspection. In no 
event shall the earliest date be later than thirty calendar 
days from the date of notification; 

(iv) The estimated date by which a copy of 
the record could be mailed and the estimate of fees 
pursuant to § 102.31. In no event shall the estimated 
date be later than thirty calendar days from the date of 
notification; 
(v) The fact that the individual, if he or she 
wishes, may be accompanied by another individual 
during personal access, subject to the procedures set 
forth in paragraph (f) of this section; and, 
(vi) Any additional requirements needed to 
grant access to a specific record. 
(2) Methods of access. The following methods 
of access to records by an individual may be 


available depending on the circumstances of a given 
situation: 

(i) Inspection in person may be had in a 
location specified by the Privacy Officer during business 
hours; 
(ii) Transfer of records to a Federal facility 
more convenient to the individual may be arranged, 
but only if the Privacy Officer determines that a suitable 
facility is available, that the individual’s access 
can be properly supervised at that facility, and that 
transmittal of the records to that facility will not 
unduly interfere with operations of USPTO or involve 
unreasonable costs, in terms of both money and manpower; 
and 


(iii) Copies may be mailed at the request of 
the individual, subject to payment of the fees prescribed 
in § 102.31. USPTO, on its own initiative, 
may elect to provide a copy by mail, in which case no 
fee will be charged the individual. 

(c) Access to medical records is governed by 
the provisions of § 102.26. 
(d) USPTO will supply such other information 
and assistance at the time of access as to make the 
record intelligible to the individual. 
(e) USPTO reserves the right to limit access to 
copies and abstracts of original records, rather than 
the original records. This election would be appropriate, 
for example, when the record is in an automated 
data media such as tape or diskette, when the record 
contains information on other individuals, and when 
deletion of information is permissible under exemptions 
(for example, 5 U.S.C. 552a(k)(2)). In no event 
shall original records of USPTO be made available to 
the individual except under the immediate supervision 
of the Privacy Officer or the Privacy Officer’s designee. 
(f) Any individual who requests access to a 
record pertaining to that individual may be accompanied 
by another individual of his or her choice. 
“Accompanied” includes discussion of the record in 
the presence of the other individual. The individual to 
whom the record pertains shall authorize the presence 
of the other individual in writing. The authorization 
shall include the name of the other individual, a specific 
description of the record to which access is 
sought, the USPTO control number assigned to the 
request, the date, and the signature of the individual to 
whom the record pertains. The other individual shall 


 

sign the authorization in the presence of the Privacy 
Officer. An individual shall not be required to state a 
reason or otherwise justify his or her decision to be 
accompanied by another individual during personal 
access to a record. 

(g) Initial denial of access— 

(1) Grounds. Access by an individual to a 
record which pertains to that individual will be denied 
only upon a determination by the Privacy Officer that: 
(i) The record is exempt under § 102.33 or 
§ 102.34, or exempt by determination of another 
agency publishing notice of the system of records, as 
described in § 102.23(f); 
(ii) The record is information compiled in 
reasonable anticipation of a civil action or proceeding; 


(iii) The provisions of § 102.26 pertaining 
to medical records temporarily have been invoked; or 

(iv) The individual has unreasonably failed 
to comply with the procedural requirements of this 
part. 
(2) Notification. The Privacy Officer shall 
give notice of denial of access to records to the individual 
in writing and shall include the following 


information: 
(i) 
position; 
The Privacy Officer’s name and title or 
(ii) The date of the denial; 
(iii) The reasons for the denial, including 

citation to the appropriate section of the Act and this 
part; 

(iv) The individual’s opportunities, if any, 
for further administrative consideration, including the 
identity and address of the responsible official. If no 
further administrative consideration within USPTO is 
available, the notice shall state that the denial is 
administratively final; and 
(v) If stated to be administratively final 
within USPTO, the individual’s right to judicial 
review provided under 5 U.S.C. 552a(g)(1), as limited 
by 5 U.S.C. 552a(g)(5). 
(3) Administrative review. When an initial 
denial of a request is issued by the Privacy Officer, the 
individual’s opportunities for further consideration 
shall be as follows: 


(i) As to denial under paragraph (g)(1)(i) 
of this section, two opportunities for further consideration 
are available in the alternative: 
(A) If the individual contests the application 
of the exemption to the records, review procedures 
in § 102.25(g)(3)(ii) shall apply; or 
(B) If the individual challenges the 
exemption itself, the procedure is a petition for the 
issuance, amendment, or repeal of a rule under 5 


U.S.C. 553(e). If the exemption was determined by 
USPTO, such petition shall be filed with the General 
Counsel. If the exemption was determined by another 
agency (as described in § 102.23(f)), USPTO will provide 
the individual with the name and address of the 
other agency and any relief sought by the individual 
shall be that provided by the regulations of the other 
agency. Within USPTO, no such denial is administratively 
final until such a petition has been filed by the 
individual and disposed of on the merits by the General 
Counsel. 

(ii) As to denial under paragraphs (g)(1)(ii) 
of this section, (g)(1)(iv) of this section or (to the limited 
extent provided in paragraph (g)(3)(i)(A) of this 
section) paragraph (g)(1)(i) of this section, the individual 
may file for review with the General Counsel, 
as indicated in the Privacy Officer’s initial denial notification. 
The procedures appearing in § 102.28 shall 
be followed by both the individual and USPTO to the 
maximum extent practicable. 

(iii) As to denial under paragraph (g)(1)(iii) 
of this section, no further administrative consideration 
within USPTO is available because the denial is not 
administratively final until expiration of the time 
period indicated in § 102.26(a). 

(h) If a request is partially granted and partially 
denied, the Privacy Officer shall follow the appropriate 
procedures of this section as to the records within 
the grant and the records within the denial. 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.26 Special procedures: Medical records. 

(a) No response to any request for access to 
medical records by an individual will be issued by the 
Privacy Officer for a period of seven working days 
(i.e., excluding Saturdays, Sundays, and legal public 
holidays) from the date of receipt. 

 

(b) USPTO has published as a routine use, for 
all systems of records containing medical records, 
consultations with an individual’s physician or psychologist 
if, in the sole judgment of USPTO, disclosure 
could have an adverse effect upon the individual. 
The mandatory waiting period set forth in paragraph 
(a) of this section will permit exercise of this routine 
use in appropriate cases. USPTO will pay no cost of 
any such consultation. 
(c) In every case of a request by an individual 
for access to medical records, the Privacy Officer 
shall: 
(1) Inform the individual of the waiting 
period prescribed in paragraph (a) of this section; 
(2) Obtain the name and address of the individual’s 
physician and/or psychologist, if the individual 
consents to give them; 
(3) Obtain specific, written consent for 
USPTO to consult the individual’s physician and/or 
psychologist in the event that USPTO believes such 
consultation is advisable, if the individual consents to 
give such authorization; 
(4) Obtain specific, written consent for 
USPTO to provide the medical records to the individual’s 
physician or psychologist in the event that 
USPTO believes access to the record by the individual 
is best effected under the guidance of the individual’s 
physician or psychologist, if the individual consents 
to give such authorization; and 
(5) Forward the individual’s medical record 
to USPTO’s medical expert for review and a determination 
on whether consultation with or transmittal of 
the medical records to the individual’s physician or 
psychologist is warranted. If the consultation with or 
transmittal of such records to the individual’s physician 
or psychologist is determined to be warranted, 
USPTO’s medical expert shall so consult or transmit. 
Whether or not such a consultation or transmittal 
occurs, USPTO’s medical officer shall provide 
instruction to the Privacy Officer regarding the conditions 
of access by the individual to his or her medical 
records. 
(d) If an individual refuses in writing to give the 
names and consents set forth in paragraphs (c)(2) 
through (c)(4) of this section and USPTO has determined 
that disclosure could have an adverse effect 
upon the individual, USPTO shall give the individual 
access to said records by means of a copy, provided 


without cost to the requester, sent registered mail 
return receipt requested. 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.27 Procedures for making requests for correction or amendment. 

(a) Any individual, regardless of age, who is a 
citizen of the United States or an alien lawfully admitted 
for permanent residence into the United States 
may submit a request for correction or amendment to 
USPTO. The request should be made either in person 
or by mail addressed to the Privacy Officer who processed 
the individual’s request for access to the 
record, and to whom is delegated authority to make 
initial determinations on requests for correction or 
amendment. The office of the Privacy Officer is open 
to the public between the hours of 9 a.m. and 4 p.m., 
Monday through Friday (excluding legal public holidays). 
(b) Requests submitted by mail should include 
the words “PRIVACY ACT REQUEST” in capital 
letters at the top of the letter and on the face of the 
envelope. Any request which is not addressed as specified 
in paragraph (a) of this section or which is not 
marked as specified in this paragraph will be so 
addressed and marked by USPTO personnel and forwarded 
immediately to the Privacy Officer. A request 
which is not properly addressed by the individual will 
not be deemed to have been “received” for purposes 
of measuring the time period for response until actual 
receipt by the Privacy Officer. In each instance when 
a request so forwarded is received, the Privacy Officer 
shall notify the individual that his or her request was 
improperly addressed and the date the request was 
received at the proper address. 
(c) Since the request, in all cases, will follow a 
request for access under § 102.25, the individual’s 
identity will be established by his or her signature on 
the request and use of the USPTO control number 
assigned to the request. 
(d) A request for correction or amendment 
should include the following: 
(1) Specific identification of the record 
sought to be corrected or amended (for example, 
description, title, date, paragraph, sentence, line and 
words); 


 

(2) The specific wording to be deleted, if 
any; 
(3) The specific wording to be inserted or 

added, if any, and the exact place at which to be 
inserted or added; and 

(4) A statement of the basis for the requested 
correction or amendment, with all available supporting 
documents and materials which substantiate 
the statement. The statement should identify the criterion 
of the Act being invoked, that is, whether the 
information in the record is unnecessary, inaccurate, 
irrelevant, untimely or incomplete. 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.28 Review of requests for correction or 
amendment. 

(a)(1)(i) Not later than ten working days 
(i.e., excluding Saturdays, Sundays and legal public 
holidays) after receipt of a request to correct or 
amend a record, the Privacy Officer shall send an 
acknowledgment providing an estimate of time within 
which action will be taken on the request and asking 
for such further information as may be necessary to 
process the request. The estimate of time may take 
into account unusual circumstances as described in 
§ 102.25(a). No acknowledgment will be sent if the 
request can be reviewed, processed, and the individual 
notified of the results of review (either compliance or 
denial) within the ten working days. Requests filed in 
person will be acknowledged in writing at the time 
submitted. 

(ii) If the Privacy Officer fails to send the 
acknowledgment within ten working days, as provided 
in paragraph (a)(1)(i) of this section, the 
requester may ask the General Counsel to take corrective 
action. No failure of the Privacy Officer to send 
an acknowledgment shall confer administrative finality 
for purposes of judicial review. 
(2) Promptly after acknowledging receipt of 
a request, or after receiving such further information 
as might have been requested, or after arriving at a 
decision within the ten working days, the Privacy 
Officer shall either: 
(i) Make the requested correction or 
amendment and advise the individual in writing of 
such action, providing either a copy of the corrected 
or amended record or a statement as to the means 


whereby the correction or amendment was effected in 
cases where a copy cannot be provided (for example, 
erasure of information from a record maintained only 
in magnetically recorded computer files); or 

(ii) Inform the individual in writing that 
his or her request is denied and provide the following 
information: 
(A) The Privacy Officer’s name and title 
or position; 
(B) The date of the denial; 


(C) The reasons for the denial, including 
citation to the appropriate sections of the Act and this 
subpart; and 
(D) The procedures for appeal of the 
denial as set forth in § 102.29, including the address 
of the General Counsel. 
(3) The term promptly in this section means 
within thirty working days (i.e., excluding Saturdays, 
Sundays, and legal public holidays). If the Privacy 
Officer cannot make the determination within thirty 
working days, the individual will be advised in writing 
of the reason therefor and of the estimated date by 
which the determination will be made. 
(b) Whenever an individual’s record is corrected 
or amended pursuant to a request by that individual, 
the Privacy Officer shall be responsible for 
notifying all persons and agencies to which the corrected 
or amended portion of the record had been disclosed 
prior to its correction or amendment, if an 
accounting of such disclosure required by the Act was 
made. The notification shall require a recipient 
agency maintaining the record to acknowledge receipt 
of the notification, to correct or amend the record, and 
to apprise any agency or person to which it had disclosed 
the record of the substance of the correction or 
amendment. 
(c) The following criteria will be considered by 
the Privacy Officer in reviewing a request for correction 
or amendment: 
(1) The sufficiency of the evidence submitted 
by the individual; 
(2) The factual accuracy of the information; 


(3) The relevance and necessity of the information 
in terms of purpose for which it was collected; 
(4) The timeliness and currency of the information 
in light of the purpose for which it was collected; 


 

(5) The completeness of the information in 
terms of the purpose for which it was collected; 
(6) The degree of risk that denial of the 
request could unfairly result in determinations adverse 
to the individual; 
(7) The character of the record sought to be 
corrected or amended; and 
(8) The propriety and feasibility of complying 
with the specific means of correction or amendment 
requested by the individual. 
(d) USPTO will not undertake to gather evidence 
for the individual, but does reserve the right to 
verify the evidence which the individual submits. 
(e) Correction or amendment of a record 
requested by an individual will be denied only upon a 
determination by the Privacy Officer that: 
(1) The individual has failed to establish, by 
a preponderance of the evidence, the propriety of the 
correction or amendment in light of the criteria set 
forth in paragraph (c) of this section; 
(2) The record sought to be corrected or 
amended is part of the official record in a terminated 
judicial, quasi-judicial, or quasi-legislative proceeding 
to which the individual was a party or participant; 
(3) The information in the record sought to 
be corrected or amended, or the record sought to be 
corrected or amended, is the subject of a pending judicial, 
quasi-judicial, or quasi-legislative proceeding to 
which the individual is a party or participant; 
(4) The correction or amendment would violate 
a duly enacted statute or promulgated regulation; 
or 
(5) The individual has unreasonably failed to 
comply with the procedural requirements of this part. 
(f) If a request is partially granted and partially 
denied, the Privacy Officer shall follow the appropriate 
procedures of this section as to the records within 
the grant and the records within the denial. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.29 Appeal of initial adverse determination 
on correction or amendment. 

(a) When a request for correction or amendment 
has been denied initially under § 102.28, the 
individual may submit a written appeal within thirty 
working days (i.e., excluding Saturdays, Sundays and 
legal public holidays) after the date of the initial 
denial. When an appeal is submitted by mail, the postmark 
is conclusive as to timeliness. 

(b) An appeal should be addressed to the General 
Counsel, United States Patent and Trademark 
Office, PO Box 1450, Alexandria, Virginia 223131450. 
An appeal should include the words “PRIVACY 
APPEAL” in capital letters at the top of the 
letter and on the face of the envelope. An appeal not 
addressed and marked as provided herein will be so 
marked by USPTO personnel when it is so identified 
and will be forwarded immediately to the General 
Counsel. An appeal which is not properly addressed 
by the individual will not be deemed to have been 
“received” for purposes of measuring the time periods 
in this section until actual receipt by the General 
Counsel. In each instance when an appeal so forwarded 
is received, the General Counsel shall notify 
the individual that his or her appeal was improperly 
addressed and the date when the appeal was received 
at the proper address. 
(c) The individual’s appeal shall include a statement 
of the reasons why the initial denial is believed 
to be in error and USPTO’s control number assigned 
to the request. The appeal shall be signed by the individual. 
The record which the individual requests be 
corrected or amended and all correspondence between 
the Privacy Officer and the requester will be furnished 
by the Privacy Officer who issued the initial denial. 
Although the foregoing normally will comprise the 
entire record on appeal, the General Counsel may 
seek additional information necessary to assure that 
the final determination is fair and equitable and, in 
such instances, disclose the additional information to 
the individual to the greatest extent possible, and provide 
an opportunity for comment thereon. 
(d) No personal appearance or hearing on 
appeal will be allowed. 
(e) The General Counsel shall act upon the 
appeal and issue a final determination in writing not 
later than thirty working days (i.e., excluding Saturdays, 
Sundays and legal public holidays) from the 
date on which the appeal is received, except that the 
General Counsel may extend the thirty days upon 
deciding that a fair and equitable review cannot be 
made within that period, but only if the individual is 
advised in writing of the reason for the extension and 
the estimated date by which a final determination will 
issue. The estimated date should not be later than the 


 

sixtieth working day after receipt of the appeal unless 
unusual circumstances, as described in § 102.25(a), 
are met. 

(f) If the appeal is determined in favor of the 
individual, the final determination shall include the 
specific corrections or amendments to be made and a 
copy thereof shall be transmitted promptly both to the 
individual and to the Privacy Officer who issued the 
initial denial. Upon receipt of such final determination, 
the Privacy Officer promptly shall take the 
actions set forth in § 102.28(a)(2)(i) and (b). 
(g) If the appeal is denied, the final determination 
shall be transmitted promptly to the individual 
and state the reasons for the denial. The notice of final 
determination also shall inform the individual of the 
following: 
(1) The right of the individual under the Act 
to file a concise statement of reasons for disagreeing 
with the final determination. The statement ordinarily 
should not exceed one page and USPTO reserves the 
right to reject a statement of excessive length. Such a 
statement shall be filed with the General Counsel. It 
should provide the USPTO control number assigned 
to the request, indicate the date of the final determination 
and be signed by the individual. The General 
Counsel shall acknowledge receipt of such statement 
and inform the individual of the date on which it was 
received. 
(2) The facts that any such disagreement 
statement filed by the individual will be noted in the 
disputed record, that the purposes and uses to which 
the statement will be put are those applicable to the 
record in which it is noted, and that a copy of the 
statement will be provided to persons and agencies to 
which the record is disclosed subsequent to the date of 
receipt of such statement; 
(3) The fact that USPTO will append to any 
such disagreement statement filed by the individual, a 
copy of the final determination or summary thereof 
which also will be provided to persons and agencies 
to which the disagreement statement is disclosed; and, 
(4) The right of the individual to judicial 
review of the final determination under 5 U.S.C. 
552a(g)(1)(A), as limited by 5 U.S.C. 552a(g)(5). 
(h) In making the final determination, the General 
Counsel shall employ the criteria set forth in 
§ 102.28(c) and shall deny an appeal only on the 
grounds set forth in § 102.28(e). 


(i) If an appeal is partially granted and partially 
denied, the General Counsel shall follow the appropriate 
procedures of this section as to the records within 
the grant and the records within the denial. 
(j) Although a copy of the final determination 
or a summary thereof will be treated as part of the 
individual’s record for purposes of disclosure in 
instances where the individual has filed a disagreement 
statement, it will not be subject to correction or 
amendment by the individual. 
(k) The provisions of paragraphs (g)(1) through 
(g)(3) of this section satisfy the requirements of 
5 U.S.C. 552a(e)(3). 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000; para. (b) revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 102.30 Disclosure of record to person other than 
the individual to whom it pertains. 

(a) USPTO may disclose a record pertaining to 
an individual to a person other than the individual to 
whom it pertains only in the following instances: 
(1) Upon written request by the individual, 
including authorization under § 102.25(f); 
(2) With the prior written consent of the individual; 
(3) To a parent or legal guardian under 
5 U.S.C. 552a(h); 
(4) When required by the Act and not covered 
explicitly by the provisions of 5 U.S.C. 552a(b); 
and 
(5) When permitted under 5 U.S.C. 
552a(b)(1) through (12), which read as follows:1 


1 5 U.S.C. 552a(b)(4) has no application within 
USPTO. 

(i) To those officers and employees of the 
agency which maintains the record who have a need 
for the record in the performance of their duties; 

(ii) Required under 5 U.S.C. 552; 

(iii) For a routine use as defined in 5 U.S.C. 
552a(a)(7) and described under 5 U.S.C. 
552a(e)(4)(D); 

(iv) To the Bureau of the Census for purposes 
of planning or carrying out a census or survey 

 

or related activity pursuant to the provisions of 
Title 13; 

(v) To a recipient who has provided the 
agency with advance adequate written assurance that 
the record will be used solely as a statistical research 
or reporting record, and the record is to be transferred 
in a form that is not individually identifiable; 
(vi) To the National Archives and Records 
Administration as a record which has sufficient historical 
or other value to warrant its continued preservation 
by the United States Government, or for 
evaluation by the Archivist of the United States or the 
designee of the Archivist to determine whether the 
record has such value; 


(vii) To another agency or to an instrumentality 
of any governmental jurisdiction within or 
under the control of the United States for a civil or 
criminal law enforcement activity if the activity is 
authorized by law, and if the head of the agency or 
instrumentality has made a written request to the 
agency which maintains the record specifying the particular 
portion desired and the law enforcement activity 
for which the record is sought; 

(viii) To a person pursuant to a showing of 
compelling circumstances affecting the health or 
safety of an individual if upon such disclosure notification 
is transmitted to the last known address of such 
individual; 

(ix) To either House of Congress, or, to the 
extent of matter within its jurisdiction, any committee 
or subcommittee thereof, any joint committee of Congress 
or subcommittee of any such joint committee; 
(x) To the Comptroller General, or any of 
his authorized representatives, in the course of the 
performance of the duties of the General Accounting 
Office; 
(xi) Pursuant to the order of a court of competent 
jurisdiction; or 


(xii) To a consumer reporting agency in 
accordance with section 3711(e) of Title 31. 

(b) The situations referred to in paragraph 
(a)(4) of this section include the following: 
(1) 5 U.S.C. 552a(c)(4) requires dissemination 
of a corrected or amended record or notation of a 
disagreement statement by USPTO in certain circumstances; 


(2) 5 U.S.C. 552a(d) requires disclosure of 
records to the individual to whom they pertain, upon 
request; and 
(3) 5 U.S.C. 552a(g) authorizes civil action 
by an individual and requires disclosure by USPTO to 
the court. 
(c) The Privacy Officer shall make an accounting 
of each disclosure by him of any record contained 
in a system of records in accordance with 5 U.S.C. 
552a(c) (1) and (2). Except for a disclosure made 
under 5 U.S.C. 552a(b)(7), the Privacy Officer shall 
make such accounting available to any individual, 
insofar as it pertains to that individual, on request submitted 
in accordance with § 102.24. The Privacy 
Officer shall make reasonable efforts to notify any 
individual when any record in a system of records is 
disclosed to any person under compulsory legal process, 
promptly upon being informed that such process 
has become a matter of public record. 


[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.31 Fees.

 The only fees to be charged to or collected from an 
individual under the provisions of this part are for 
duplication of records at the request of the individual. 
The Privacy Officer shall charge fees for duplication 
of records under the Act in the same way in which 
they charge duplication fees under § 102.11, except as 
provided in this section. 

(a) No fees shall be charged or collected for the 
following: Search for and retrieval of the records; 
review of the records; copying at the initiative of 
USPTO without a request from the individual; transportation 
of records and personnel; and first-class 
postage. 
(b) It is the policy of USPTO to provide an individual 
with one copy of each record corrected or 
amended pursuant to his or her request without charge 
as evidence of the correction or amendment. 
(c) As required by the United States Office of 
Personnel Management in its published regulations 
implementing the Act, USPTO will charge no fee for a 
single copy of a personnel record covered by that 
agency’s Government-wide published notice of systems 
of records. 


 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.32 Penalties. 

(a) The Act provides, in pertinent part:

 Any person who knowingly and willfully 
requests or obtains any record concerning an individual 
from an agency under false pretenses shall be 
guilty of a misdemeanor and fined not more than 
$5,000. (5 U.S.C. 552a(i)(3)). 

(b) A person who falsely or fraudulently 
attempts to obtain records under the Act also may be 
subject to prosecution under such other criminal statutes 
as 18 U.S.C. 494, 495 and 1001. 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.33 General exemptions. 

(a) Individuals may not have access to records 
maintained by USPTO but which were provided by 
another agency which has determined by regulation 
that such information is subject to general exemption 
under 5 U.S.C. 552a(j). If such exempt records are 
within a request for access, USPTO will advise the 
individual of their existence and of the name and 
address of the source agency. For any further information 
concerning the record and the exemption, the 
individual must contact that source agency. 

(b) The general exemption determined to be 
necessary and proper with respect to systems of 
records maintained by USPTO, including the parts of 
each system to be exempted, the provisions of the Act 
from which they are exempted, and the justification 
for the exemption, is as follows: Investigative 
Records—Contract and Grant Frauds and Employee 
Criminal Misconduct—COMMERCE/DEPT.—12. 
Pursuant to 5 U.S.C. 552a(j)(2), these records are 
hereby determined to be exempt from all provisions 
of the Act, except 5 U.S.C. 552a (b), (c) (1) and (2), 
(e)(4) (A) through (F), (e) (6), (7), (9), (10), and (11), 
and (i). These exemptions are necessary to ensure the 
proper functions of the law enforcement activity, to 
protect confidential sources of information, to fulfill 
promises of confidentiality, to prevent interference 
with law enforcement proceedings, to avoid the disclosure 
of investigative techniques, to avoid the 
endangering of law enforcement personnel, to avoid 
premature disclosure of the knowledge of criminal 
activity and the evidentiary bases of possible enforcement 
actions, and to maintain the integrity of the law 
enforcement process. 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

§ 102.34 Specific exemptions. 

(a)(1) Some systems of records under the Act 
which are maintained by USPTO contain, from time-
to-time, material subject to the exemption appearing 
at 5 U.S.C. 552a(k)(1), relating to national defense 
and foreign policy materials. The systems of records 
published in the Federal Register by USPTO which 
are within this exemption are: COMMERCE/PATTM-
6, COMMERCE/PAT-TM-7, COMMERCE/PATTM-
8, COMMERCE/PAT-TM-9. 

(2) USPTO hereby asserts a claim to exemption 
of such materials wherever they might appear in 
such systems of records, or any systems of records, at 
present or in the future. The materials would be 
exempt from 5 U.S.C. 552a (c)(3), (d), (e)(1), (e)(4) 
(G), (H), and (I), and (f) to protect materials required 
by Executive order to be kept secret in the interest of 
the national defense and foreign policy. 
(b) The specific exemptions determined to be 
necessary and proper with respect to systems of 
records maintained by USPTO, including the parts of 
each system to be exempted, the provisions of the Act 
from which they are exempted, and the justification 
for the exemption, are as follows: 
(1)(i) Exempt under 5 U.S.C. 552a(k)(2). The 
systems of records exempt (some only conditionally), 
the sections of the Act from which exempted, and the 
reasons therefor are as follows: 


(A) Investigative Records—Contract 
and Grant Frauds and Employee Criminal Misconduct—
COMMERCE/DEPT—12, but only on condition 
that the general exemption claimed in 
§ 102.33(b)(3) is held to be invalid; 
(B) Investigative Records—Persons 
Within the Investigative Jurisdiction of USPTO— 
COMMERCE/DEPT-13; 
(C) Litigation, Claims and Administrative 
Proceeding Records—COMMERCE/DEPT-14; 
(D) Attorneys and Agents Registered 
to Practice Before the Office—COMMERCE/PATTM-
1; 


 

(E) Complaints, Investigations and Disciplinary 
Proceedings Relating to Registered Patent 
Attorneys and Agents—COMMERCE/PAT-TM-2; 
and 
(F) Non-Registered Persons Rendering 
Assistance to Patent Applicants—COMMERCE/PATTM-
5. 
(ii) The foregoing are exempted from 
5 U.S.C. 552a (c)(3), (d), (e)(1), (e)(4)(G), (H), and 
(I), and (f). The reasons for asserting the exemption 
are to prevent subjects of investigation from frustrating 
the investigatory process, to insure the proper 
functioning and integrity of law enforcement activities, 
to prevent disclosure of investigative techniques, 
to maintain the ability to obtain necessary information, 
to fulfill commitments made to sources to protect 
their identities and the confidentiality of information 
and to avoid endangering these sources and law 
enforcement personnel. Special note is taken of the 
fact that the proviso clause in this exemption imports 
due process and procedural protections for the individual. 
The existence and general character of the 
information exempted will be made known to the 
individual to whom it pertains. 
(2)(i) Exempt under 5 U.S.C. 552a(k)(5). The 
systems of records exempt (some only conditionally), 
the sections of the act from which exempted, and the 
reasons therefor are as follows: 


(A) Investigative Records—Contract 
and Grant Frauds and Employee Criminal Misconduct—
COMMERCE/DEPT-12, but only on condition 
that the general exemption claimed in § 102.33(b)(3) 
is held to be invalid; 
(B) Investigative Records—Persons 
Within the Investigative Jurisdiction of USPTO— 
COMMERCE/DEPT-13; and 
(C) Litigation, Claims, and Administrative 
Proceeding Records—COMMERCE/DEPT-14. 


(ii) The foregoing are exempted from 5 

U.S.C. 552a (c)(3), (d), (e)(1), (e)(4)(G), (H), and (I), 
and (f). The reasons for asserting the exemption are to 
maintain the ability to obtain candid and necessary 
information, to fulfill commitments made to sources 
to protect the confidentiality of information, to avoid 
endangering these sources and, ultimately, to facilitate 
proper selection or continuance of the best applicants 
or persons for a given position or contract. Special 
note is made of the limitation on the extent to which 
this exemption may be asserted. The existence and 
general character of the information exempted will be 
made known to the individual to whom it pertains. 

(c) At the present time, USPTO claims no 
exemption under 5 U.S.C. 552a(k)(3), (4), (6) and (7). 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

Appendix to Part 102 - Systems of Records Noticed 
by Other Federal Agencies1 and Applicable to 
USPTO Records and Applicability of this Part 
Thereto 

Category of records Other federal agency 
Federal Personnel Records Office of Personnel Management.
2 
Federal Employee Compensation 
Act Program 
Department of Labor.3 
Equal Employment 
Opportunity Appeal Complaints 
Equal Employment 
Opportunity Commission.
4 
Formal Complaints/ 
Appeals of Adverse Personnel 
Actions 
Merit Systems Protection 
Board.5 
1 Other than systems of records noticed by the Department 
of Commerce. Where the system of records applies 
only to USPTO, these regulations apply. Where the system 
of records applies generally to components of the 
Department of Commerce, the regulations of that department 
attach at the point of any denial for access or for 
correction or amendment. 
2 The provisions of this part do not apply to these 
records covered by notices of systems of records published 
by the Office of Personnel Management for all 
agencies. The regulations of OPM alone apply. 
3 The provisions of this part apply only initially to these 
records covered by notices of systems of records published 
by the U.S. Department of Labor for all agencies. 
The regulations of that department attach at the point of 
any denial for access or for correction or amendment. 

 

Category of records Other federal agency 
4 The provisions of this part do not apply to these 
records covered by notices of systems of records published 
by the Equal Employment Opportunity Commission 
for all agencies. The regulations of the Commission 
alone apply. 
5 The provisions of this part do not apply to these 
records covered by notices of systems of records published 
by the Merit Systems Protection Board for all 
agencies. The regulations of the Board alone apply. 

[Added, 65 FR 52916, Aug. 31, 2000, effective Oct. 2, 
2000] 

PART 104 — LEGAL PROCESSES 

Subpart A — General Provisions 

Sec. 

104.1 Definitions. 

104.2 Address for mail and service; telephone number. 

104.3 Waiver of rules. 

104.4 Relationship of this Part to the Federal Rules of 
Civil and Criminal Procedure. 

Subpart B — Service of Process 

104.11 Scope and purpose. 

104.12 Acceptance of service of process. 

 Subpart C — Employee Testimony and 
Production of Documents in Legal Proceedings 


104.21 Scope and purpose. 

104.22 Demand for testimony or production of documents. 

104.23 Expert or opinion testimony. 

104.24 Demands or requests in legal proceedings for 
records protected by confidentiality statutes. 

 Subpart D — Employee Indemnification 

104.31 Scope. 

104.32 Procedure for requesting indemnification. 

Subpart E — Tort Claims 

104.41 Procedure for filing claims. 

104.42 Finality of settlement or denial of claims. 

Subpart A — General Provisions 

§ 104.1 Definitions. 

Demand means a request, order, or subpoena for 
testimony or documents for use in a legal proceeding. 

Director means the Under Secretary of Commerce 
for Intellectual Property and Director of the United 
States Patent and Trademark Office (see § 1.9(j)). 

Document means any record, paper, and other property 
held by the Office, including without limitation, 
official letters, telegrams, memoranda, reports, studies, 
calendar and diary entries, maps, graphs, pamphlets, 
notes, charts, tabulations, analyses, statistical 
or informational accumulations, any kind of summaries 
of meetings and conversations, film impressions, 
magnetic tapes, and sound or mechanical reproductions. 


Employee means any current or former officer or 
employee of the Office. 

Legal proceeding means any pretrial, trial, and 
posttrial stages of existing or reasonably anticipated 
judicial or administrative actions, hearings, investigations, 
or similar proceedings before courts, commissions, 
boards or other tribunals, foreign or domestic. 
This phrase includes all phases of discovery as well as 
responses to formal or informal requests by attorneys 
or others involved in legal proceedings. 

Office means the United States Patent and Trademark 
Office, including any operating unit in the 
United States Patent and Trademark Office, and its 
predecessors, the Patent Office and the Patent and 
Trademark Office. 

Official business means the authorized business of 
the Office. 

General Counsel means the General Counsel of the 
Office.

 Testimony means a statement in any form, including 
personal appearances before a court or other legal 
tribunal, interviews, depositions, telephonic, televised, 
or videotaped statements or any responses 
given during discovery or similar proceedings, which 
response would involve more than the production of 
documents, including a declaration under 35 U.S.C. 
25 or 28 U.S.C. 1746.

 

United States means the Federal Government, its 
departments and agencies, individuals acting on 
behalf of the Federal Government, and parties to the 
extent they are represented by the United States. 

[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001; second sentence revised, 68 FR 14332, Mar. 25, 
2003, effective May 1, 2003] 

§ 104.2 Address for mail and service; telephone 
number. 

(a) Mail under this part should be addressed to: 

General Counsel, United States Patent and 
Trademark Office 

P.O. Box 15667
Arlington, VA 22215.


(b) Service by hand should be made during 
business hours to the Office of the General Counsel, 
10B20, Madison Building East, 600 Dulany Street, 
Alexandria, Virginia. 
(c) The Office of the General Counsel may be 
reached by telephone at 571–272–7000 during business 
hours. 


[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001; paras. (b) and (c) revised, 70 FR 10488, Mar. 4, 
2005, effective Mar. 4, 2005] 

§ 104.3 Waiver of rules. 

In extraordinary situations, when the interest of justice 
requires, the General Counsel may waive or suspend 
the rules of this part, sua sponte or on petition of 
an interested party to the Director, subject to such 
requirements as the General Counsel may impose. 
Any such petition must be accompanied by a petition 
fee of $130.00. 

[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001; revised, 69 FR 56481, Sept. 21, 2004, effective 
Oct. 21, 2004] 

§ 104.4 Relationship of this Part to the Federal 
Rules of Civil or Criminal Procedure. 

Nothing in this part waives or limits any requirement 
under the Federal Rules of Civil or Criminal 
Procedure. 

[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

Subpart B — Service of Process 

§ 104.11 Scope and purpose. 

(a) This subpart sets forth the procedures to be 
followed when a summons and complaint is served on 
the Office or on the Director or an employee in his or 
her official capacity. 
(b) This subpart is intended, and should be construed, 
to ensure the efficient administration of the 
Office and not to impede any legal proceeding. 
(c) This subpart does not apply to subpoenas, 
the procedures for which are set out in subpart C. 
(d) This subpart does not apply to service of 
process made on an employee personally on matters 
not related to official business of the Office or to the 
official responsibilities of the employee. 


[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

§ 104.12 Acceptance of service of process. 

(a) Any summons and complaint to be served in 
person or by registered or certified mail or as otherwise 
authorized by law on the Office, on the Director, 
or on an employee in his or her official capacity, shall 
be served as indicated in § 104.2. 
(b) Any employee of the Office served with a 
summons and complaint shall immediately notify, and 
shall deliver the summons and complaint to, the 
Office of the General Counsel. 
(c) Any employee receiving a summons and 
complaint shall note on the summons and complaint 
the date, hour, and place of service and whether service 
was by hand or by mail. 
(d) When a legal proceeding is brought to hold 
an employee personally liable in connection with an 
action taken in the conduct of official business, rather 
than liable in an official capacity, the employee by 
law is to be served personally with process. See Fed. 
R. Civ. P. 4(e). An employee sued personally for an 
action taken in the conduct of official business shall 
immediately notify and deliver a copy of the summons 
and complaint to the General Counsel. 
(e) An employee sued personally in connection 
with official business may be represented by the 


 

Department of Justice at its discretion (28 CFR 50.15 
and 50.16). 

(f) The Office will only accept service of process 
for an employee in the employee’s official capacity. 


[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

Subpart C — Employee Testimony and 
Production of Documents in Legal 
Proceedings


§ 104.21 Scope and purpose. 

(a) This subpart sets forth the policies and procedures 
of the Office regarding the testimony of 
employees as witnesses in legal proceedings and the 
production or disclosure of information contained in 
Office documents for use in legal proceedings pursuant 
to a demand. 
(b) Exceptions. This subpart does not apply to 
any legal proceeding in which: 
(1) An employee is to testify regarding facts 
or events that are unrelated to official business; or 
(2) A former employee is to testify as an 
expert in connection with a particular matter in which 
the former employee did not participate personally 
while at the Office. 


[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

§ 104.22 Demand for testimony or production of 
documents. 

(a) Whenever a demand for testimony or for the 
production of documents is made upon an employee, 
the employee shall immediately notify the Office of 
the General Counsel at the telephone number or 
addresses in §104.2 and make arrangements to send 
the subpoena to the General Counsel promptly. 
(b) An employee may not give testimony, produce 
documents, or answer inquiries from a person 
not employed by the Office regarding testimony or 
documents subject to a demand or a potential demand 
under the provisions of this subpart without the 
approval of the General Counsel. The General Counsel 
may authorize the provision of certified copies not 


otherwise available under Part 1 of this title subject to 
payment of applicable fees under §1.19. 

(c)(1) Demand for testimony or documents. A 
demand for the testimony of an employee under this 
subpart shall be addressed to the General Counsel as 
indicated in § 104.2. 

(2) Subpoenas. A subpoena for employee testimony 
or for a document shall be served in accordance 
with the Federal Rules of Civil or Criminal 
Procedure or applicable state procedure, and a copy of 
the subpoena shall be sent to the General Counsel as 
indicated in § 104.2. 
(3) Affidavits. Except when the United States 
is a party, every demand shall be accompanied by an 
affidavit or declaration under 28 U.S.C. 1746 or 
35 U.S.C. 25(b) setting forth the title of the legal proceeding, 
the forum, the requesting party’s interest in 
the legal proceeding, the reason for the demand, a 
showing that the desired testimony or document is not 
reasonably available from any other source, and, if 
testimony is requested, the intended use of the testimony, 
a general summary of the desired testimony, 
and a showing that no document could be provided 
and used in lieu of testimony. 
(d) Failure of the attorney to cooperate in good 
faith to enable the General Counsel to make an 
informed determination under this subpart may serve 
as a basis for a determination not to comply with the 
demand. 
(e) A determination under this subpart to comply 
or not to comply with a demand is not a waiver or 
an assertion of any other ground for noncompliance, 
including privilege, lack of relevance, or technical 
deficiency. 
(f) Noncompliance. If the General Counsel 
makes a determination not to comply, he or she will 
seek Department of Justice representation for the 
employee and will attempt to have the subpoena modified 
or quashed. If Department of Justice representation 
cannot be arranged, the employee should appear 
at the time and place set forth in the subpoena. In such 
a case, the employee should produce a copy of these 
rules and state that the General Counsel has advised 
the employee not to provide the requested testimony 
nor to produce the requested document. If a legal tribunal 
rules that the demand in the subpoena must be 
complied with, the employee shall respectfully 


 

decline to comply with the demand, citing United 
States ex rel. Touhy v. Ragen, 340 U.S. 462 (1951). 

[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

§ 104.23 Expert or opinion testimony. 

(a)(1) If the General Counsel authorizes an 
employee to give testimony in a legal proceeding not 
involving the United States, the testimony, if otherwise 
proper, shall be limited to facts within the personal 
knowledge of the employee. Employees, with or 
without compensation, shall not provide expert testimony 
in any legal proceedings regarding Office information, 
subjects, or activities except on behalf of the 
United States or a party represented by the United 
States Department of Justice. 

(2) The General Counsel may authorize an 
employee to appear and give the expert or opinion testimony 
upon the requester showing, pursuant to 
§104.3 of this part, that exceptional circumstances 
warrant such testimony and that the anticipated testimony 
will not be adverse to the interest of the Office 
or the United States. 
(b)(1) If, while testifying in any legal proceeding, 
an employee is asked for expert or opinion testimony 
regarding Office information, subjects, or activities, 
which testimony has not been approved in advance in 
writing in accordance with the regulations in this subpart, 
the witness shall: 


(i) Respectfully decline to answer on the 
grounds that such expert or opinion testimony is forbidden 
by this subpart; 
(ii) Request an opportunity to consult with 
the General Counsel before giving such testimony; 
and 


(iii) Explain that upon such consultation, 
approval for such testimony may be provided. 

(2) If the tribunal conducting the proceeding 
then orders the employee to provide expert or opinion 
testimony regarding Office information, subjects, or 
activities without the opportunity to consult with the 
General Counsel, the employee shall respectfully 
refuse to provide such testimony, citing United States 
ex rel. Touhy v. Ragen, 340 U.S. 462 (1951). 
(c) If an employee is unaware of the regulations 
in this subpart and provides expert or opinion testi


mony regarding Office information, subjects, or activities 
in a legal proceeding without the aforementioned 
consultation, the employee shall, as soon after testifying 
as possible, inform the General Counsel that such 
testimony was given and provide a written summary 
of the expert or opinion testimony provided. 

(d) Proceeding where the United States is a 
party. In a proceeding in which the United States is a 
party or is representing a party, an employee may not 
testify as an expert or opinion witness for any party 
other than the United States. 

[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

§ 104.24 Demands or requests in legal proceedings 

for records protected by confidentiality 

statutes. 

Demands in legal proceedings for the production of 
records, or for the testimony of employees regarding 
information protected by the confidentiality provisions 
of the Patent Act (35 U.S.C. 122), the Privacy 
Act (5 U.S.C. 552a), the Trade Secrets Act (18 U.S.C. 
1905), or any other confidentiality statute, must satisfy 
the requirements for disclosure set forth in those 
statutes and associated rules before the records may 
be provided or testimony given. 

[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

Subpart D — Employee Indemnification 

§ 104.31 Scope. 

The procedure in this subpart shall be followed if a 
civil action or proceeding is brought, in any court, 
against an employee (including the employee’s estate) 
for personal injury, loss of property, or death, resulting 
from the employee’s activities while acting within 
the scope of the employee’s office or employment. 
When the employee is incapacitated or deceased, 
actions required of an employee should be performed 
by the employee’s executor, administrator, or comparable 
legal representative. 

[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

 

§ 104.32 Procedure for requesting indemnification. 

(a) After being served with process or pleadings 
in such an action or proceeding, the employee 
shall within five (5) calendar days of receipt, deliver 
to the General Counsel all such process and pleadings 
or an attested true copy thereof, together with a fully 
detailed report of the circumstances of the incident 
giving rise to the court action or proceeding. 
(b)(1) An employee may request indemnification 
to satisfy a verdict, judgment, or award entered 
against that employee only if the employee has timely 
satisfied the requirements of paragraph (a) of this section. 


(2) No request for indemnification will be 
considered unless the employee has submitted a written 
request through the employee’s supervisory chain 
to the General Counsel with: 
(i) Appropriate documentation, including 
copies of the verdict, judgment, appeal bond, award, 
or settlement proposal; 
(ii) The employee’s explanation of how the 
employee was acting within the scope of the 
employee’s employment; and; 


(iii) The employee’s statement of whether 
the employee has insurance or any other source of 
indemnification. 

[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

Subpart E — Tort Claims 

§ 104.41 Procedure for filing claims. 

Administrative claims against the Office filed pursuant 
to the administrative claims provision of the 
Federal Tort Claims Act (28 U.S.C. 2672) and the corresponding 
Department of Justice regulations 
(28 CFR Part 14) shall be filed with the General 
Counsel as indicated in §104.2. 

[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

§ 104.42 Finality of settlement or denial of claims. 

Only a decision of the Director or the General 
Counsel regarding settlement or denial of any claim 
under this subpart may be considered final for the purpose 
of judicial review. 

[Added, 66 FR 47387, Sept. 12, 2001, effective Sept. 
12, 2001] 

SUBCHAPTER C – PROTECTION OF 
FOREIGN MASK WORKS 

PART 150 — REQUESTS FOR 
PRESIDENTIAL PROCLAMATIONS 
PURSUANT TO 17 U.S.C. 902(a)(2)


Sec. 

150.1 Definitions. 

150.2 Initiation of evaluation. 

150.3 Submission of requests. 

150.4 Evaluation. 

150.5 Duration of proclamation. 

150.6 Mailing address. 

§ 150.1 Definitions. 

(a) Director means the Under Secretary of 
Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office (see § 
1.9(j)). 
(b) Foreign government means the duly-constituted 
executive of a foreign nation, or an international 
or regional intergovernmental organization which has 
been empowered by its member states to request issuance 
of Presidential proclamations on their behalf 
under this part. 
(c) Interim order means an order issued by the 
Secretary of Commerce under 17 U.S.C. 914. 
(d) Mask work means a series of related images, 
however fixed or encoded — 
(1) Having or representing the predetermined, 
three-dimensional pattern of metallic, insulating, 
or semiconductor material present or removed 
from the layers of a semiconductor chip product; and 
(2) In which series the relation of the images 
to one another is that each image has the pattern of the 
surface of one form of the semiconductor chip product. 
(e) Presidential proclamation means an action 
by the President extending to foreign nationals, domiciliaries 
and sovereign authorities the privilege of 
applying for registrations for mask works pursuant to 
17 U.S.C. 902. 


 

(f) Request means a request by a foreign government 
for the issuance of a Presidential proclamation. 
(g) Proceeding means a proceeding to issue an 
interim order extending protection to foreign nationals, 
domiciliaries and sovereign authorities under 
17 U.S.C. Chapter 9. 
(h) Secretary means the Secretary of Commerce. 


[Added, 53 FR 24447, June 29, 1988, effective August 
1, 1988; para. (a) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003] 

§ 150.2 Initiation of evaluation. 

(a) The Director independently or as directed 
by the Secretary, may initiate an evaluation of the propriety 
of recommending the issuance, revision, suspension 
or revocation of a section 902 proclamation. 
(b) The Director shall initiate an evaluation of 
the propriety of recommending the issuance of a section 
902 proclamation upon receipt of a request from 
a foreign government. 


[Added, 53 FR 24447, June 29, 1988, effective August 
1, 1988; revised, 68 FR 14332, Mar. 25, 2003, effective 
May 1, 2003] 

§ 150.3 Submission of requests. 

(a) Requests for the issuance of a section 902 
proclamation shall be submitted by foreign governments 
for review by the Director. 
(b) Requests for issuance of a proclamation 
shall include: 
(1) A copy of the foreign law or legal rulings 
that provide protection for U.S. mask works which 
provide a basis for the request. 
(2) A copy of any regulations or administrative 
orders implementing the protection. 
(3) A copy of any laws, regulations, or 
administrative orders establishing or regulating the 
registration (if any) of mask works. 
(4) Any other relevant laws, regulations, or 
administrative orders. 
(5) All copies of laws, legal rulings, regulations, 
or administrative orders submitted must be in 


unedited, full-text form, and if possible, must be 
reproduced from the original document. 

(6) All material submitted must be in the 
original language, and if not in English, must be 
accompanied by a certified English translation. 

[Added, 53 FR 24447, June 29, 1988, effective August 
1, 1988; para. (a) revised, 68 FR 14332, Mar. 25, 2003, 
effective May 1, 2003] 

§ 150.4 Evaluation. 

(a) Upon submission of a request by a foreign 
government for the issuance of a section 902 proclamation, 
if an interim order under section 914 has not 
been issued, the Director may initiate a section 914 
proceeding if additional information is required. 
(b) If an interim order under section 914 has 
been issued, the information obtained during the section 
914 proceeding will be used in evaluating the 
request for a section 902 proclamation. 
(c) After the Director receives the request of a 
foreign government for a section 902 proclamation, or 
after a determination is made by the Director to initiate 
independently an evaluation pursuant to § 
150.2(a) of this part, a notice will be published in the 
Federal Register to request relevant and material 
comments on the adequacy and effectiveness of the 
protection afforded U.S. mask works under the system 
of law described in the notice. Comments should 
include detailed explanations of any alleged deficiencies 
in the foreign law or any alleged deficiencies in 
its implementation. If the alleged deficiencies include 
problems in administration such as registration, the 
respondent should include as specifically as possible 
full detailed explanations, including dates for and the 
nature of any alleged problems. Comments shall be 
submitted to the Director within sixty (60) days of the 
publication of the Federal Register notice. 
(d) The Director shall notify the Register of 
Copyrights and the Committee on the Judiciary of the 
Senate and the House of Representatives of the initiation 
of an evaluation under these regulations. 
(e) If the written comments submitted by any 
party present relevant and material reasons why a 
proclamation should not issue, the Director will: 
(1) Contact the party raising the issue for verification 
and any needed additional information; 


 

(2) Contact the requesting foreign government 
to determine if the issues raised by the party can 
be resolved; and, 
(i) If the issues are resolved, continue with 
the evaluation; or, 
(ii) If the issues cannot be resolved on this 
basis, hold a public hearing to gather additional information. 
(f) The comments, the section 902 request, 
information obtained from a section 914 proceeding, 
if any, and information obtained in a hearing held pursuant 
to paragraph (e)(ii) of this section, if any, will be 
evaluated by the Director. 
(g) The Director will forward the information to 
the Secretary, together with an evaluation and a draft 
recommendation. 
(h) The Secretary will forward a recommendation 
regarding the issuance of a section 902 proclamation 
to the President. 


[Added, 53 FR 24448, June 29, 1988, effective August 
1, 1988; paras. (a) & (c)-(f) revised, 68 FR 14332, Mar. 25, 
2003, effective May 1, 2003] 

§ 150.5 Duration of proclamation. 

(a) The recommendation for the issuance of a 
proclamation may include terms and conditions 
regarding the duration of the proclamation. 
(b) Requests for the revision, suspension or 
revocation of a proclamation may be submitted by 
any interested party. Requests for revision, suspension 
or revocation of a proclamation will be considered in 
substantially the same manner as requests for the issuance 
of a section 902 proclamation. 


[Added 53 FR 24448, June 29, 1988, effective August 
1, 1988] 

§ 150.6 Mailing address. 

Requests and all correspondence pursuant to these 
guidelines shall be addressed to: Mail 
Stop Congressional Relations, Director of the United 
States Patent and Trademark Office, P.O. Box 1450, 
Alexandria, Virginia 22313-1450. 

[Added 53 FR 24448, June 29, 1988, effective Aug. 1, 
1988; revised, 68 FR 14332, Mar. 25, 2003, effective May 
1, 2003; revised, 70 FR 10488, Mar. 4, 2005, effective Mar. 
4, 2005]