Robert C. Ryan Patent Attorney/Partner & HART LLP · 2012-10-05 · From: Bob Ryan Sent: Friday,...

From Bob Ryan Sent Friday October 05 2012 652 PM To fitf_rules Cc Craig Macy Connor McCune Gay Groves Subject First-Inventor-to-File (Response to Proposed Rules) Importance High

To The Honorable David J Kappos Under Secretary of Commerce for Intellectual Property and Director of the United States Patent

and Trademark Office

Dear Under Secretary Kappos

Attached are Comments to Proposed Rules for Implementation of the America Invents Act

Respectfully submitted

Robert C Ryan Patent AttorneyPartner HOLLAND amp HART LLP 5441 Kietzke Lane Second Floor Reno Nevada 89511 Main 775-327-3000 Direct 775-327-3042 Cell 775-247-8803 Fax 775-786-6179 Skype rcryanhh wwwhollandhartcom

MEMORANDUM

October 5 2012

Via Electronic Mail fitf rulesusptogov

TO The Honorable David J Kappos Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office

FROM Robert C Ryan Esq (Reg No 29343) Craig H Macy Esq (Reg No 68344) Connor L McCune (Reg No 69726)

DATE October 5 2012

RE First-Inventor-to-File (Response to Proposed Rules)


Below are our comments on proposed rule 178 as seen in Vol 77 No 144 of the Federal Register dated Thursday July 262012

PROBLEMS PRESENTED BY PROPOSED RULE 178(a)3

Proposed section 178(a)(3) requires that if an applicant believes new matter is added to a nonprovisional application claiming priority to a provisional application filed before March 16 2013 the applicant must certify that the application includes new matter so that the PTO can determine which law to apply to the application This requirement should not be enacted because it imposes a very serious costly and risky burden on applicants and their counsel and reduces the incentive to patent innovate expand human knowledge and create new products services enterprises and jobs

I First every attorney has the duty zealously to protect and pursue a clients legitimate interests within the bounds of the lawj A duty to concede the existence of subject matter not also disclosed in (the) provisional application runs directly counter to that duty jj Like obviousness and thus materiality the determination of what constitutes new matter can involve

Holland amp HartLLP Attorneys at Law

Pho ne (775) 327-3000 Fax (775) 786-6179 wwwhollandhartcom

5441 Kietzke Lane Second Floor Reno NV 89511

Aspen Billings Boise Boulder carson City Cheyenne Colorado Springs Denver Denver Tech Center Jackson Hole Las V~as Reno Salt Lake City Santa Fe Washington DC

HOLLANDampHART~ Page 2 THE LAW OUT WEST

substantial subjective complex and unpredictable underlying inquiries (such as enablement support written description support and additional detailed teaching when 35 USC sect 112 ~ 6 (functional claiming) is or may be applicable the latter inquiry being exceptionally complex) These are things about which reasonable people can and do disagree iii

As a result if (i) an advocate were to take a position that given matter is supported and not new (in compliance with the advocates duty to advocate zealously) but (ii) that question were later decided contrary to the position taken by the advocate the advocate then would be at risk of being accused of having violated the duty of candor and engaged in inequitable conduct The duty of candor and its potential consequence of being accused of inequitable conduct thus places the advocate at serious risk of advocating zealously when the advocate believes there is arguable but not necessarily un-debatable support in the priority document The proposed rule thus runs counter to the duty to advocate zealously because of the duty of candor and the potentially serious consequence of being accused of having violated that duty due to someone s later disagreement with or argument contrary to the argument position taken by the advocate for the client

In addition this rule raises the risk that applicants and advocates will over-state the scope of new matter to try to comply with the duty of candor and avoid any possible inequitable conduct The proposed rule thus incentivizes in multiple ways conduct by advocates counter to among other things their duty to advocate zealously

II For reasons noted above requiring applicants and advocates to compare applications and scour their provisional applications for support for all matter in the nonprovisional will be a time consuming and costly task Thus the proposed rule will significantly increase the time involved in and cost of preparing nonprovisional applications with little to no benefit to the applicants The substantial cost of compliance with the proposed rule thus will create yet further disincentive to patent which will create yet further disincentive to innovate add to the scope of human knowledge and create new products services enterprises and jobs

III It has historically been the job of the Examiner not the patent applicant or its advocate to determine if a claim in a nonprovisional application claiming priority to a provisional application is supported by the disclosure in the provisional application iv For example the MPEP states that each claim in a nonprovisional application claiming priority to a provisional application must be

1vsupported by the provisional to comply with 35 USC sect 112 ~ Further the Examiners note to form paragraph 210 of that section gives the standard Examiner response to such a situationvi

Thus the Examiner is already under a duty to verify support in the provisional application for each claim Consequently we respectfully submit that the reasons given for the proposed rule are without merit The proposed rule requires the Examiner to perform the same function and involves only a minimally increased burden on that Examiner by further requiring

HOLLANDampHARTCLP Page 3 THE LAW OUT WEST

the Examiner to compare dates and detelmine if the new law applies This negligible increase in effort by the Office does not justify (i) placing such a high burden and level of risk on patent applicants and their representatives (ii) disincentivizing advocates zealous advocacy on behalf of their client applicants and (iii) the resulting negative incentive to innovate expand human knowledge and create new products services enterprises and jobs

IV This proposed rule presents problems similar in nature to those created by an earlier version of a section in 37 CF R enacted in 1977 as further described in the MPEP at the time (See Exhibit A attached) This latter rule had required the applicant and the applicants advocate to summarize the prior art filed in an IDS in order to aid the Examiner in examining the applicationvii By requiring the applicants and their advocates to characterize cited prior art this rule created serious risks for the applicants and their advocates before the Office The rule also ran counter to the advocates duty to advocate zealously for their clients This requirement obviously presented the same types of issues presented by the present proposed rule to identify the presence of new matter As a result the duty to summarize prior art was finally repealed in 1992viii

We therefore respectfully request that the Office decline to enact this new proposed rule for the same reasons that the duty to summarize the prior art was repealed in 1992 as well as for the other reasons explained above

We thank you for consideration of our comments If you have any questions please do not hesitate to contact us at any time

Very truly yours

) -- tJ ~ Robert C Ryan Esq (Reg No 29343) Craig Macy Esq (Reg No 68344) Connor McCune (Reg No 69726 Nevada Bar Admission Pending)

HOLLANDampHARTup Page 4 THE LAW OUT WEST

i Module Rule of Professional Conduct Comment to R 13 Preamble ~~[2] [9]

ii Changes To Implement the First Inventor To File Provisions of the Leahy-Smith America Invents Act 77 Federal Register 144 p 43747 (July 262012)

iii MPEP 70603(0) New Matter MPEP 216306 Relationship of Written Description Requirement to New Matter MPEP 216307 Amendments to Application Which Are Supported in the Original Description See 85 J Pat amp Trademark Off Socy 133 (2003) (The requirement which is at the core of this article the written description requirement is the perfect example of the rather unstable interpretation of some of the patentability requirements This requirement has given rise to considerable debate and disagreement concerning the exact ambit and scope within the CAFC)

iv MPEP 20111

v d

vi Id

vii 37 CFR sect198 Jan 1977 (see 42 FR 5590-91 94 for comments) MPEP 609 3rd ed 52nd revision p 60 - 602 (Apr 1977)

viii 37 CFR sect198 Jan 1992 (see 57 FR 2030-31 35 for comments) MPEP 609 5th ed 14th revision p 600-66 - 600-68 (Nov 1992)

Exhibit A

Table of Contents

1 42 FR 5590-5595 (concerning 37 CFR sect198) Jan 1977helliphelliphelliphelliphelliphelliphelliphelliphelliphelliphellip2

2 MPEP 609 3rd ed 52 revision Apr 1977 p 60 - 602helliphelliphelliphelliphelliphelliphelliphelliphelliphelliphellip8


4 MPEP 609 5th ed 14th revision Nov 1992 p 60065-60070helliphelliphelliphelliphelliphelliphelliphellip17

AND REGULATIONS

comments on proposed sect 156 The Courtnoted that the standard of materialityshould not be so low that persons wouldbe subjected to liability for insignifi-cant omissions or misstatements or solow that the fear of liability would causemanagement simply to bury the share-holder in an avalanche of trivial infor-mation-a result that is hardly condu-cive to Informed decision making0

Although the third sentence of sect 156(a) refers to decision of an examinerit is Intended that the duty of disclosurewould apply in the sme manner in theless common instances where the officialmaking a decision on a patent applica-tion is someone other than an exam-iner-eg a member of the Board ofPatent Interferences or the Board ofAppeals This is implicit in the duty ofcandor and good faith toward the Officethat is specified in the first sentence ofsect 156(a)

Comments and questions were receivedconcerning the term information usedin the second and third sentences ofsect 156(a) and elsewhere It means all ofthe kinds of information required to bedisclosed under current case law In addi-tion toprior art patents and publicationsit includes information on prior publicuses sales and the like It is not be-lieved practicable to define informationin the text of the rule at this time How-ever the rule is not intended to requiredisclosure of informatioh favorable topatentability-eg evidence of commer-cial success of the invention Neither isit meant to require disclosure of infor-mation concerning the level of skill inthe art for purposes of determiningobviousness

Several comments were received con-cerning the duty to disclose informationthe patent applicant regards as confi-dential including information the appli-cant has rebeived from another partyunder an Injunction of secrecy Thisproblem has existed prior to amendmentof sect 156 The Patent and TrademarkOffice of course keeps information dis-closed by applicants confidential until apatent is Issued It has been suggestedthat the Office should develop a mecha-nism for continuing to hold informationin confidence after issuance of a patentif in the judgment of the examiner theinformation is not material to the exam-ination of the application The feasibilityof offering a rule for public comment onthis topic at a later date will be con-sidered

New sect 156(b) is added to make clearthat Information may be disclosed tothe Office through an attorney or agentof record or through a pro se inventorand that other individuals may satisfytheir duty of disclosure to the Office bydisclosing information to such an attor-ney agent or inventor Information thatis not material need not be passed alongto the Office

Proposed sections 156 (b) and (c) havebeen revised and shortened and appearat sectsect 156 (c) and (d) The proposal was

426 US at- 48 L Ed 2d at 765 96 SCt at 2132 44 USLW at 485

criticized for leaving it open to the Officeto apply a different standard of material-ity from the one set forth in sect 156 Sec-tion 156(d) as adopted states that anapplication shall be stricken when thecriteria set forth are met Thus sect 156(d)as adopted Lstablishes a single standardfor striking applications

The term inequitable conduct Isdropped from sect 156(d) as covering toogreat a spectrum of conduct to be subjectto mandatory striking Inequitable con-duct that is equivalent to fraud is in-fended to come within the definition offraud The Court of Customs and PatentAppeals already has interpreted fraudin existing sect 156 to encompass conductof this sort Moreover sect 156(d) asadopted calks for striking an applicationeither for fraud or for a violation of theduty of disclosure

In sect 156(d) bad faith is substitutedfor the term deliberate that was usedin the proposal This change is to makeclear that an intent to deceive (or grossnegligence equivalent to such an intent)must be shown before an application willbe stricken Bad faith is not present ifinformation is withheld as a result ofan error In judgment or Inadvertence

Several comments concerned whetherattorneys and agents could representtheir clients interests and at the sametime comply with sect 156 Similar com-ments were directed to sectsect 197 to 199It is of course in the interest of the clientto have a valid patent and this cannotbe obtained without disclosure of knownmaterial facts It is not inconsistent for

- an attorney or ageit to fulfill his dutyof candor and good faith to the Officeand to act as an advocate for his clientThe submission of information undersect 156 does not preclude the submissionof arguments that such information doesnot render the subject matter of theapplication unpatentable

In sect 165 a new third sentence is addedto require the patent applicant to ac-knowledge the duty of disclosure Thelanguage is changed-from the proposalto be consistent with changes made insect 156 To allow time for the Office andapplicants to revise printed oath anddeclaration forms now in use the man-datory acknowledgement of the duty ofdisclosure in amended sect 165 does notbecome effective until January 1 1978Applicants at their option may includethe new language in oaths and declara-tions filed prior to the effective dateThe Office will publish a separate noticein the FEDERAL REGISTER adding a sen-tence acknowledging the duty of disclo-sure to appropriate forms in 37 CPRPart 3 Forms for Patent Cases

The word statement is deleted fromthe title of sect 165 to avoid confusion withthe prior art statement of sect sect 197 through199

Amended sect 1346 emphasizes that theremust be a reasonable basis to support

See discussion -accompanying proposedrules in FEDERA Ems=a of October 4 1976page 43731 frst sentence

$Norton v Curtiss 433 F 2d 779 792167USPQ 532 543 (CCPA 1970)

every allegation of improper conductmade by a registered practitioner In anyOffice proceeding The language thatwas proposed Is clarifiedin the sectionas adopted Although sect 1346 is limitedto papers filed in Office proceedings theamenqment to sect 1346 Is not Intendedto imply that disciplinary action neverwill be taken against a registered prac-titioner under sect 1348 for a groundlessallegation of improper conduct In a courtproceeding

PRIOR ART STAT-ILNTS

New sectsect 197 198 and 199 deal withprior art statements and provide a mech-anism by which patent applicants maycomply with the duty of disclosure pro-vided in sect 156 The sections have beensubstantially changed from the proposal-in response to comments received

Unlike the corresponding part of theproposal the sections as adopted arenot mandatory though applicants arestrongly encouraged to follow the pro-cedures described in them Applicationswill be examined whether or not a priorart statement is filed and whether Itcomplies with the rules or Is defectiveIt is nevertheless believed that appli-cants will find that the use of prior artstatements complying fully with the re-quirements of sectsect 197 through 199 willbe the best way to satisfy the duty ofdisclosure The Patent and TrademarkOffice cannot asure that prior art dis-closed in other ways will be consideredby the examiner

Sections 197 through 199 do not pre-scribe the content of what materialsshould be submitted Jn-the prior artstatement this is for the applicant andthe attorney or agent to decide In thelight of the duty of disclosure expressedin sect 156 The only criterion containedin sectsect 197 through 199 as to contentof the art cited Is In sect 197(b) This sub-section indicates that the statement willbe construed as a representation thatthe prior art listed includes what thesubmitter considers to be the closest artof which he Is aware The submitter

need not decide which particular Itemof prior art are the closest or Identifyany Items ds such the representationis simply that he is not withholdingknown prior art which he considerscloser than that which is submitted See-tion 197(b) makes clear that the priorart statement Is not a representationthat a search has been made or that nobetter art exists

In sect 197(a) the time for filing theprior art statement Is extended from thetwo months of the original proposal tothree months In most cases prior artsubmitted within three months will beavailable to the examiner before he takesup the case for action though it will behelpful if citations are made as promptlyas possible

Section 198 lists the elements of theprior art statement a listing of the arta concise explanation of the relevanceof each listed item and copies of the artor the pertinent portions thereof

The prior art statement resemblessomewhat the patentability statement

FEDERAL REGISTER VOL 42 NO 19-FRIDAY JANUARY 28 1977

55905590

comments on proposed sect 156 The Court noted that the standard of materiality should not be so low that persons would be subjected to liability for insignifishycant omissions or misstatements orso low that the fear of liability would cause management simply to bury the shareshyholder in an avalanche of trivial inforshymation-a result that is hardly condushycive to informed decision makingmiddot

Although the third sentence of sect 156 (a) refers to decisionS of an examiner it is intended that the duty of disclosure would apply in the srune manner in the less common instances where the official making a decision on a patent applicashytion is someone other than an examshyiner-eg a member of the Board of Patent Interferences Or the Board of Appeals This is impliCit in the duty of candor and good faith toward the Office that is specified in the first sentence of sect 156(0gt

Comments and questions were received concerning the term information used in the second and third sentences of sect 156(0) and elsewhere It means all of the kinds of information required to be disclosed under current case law In addishytion toprior art patents- and publications it inclUdes information on prior public uses sales and the like It is not beshylieved practicable tl) define information in the text of the rule at this time Howshyever the rule i) not intended to require disclosure of information favorable to patentability-eg evidence of commershycial success of the invention Neither is it meant to require disclosure of inforshymation concerning the level of skill in the art for purposes of determining obviousness

Several comments were received conshycerning the duty to disclose information the patent applicant regards as confishydential including information the applishycant has received from another party under an injunction of secrecy This problem has existed prior to amendment of sect 156 The Patent and Trademark Office of course keeps information disshyclosed by applicants confidential until a patent is issued It has been suggested that the Office should develop a mechashynism for continuing to hold information in confidence after issuance of a patent if in the judgment of the examiner the information is not matCrial to the examshyination of the application The feasibility of offering a rule for public comment on this topic at a later date will be con-sidered -

New sect 156(b) is added to make clear that information may be disclosed to the Office through an attorney or agent of record or through a pro se inventor and that other individuals may satisfy their duty of disclosure to the Office by disclosing information to such an attorshyney agent or inventor Information that is not material need not be passed along to the Office

Proposed sections 156 (b) and (c) have been revised and shortened and appear at sectsect 156 (c) and (d) The proposal was

bull 426 US at -- 48 L Ed 2d at 765 96 S ct at 2132 44 USLW at 4855

RULES AND REGULATIONS

criticized for leaving it open to the Office every allegation of improper conduot to apply a different standard of material- made by a registered practitioner in any 1ty from the one set forth in sect 1567 Sec- Office proceeding The language that tion 156(d) as adopted states that an was proposed is clarifiedin the section application shall be stricken when the as adopted Although sect 1346 is limited criteria set forth are met Thus sect 156(d) to papers filed in Office proceedings the as adopted ~tablishes a single standard amenqment to sect 1346 is not intended for striking applications to imply that disciplinary action novel

The term inequitable conduct is will be taken against a registered prao~ dropped from sect 156(d) as covering too titioner under sect 1348 for u groundless great a spectrum of conduct to be subject allegation of imploper conduct in a COUlt to mandatory striking Inequitable con- proceeding duct that is equivalent to fraud is in- fended to come within the definition of PRIOR AnT STATEliICNTS fmud The Court of Customs and Patent New sectsect 197 198 and 199 deal with Appeals already has interpreted fraud prior art statements nnd provide a mechshyin existing sect 156 to encompass conduct anism by which patent aplJlicants may of this sort Moreover sect 156(d) as comply with the duty of disclosure pro~ adopted calh for striking an application vided in sect 156 The sections have been either for fraud or for a violation of the substantially changed from the proposnl duty of disclosure - in response to cOlpments received

In sect 156(d) bad faith is substituted Unlike the corresponding part of the for the term deliberate that was used proposal the sections as adopted arc in the proposal This change is to make not mandatory though applicants nrc clear that an intent to deceive (or gross strongly encouraged to follow the pro~ negligence equivalent to such an intent) cedures described in them Applications must be shown before an application will will be examined whether or not a pdor be stricken Bad faith is not present if art stateIlent is filed and whether it information is withheld as a result of complies with the rules or Is defective an euor in judgment or inadvertence It is nevertheless believed that appll~

Several comments concerned whether cants will find that the use of prior nrt attorneys and agents could represent statements complying fully with tho re~ their clients interests and at the same quirements of sectsect 197 through 199 wlll time comply with sect 156 Similar com- be the best way to satisfy the duty Of ments were directed to sectsect 197 to 199 disclosure The Patent and Trademnrk It is of course in the interest of the client Office cannot aSsure that prior art dis to have a valid patent and this cannot closed in other ways wlll be considered be obtained without disclosure of known by the examiner material facts It is not inconsistent for Sections 197 through 199 do not PlO-

_ an attorney or agent to fulfill his duty scribe the content of what materials of candor and good faith to the Office should be submitted In the prior art and to act as an advocate for his client statement this is for the applicant and The submission of information under the attorney or agent to decide in the sect 156 does not preciude the submission light of the duty of disclosure expressed of arguments that such information does in sect 156 The only criterion contained not render the subject matter of the in sectsect 197 through 199 as to content application unpatentable of the art cited is in sect 197(b) This sub-

In sect 165 a new third sentence is added section indicates that the statement wlll to require thepatent applicant to ac- be construed as a representation that knowledge the duty of disclosure The the prior art listed includes what the language is changed -Hom the proposal submitter considers to be the closest mmiddott to be consistent with changes made in of which he is aware The submittel sect 156 To allow time for the Office and need not decide which particular items applicants to revise printed oath and of prior a~1 are the closest or identify declaration forms now in use the man- any items us such the representation datory acknowledgement of the duty of is simply that he is not withholding disclosure in amended sect 165 does not known prior art which he considolS

become effective until January 1 1978 closer than that which is submitted SeoshyApplicants at their option may include tion 197(b) makes clear that tho priolo the new language in oaths and declara- art statement is not a representation tions filed prior to the effective date that a search has been made or that no The Office will publish a separate notice better art exists in the FEDERAL REGISTER adding a sen- In sect 197(a) the time for filing tho tence acknowledging the duty of disclo- prior art statement is extended from tho sure to appropriate forms in 37 CFR two months of the original proposal to Part 3 Forms for Patent Cases three months In most casos prior art

The word ~middotstatement is deleted from submitted within three months w1l1 bo the title of sect 165 to avoid confusion with available to the examiner before he takes the prior art statement of sectsect 197 through up the case for action though it wm be 199 - _ helpful if citations are made as promptly

Amended sect 1346 emphasizes that there as possible must be a reasonable basis to support Section 198 lists the elements of tho

See discussion ~accompanying proposed rules in FEDERAL REGISTER of October 4 1976 page 43731 first sentence

-Norton v aurtfs8 433 F 2d 779 792167 USPQ 532543 (CCPA 1970)

prior art statement a listing of the (ut a concise explanation ()f the relevance of each listed item and copIes of the art or the pertinent portions theleof

The prior art statement resembles somewhat the patentabll1ty statement


2HeinOnline -- 42 Fed Reg 5590 1977

CL_McCune
Highlight

AND REGULATIONS

of the proposal and the patentabilitybrief proposed elsewhere The name hasbeen changed to reflect a change in therequirements of sect198(a) Unlike theproposed version of this paragraphwhich called for an explanation of whythe claimed invention is believed patent-able over the cited art the paragraphas adopted calls only for a concise ex-planation of the relevance 6f each listeditem This may be nothing more thanidentification of the particular figure orparagraph of the patent or publicationwhich has some relation to the claimedinvention It might be a simple statementpointing to similarities between the itemof prior art and the claimed invention Itis permissible but not necessary to dis-cuss differences between the prior artand the claims It is thought that theexplanation of relevance will be eenti-ally as useful to the examiner as theformerly proposed explanation ofpatentability and should be significantlyless burdensome for the applicant toprepare

Section 1-98 requires a copy of eachpatent or publication cited includingUS patents to accompany the prior artstatement- Several -comments questionedthe need for burdening the applicant tosupply copies of materials that are pres-ent in the Offices files However sub-stantial time and effort often is neededto locate a document in the Offices filesSince theperson submitting the priorart statement generally has available acopy of the item being cited it is believedthat expense and-effort can be mininiizedby having that person supply the copyin all cases Consideration has been givento proposals to allow the applicant tosubmit an order for copies of the patentsalong with his statement instead of actually submitting copies This will befurther studied but to date no way hasbeen found to assure that the copies willbe available to the examiner by the firstaction unless the applicant submits themwith the prior art statement

Other changes to sectsect 197 through 199from the proposal eliminate unnecessarylanguage and clarify the requirements

A notice published in 1974 10 containedguidelines for the citation of prior artby applicants Many of those guidelinesare repeated or superseded by sectsect 197through 199 In order to allow appli-cants attorneys and agents time to ad-just their procedures to comply with therequirements for prior art statementsthe effective date of sectsect 197 through 199will be July 11977 Until these new sec-tions become effective applicants shouldcontinue to follow the 1974 guidelinesissuance of a revised notice to take effectJuly 1 1977 is under study

A survey conducted by the Office in1976 concludes that many applicantshave not been citing prior art to theOffice It Is hoped that with the duty

Eg FrmmA nmxsrzs of September 91968 34 FR 14176 866 OG 1402 S 225594th Congress I 131(b)

-Notice of August 12 1974 924 OG 2-BMAamp Patent Trademark and Copyright

JournA No 301 October 28 1976 page D-I

of disclosure expressly set forth in Z 156applicants will perceive that It Is to theiradvantage to use the procedures ofsectsect 197 through 199

Section 151 is amended by designatingthe existing rule as sect 1511a) and addingnew sect 151(b) which contains a referenceto sectsect 197 through 199

FOiErIGri IAGUAGE OATES

Amended sect 152 and new sect 169 areadopted as proposed

Section 169 requires that oaths anddeclarations be in a language which isunderstood by the individual making theoath or declaration Le a language whichthe individual comprehends If the In-dividual comprehends the English lan-guage he must use It If the individualcannot comprehend the English lan-guage any oath or declaration must bein a language which the individual cancomprehend If an Individual uses a lan-guage other than English for an oath ordeclaration the oath or declaration mustinclude a statement that the individualunderstands the content of any docu-ments to which the oath or declaationrelates I the documents are in a lan-guage the individual cannot comprehendthe documents may be explained to himso that he is able to understand them

The Office will provide approved trans-lations for as many of the oath or decla-ration forms which appear in Part 3 ofTitle 37 of the Code of Federal Regula-tions as practicable and in as many lIn-guages as practicable probably using aside-by-side Englishforeign languageformat The availability of the foreignlanguage forms will be announced in theOfficial Gazette at a later date

The change in sect 152 providing for anexception to the requirement that oathsand declarations be In the English lan-guage is necessitated by the adoption ofsect 169

Although very few persons opposedsectsect 152 and 169 several suggested thatthe philosophy behind the change be ex-tended to the specification requiring thespecification to be in a language whichthe applicant understands accompaniedby an English translation Tis sugges-tion was not considered feasible becauseof the obvious burdens on the applicantand the danger to the applicant and thepublic if the translation Is not literallycorrect Also If a large number of appli-cations were filed in a foreign languagethere would be significant administrativeburdens on the Office Attention is di-rected to the Manual of Patent Examin-ing Procedure sect 6081 which permitsnon-English language applications to befiled in certain limited circumstances

Other suggested modifications of theproposed rule included (1) using anEnglish language oath or declarationwith one additional clause in a languageunderstood by the person making theoath or declaration the clause statingthat the person understands all the doc-uments to which the oath or declarationrelates and (2) extending the twomonth grace period for filing an Englshtranslation of an oath or declarationfiled under sect 165

After due consideration suggestion (1)was believed not to accomplish the ob-Jectives of the rule aswell as the adoptedrule Suggestion (2) wouldcause unsatis-factory delays in the initial processing ofapplications

D)EcsSmNs 4MD FMES MAIM PuErIc

Section 114(d) makes more explicitthe conditions under which significantdecisions of the Patent and TrademarkOffice will be made available to the pub-lie and Includes reference to decisionsof the Board of Patent Interferences inaddition to decisions of the Board of Air-peals and the Commissioner

A large majority of the comments re-ceived were favorable Several comnen-tators felt that more decisions would bemade available as a result of the pro-posed section and that it would assist inpublicizing aspects of Office procedurewhich may not have been available pre-viously

Some negative comments were basedon the view that the Freedom of Infor-mation Act required all decisions of theOffice to be made publicly available Agreater number of those opposing theproposed section however felt that ap-plicants should have an absolute right tohave their applications maintained inconfidence and that no informationshould be made public without specificauthorization from them One commen-tator felt that rulemaking on this sub-ject should be deferred until currentlypending litigation I under the Freedomof Information Act was finally resolved

The section as adopted is applicable todecisions deemed by the Commissionerto involve an Interpretation of patentlaws or regulations that would be of sig-nificant precedent value where such de-cisions are contained in either pendingor abandoned applications or in inter-ference files not otherwise open to thepublic It is applicable whether or notthe decision Is a final decision of thePatent and Trademark Office

The parenthetical phrase in the firstrentence of the proposed section whichcited other provisions of the rules underwhich decisions are open to public in-spection is deleted as unneces-ary andpozibly confusing Also In view ofseveral comments received the period oftime during Wch an applicant or partyin Interest may object to having a de-cision made public Is extended from onemonth to two months At least twentydays Is given to request reconsiderationand seek court review before a decisionIs made public over an objection-

Section 114(d) is considered to place aduty on the Patent and Trademark Officeto Identify significant decisions and totake the steps necessary to Inform thepublic of such decisions by publicationof such decisions in whole or in part ItIs anticipated however that no morethan a few dozen decisions per year wibe deemed of sufficient importance towarrant publication under the authorityof this section

= 5 IUSC 552= Zror-T v Gottsdcho7 Slip Oplnlorn No 74-

1365 (DC Cir October 21 1M7C)


391

of the propOsal and the p3tentability brief proposed elsewhere The name has been changed to reflect a change in the requirements of sect 198(30) Unlike the

proposed version of this paragraph hich called for an explanation of why the claimed invention is believed patentshyable over the cited art the paragraph as adopted calls only for a concise egtshyplanation of the relevance of each listed

middot item This may be nothing more than identification middotof the particular figure or paragraph of the patent or publication which has some relation to the claimed invention It might be a simple statement pointing to similarities beween the item of priorart and the claimed invention It is p~ible but not necessary to disshycuss diffelences between the prior art and the claims It is thought that the

explanation of relevance ill be essentishyally as useful to the examiner as the formerly proposed eq)lanation of patentability and should be significantly less burdensome for the applicant to prepare

Section 198 requires a copy of each patent or JUblication cited including Us patents to accompany the prior art statement_ Severalmiddotcomments questioned

- the need for burdening the applicant to sUpply copies of materials that are presshyent in the OfficeS files However subshystantial time and effort often is needed to locate a document in the Officemiddots files Since the person submitting the prior art statement generally has available a copy of the item being cited it is believed that expense andeffort can be mininilzed by having that person supply the copy

in all cases Consideration has been given to proposals to allow the applicant to submit an order for copies of the patents along with his statement instead of ac-

middot tually submitting copies This mIl be middot further ~died but tltl date no Way has been found to assure that the copies will be available to the examiner by the first action unless the applicant submits them with the prior art statement

Other changes to sectsect 197 through 199 from the proposal eliminate unnecessary language and clarify the requirements

A notice published in 1974 bull contained guidelines for the citation of prior art by applicants Many of those guidelines are repeated or superseded by sectsect 197 through 199 In order to anow applishycants attorneys and agents time to adshyjust their procedn--e5 to comply with the requirements for prior art statements the effective date of ssect 197 through 199

middot will be July I 1977 Untn these new secshytions become effective applicants should continue to follow the 1974 guidelines Issuance of a revised notice to take effect

middot July 1 1977 is under study A survey conducted by the Office in

1976 concludes that many applicants have not been citing prior art to the Officeu It is hoped that with the duty

Eg FlDEIIU REGlSTE of SepteJnber 9 1968 34 FR 14176 866 OG 1402 S 2255 94th Congress ~ 131(b)

middotNotIce at August 12 1974926 OG 2-n 13UAs Patent Trodemark and C~pyrlght J~ No SOl October 28 1976 page D-l


of disclosure copreSly set forth in ~ l5fl applicants will perceive that it b to their advantage to use the procedure of sectsect 197 through 199

Section 1511s amended by desiglUlting the existing rule as sect 1511al and adding new sect I5Hb) which contains a reIerence to sectsect 197 through 199

FOIlEIGI L-uGl1AGE Otms Amended sect 152 and new sect 1(9 arc

adopted as proposed Section 169 requires that oaths and

declarations be in a lansunse which is understood by the individual makincr the oath or declaration Le a language which the individual comprehends I the inshydioidual comprehends the Eng1Jsh lanshyguage he must use It I the indhidunl cannot comprehend the Eng1Jsh lrulshygunge any Qath or declaration must be in a language which the indivIdual can comprehend I an individual uses a lanshyguage other than English for an roth or declaration the oath or declamtion must include a statement that the individual understands the content of any docushyments to which the oath or decInmtion relate If the documents nre in a lrulshyguage the Indlvldunl cannot ~mprehend the documents may be e-plained to him so that he is able to undelStand them

The Office will provIde approved transshylations for as mnny of the oath or declashyration Iorms which appear in part 3 of TiUe 37 of the Code of Federal Regulashytions as practicable and in as many lrulshyguages as practicable probably usIng a side-by-side Engllshforeirrn language format The availabWty of the orelGIl language forms will be announced In the Official Gazette at a later date

The change in sect 152 prOlidins lor an exception to the requirement that oaUls and declarations be in the Engllsh lanshyguage is necessItated by the adoption of sect 169

Although very few persons oppooed sect sect 152 and 169 severn sur-geted that the philosophy behind the ch311~e be exshytended to the specification requ1rIlljJ the specification to be in Il language which the applicant understonds nccomJYUlled by an English translation Tais suzsesshytion was not considered leasible- because of the obvious burdens on the npplIcant and the danger to the nppllcnnt and the public if the trnnslaUon b not lIterolly correct~ AlsltI if a large number of applishycations were filed in n foreign language there would besignillcnnt nclm1nistrntie burdens on the Office Attention is dishyrected tltl the Manual of Patent Exflminshying Procedure sect 6081 whIch permits non-English language applicatioIl to be filed in certain llmlted cireumstarues

Other suggested modificaUons of the proposed rule included (1) using an English langunge oath or declarntlon with one additional clause in a language understood by the person mok1ng the oath or declaration the clause stating that the person understands all the docshyuments to which the oath ordeclaration relates and (2) extending the two month grnee perIod lor fi1hlg an English translation of an oath or declarntion filed under sect 165

S591

After due consideratioD SUggestion n) WIl5 belIeved not to accomplish the obshyjectives o the rule asweU as the adopted rule Suggestion (2) wouldcanseunsatrsshyoctory delays in the initial precessing of applications

DECISIons AIm FnEs lampm Pmuc

Section 114td) ma1es more explicit the conditions under which significant decisions of the Patelt and Trademark Office will be made aniIable to the pubshylIc and includes reference to decisfons of the Brord of Patent Interferences in addition to decisions of the Boord o lt1shypeals and the Commicsioner

A large majority o the comments reshyceived ere favorable SeeraI commenshytators felt that more decisions mud be made available as a result of the proshyPOCed section and that it wonId assb--t in public1zIng aspects of Office procedure which may not have been amilabIe preshyiousIy

ampgtme negative comments were based on the vIew that the Freedom o Inforshynmtion Act tt required all decisions of the Office to be made publicly available A greater number of those opposing the proplzed section hCitlner felt that apshyplicants shonId have an absolute tight fo have their applications maintained in confidence and that no information should be nmde public without specific authorization from them One COlImlenshytaror felt that ruIemaking on t1rls subshyject should be deferred until currently pendin litigation under the Freedom of Information Act was finallp- resoIed

Tne section as adopted is applicabe to decisions deemed tw the ColllIlilisioner to inyolmiddote an interpretation of pztent laws or reGUIations that wonId be of sigshynificant precedent mIue where suih deshycisions nre contruned in either pending or abandoned applications or in intershyference files not otherwfse open ro the publIc It is applicable whether or middotnot the decIJon is a final decLion of tn Patent and Dademnrk Office

The parenthetical phrase In the first centence or the propoced section whlch cited other proisions of the rules under whIch decisions are open to pUblfc inshyspectIon Js deleted cs unnecesoary no pozsibly contusing Also in view of severnl comments reecled the period 0 time durin whIch m1 applicant or ~ in interet may object to having a deshycIsJon mnde public is extended from one month to two month At least twenty da~S is given to request reconsideration and seek court review before a decisiol Js mnde public over an objection_

Section 114(d) is considered to place a duty on the Patent ond Trademark Office to fdentliy significant decisions and to bke the steps nec~ to inform the public of such decisions by publication of such decisions in whole or in pm It b anticipated ho ever that no more than a few dozen deciofons per gear will be deemed of sufficIent importance to warrant publIcation under theauthority -of this cectfon

gt= Ii Usc 552-uITOT$V Gott3cliaIl Slip Oplrdunlo 74-

1365 (DC CIr October 211S76)

FEDERAL REGISTER VOL 42 NO 19-fIlIDAY JANUARY 20 1977


CL_McCune
Highlight

Amended sect 114(b) allows public in-spection of abandoned applications re-ferred to in defensive publications Thecomments received on the proposedamendment on this topic in 1974 ex-pressed no opposition and the proposal isadopted without change

The amendment Is intended to en-courage use of the defensive publicationprogram provided under sect 1139 The ob-jective of that program is to make avail-able to the public the technical dis-closure of applications in which theowner prefers to publish an abstract inlieu of obtaining an examination Exist-Ing sectsect 111(b) and 1139 open the com-plete defensive publication applicationto Inspection by the general public uponpublication of the abstract With theamendment an abandoned applicationreferred to in a defensive publication ap-plication will likewise be open to publicinspection avoiding any need to repeatits contents In the defensive publicationapplication Thus public availability oft~e applications involved should be ofbenefit both to the applicant and thepublic

A suggestion was made that the sectionbe extended still further to include aban-doned applications referred to in foreignpatents This suggestion however goestoo far beyond the proposal that waspublished and has too uncertain an im-pact to be adopted at this time

Amended sect 111(a) provides earlieraccess to the file of an interference whichinvolved a patent or an application onwhich a patent has issued All commentsthat were submitted on the 1974 proposalon this topic were favorable and twocommentators felt the proposal should beextended further The proposal is beingadopted without change

Under present practice access to thefile of an interference is not permitteduntil judicial review of the decision oftheBoard of Patent Interferences hasbeen exhausted The amended sectionallows access to the file after final deci-sion of the Board of Patent Interfer-ences if that decision is an award ofpriority as to all parties It is believedthat such earlier access will be of benefitto members ofthe public by makingavailable information relevant to the is-suance of the patent whether or not theinterference decision is still being ad-judicated

PATENT APPEALS

Section 1194 clarifies the circum-stances in which oral hearings shouldbe requested provides for oral argu-ments by or on behalf of examiners incertain appeals and reduces the timepermitted for oral arguments

Comments relating to this sectionwere favorable by very substantialmajority although there were severalreservations to the effect that-sect 1194(a)tended to discourage or downgrade oralarguments Participation by examinerswas considered to be desirable not onlyfrom the standpoint of improving theoverall presentation of the argumentparticularly in complex cases but also


for the educational and experience ben-efits to the examiners themselves

The only opposition to the section wasbased on the feeling that oral hearingswould be discouraged The rule is in-tended to discourage oral hearings onlyto the same extent as the Offices 1975Official Gazette notice on the subjectV1Section 1194(a) indicates that oralhearings should not be requested as amatter of coursein every appeal butonly in those circumstances where theappellant feels that such a hearing willbe of material assistance to the properpresentation of the appeal The sectionexpressly provides that equal considera-tion will be accorded in deciding all ap-peals whether or not an oral hearing isheld

In appeals where the appellant has re-quested an oral hearing sect 1194(b) pro-vides for oral argument by or on behalfoi the primary examiner if such argu-ment is considered to be helpful byeither the primary examiner or theBoard This provision incorporates thepresent practice of permitting examinersto present an oral argument befbre theBoards It gives the Board additionaldiscretionary authority to request pres-entation of an oral argument by or onbehalf of the examiner to ensure thatall issues are fully and accurately pre-sented

Section 1194(c) provides as does ex-isting sect 1194 that appeals will be as-gigned for consideration and decisionwithout an oral hearing where none hasbeen requested by the appellant Wherean oral hearing has been requested aday of hearing will be set and both ap-pellant and the primary examiner willbe notified A provision for notice to theexaminer is added to the proposed ver-sion Additionally sect 1194(c) reflects thepresent practice of limiting oral argu-ment on behalf of the appellant totwenty minutes= The time permitted forargument by the examiner has beenshortened from twenty minutes as pro-posed to fifteen minutes The examinerunlike the appellant will not ordinarilyneed time to present the facts of thecase or for rebuttal

In any appeal where oral argument isto be presented by or on behalf of theprimary examiner the appellant will begiven due notice of that fact

Proposed sect 1196(b) would have au-thorized the Board of Appeals to rejectallowed claims in cases before it when-ever the Board had knowledge ofgrounds for so doing

While a majority of those commentingon this section favored in principle theconcept of allowing the Board to havethis right significant concern was voicedthat there was no statutory authorityfor the Board to actually reject allowedclaims Further the question of properauthority for judicial review of such ac-tion by the Board was a matter of con-cern Other reasons advanced in opposi-

- See notice of March 20 1975 933 OG1010

15AUP 5 120910 See notice of March 20 1975 933 OG

1010

tion to the section were that applicantswould be inhibited from appealing bythe riskl of having allowed claims re-jected and that the proposal would cre-ate a higher presumption of validity incases reviewed by the Board A signifi-cant number commented that It wouldbe more appropriate for the Board to re-mand the case to the primary examinerfor consideration of the grounds raisedby the Board This would afford the ap-plicant an opportunity to demonstratethe patentability of the claims and wouldremove any question as to statutoryauthority

In view of the comments received ex-isting sect 1196(b) will not be modified buta new sect 1196(d) is added providing ex-press authority for the Board of Appealsto include in Its decision a statement ofany grounds for rejecting any allowedclaim that It believes should be con-sidered by the primary examiner Section1196(d) provides that the Board mayremand the case to the examiner forsuch consideration and that the appli-cant shall have an opportunity to rospend to the grounds set forth by theBoard prior to consideration by the ex-aminer If the previously allowed claimsare rejected by the examiner the rejec-tion may be appealed to the Board

The new section further provides that6 decision of the Board which Includes aremand will not be considered as a finaldecision in the case but that the Boardfollowing conclusion of the jroceedlngsbefore the primary examiner will eitheradopt its earlier decision as final or willrender a new decision based on all ap-pealed claims as it considers appro-priate In either case final action by theBoard will give rise to the existing alter-natives available to an appellant follow-ing a decision by the Board

In situations wh6re the primary ex-aminer concludes after consideration ofall the evidence and argument that theremanded claims should be allowed thenew rule dealing with reasons for allow-ance (Q 1109) provides an appropriatemechanism for him to explain on therecord his reasoning for coming to thisconclusion notwithstanding the groundsset forth by the Board In its statement

Promulgation of new sect 1190(d) doesnot affect the Boards existing authorityto remand a case to the primary ex-aminer without rendering a decision inappropriate circumstances Section1196(d) is not intended as an instruc-tion to the Board to reexamine everyallowed claim in every appealed applica-tion It Is rather intended to give theBoard express authority to acnt when Itbecomes apparent during the considera-tion of rejected claims that one or mereallowed claims may be subject to rejec-tion on either the same or on differentgrounds from those applied against therejected claims

REASONS roR A LOvANCE

New sect 1109 is Intended to emphasizeand formalize the examiners authorityto state his reasoning for allowing aclaim or claims The authority is discre-tionary with the examiner and Is only to

FEDERAL REGISTER VOL 42 1O 19-FRIDAY JANUARY 28 1977

5592 RULES AND REGULATIONS

Amended sect 1l4(b) allows public infor the educational and experience benshyspection of abandoned applications re- efim to the examiners themselves ferrecl to in defensive publications The ~e only opposition to the section was comments received o~ the proposed based on the feeling that oral hearings amendment on this topiC in 1974 ex- would be discouraged The rule is inshypressed no opposition and the proposal is tended to discourage oral hearings only adopted without change to the same extent as the Offices 1975

The amendment is intended to en- Official Gazette notice on the subject cOlllage use of the defensive publication Section 1194a) indicates that oral program provided under sect 1139 The ob- hearings should not be requested as a jective of that program is to make avail- matter of courserin every appeal but able to the public the technical dis- only in those circumstances where the closure of applications in which the appellant feels that such a hearing will owner prefers to publish an abstract in be of material assistance to the proper lieu of obtaining an examination Extst- presentation of the appeal The section ing sectsect 111ltb) and 1139 open the com- expressly provides that equal considerashyplete defensive publication application tion will be accorded in deciding all apshyto inspection by the general public upon peals whether or not an oral hearing is publication of the abstract With the held amendment an abandoned applicatIon In appeals where the appellant has reshyreferred to in a defensive publication ap- quested an oral hearing sect 1194(b) proshyplicatlon will likewise be open to public vides for oral argument by or on behalf inspection avoiding any need to repeat o~ the primary examiner if such argushyits contents in the defensive publication ment is considered to be helpful by application Thus public aVailability of either the primary examiner or the ~e applications involved should be of Boarel This provision incorPorates the benefit both to the applicant and the present practice of permitting effiminers public to present an oral -argument before the

A suggestion~was made that the section Board It gives the Board additional be extended still further to include aban- discretionary authority to request presshy

doned applications referred to in foreign entation of an oral argument by or on patents This suggestion however goes behalf of the examiner to ensure that too far beyond the proposal that was all issues are fully and accurately preshypublished and has too uncertain an im- sented pact to be adopted at this time Section 1194c) provides as does ex-

Amended sect 111lta) provides earlier isting sect 1194 that appeals will be as- access to the file of an interference which signed for consideration and decision involved a patent or an application on without an oral hearing where none has which a lgtatent has issued All comments been requested by the appellant Where that were submitted on the 1974 proposal an oral hearing has been requested a on this topic were favorable and two day of hearing will be set and both apshycommentators felt the proposal should be pellan~ and the lgtImary examiIler will extended further The proposal is being be notified A prOVISion for notice to the adopted without change examiner is added to the proposed vershy Under present practi~e access to the sion Additionally sect 1194c) reflects the

file of an interference is not permitted present practice of liIcentting oral argushyuntil judicial review of the decision of ment ~gtn be~ of the appellant to the Board of Patent Interferences has twenty mmutes The time permitted for been exhausted The amended section argument by the exa~er has been allows access to the file after final decl- shortened from tw~nty mmutes as proshysion of the Board of Patent Interfer- posed to fifteen mmutes The examiner ences if that decision is an award of unlike the appellant will not ordinarily priority as to all parties It is believed- need time to present the facts of the that such earlier access will be of benefit case or for rebuttal to members of the public by making In any appeal where oral argum~nt is available information relevant to the fs- to be presenteI by or on behalf of the suance of the patent whether or not the primary exammer the appellant will be interference decision is still being ad- given due notIce of that fact judicated Pt0posed sect 1196b) would have au-

PATENT ApPEALS thonzed the Board of Appeals to reject allowed claims in cases before it when-

Section 1194 clarifies the circum- ever the Board had knowledge of stances in which oral hearings should grounds for so doing be requested provides for oral argu- While a majority of those commenting ments by or on behalf of examfuers in on this section favored in principle the certain appeals and reduces the time concept of allowing the Board to have permitted for oral arguments this right significant concern was voiced

Comments relating to this section thatthere was no statutory authority were favorable by a very substantial for the Board to actually reject allowed majority although there were several claims Further the question of proper reservations to the effect that-sect 1194a) authority for judicial review of such acshytended to discourage Or downgrade oral tion by middotthe Board was a matter of conshyarguments Participation by examiners cern Other reasons advanced in opposi-was considered to be desirable not only U See notice or March 20 1975 933 OG from the standpoint of improving the 1010 bullbull overall presentation of the argument MPEP sect 1209 i ul See notice or March 20 1975 933 OG pal c arly in complex ~ases but also 1010 _

tion to the section were that applicants would be inhibited from appealing by the risE of having allowed claims reshyjected and that the proPOSal would crc ate a higher presumption of validity in cases reviewed by the Board A siffOiflshycant number commented th(~t it would be more appropriate for the Board to re mand the case to the primary examiner for consideration of the grounds raised by the Board This would afford tho apshyplicant an opportunity to demonstrate the patentability of the claims and would remove any question as to statutory authority

In view of the comments received oxshyfsting sect 1196(b) will not be mod1fled but a new sect 1196d) is added providing exshypress authOrity for the Board of Appeals to include in its decislon a statement of any grounds for rejecting any allowed claim that it believes shOUld be con sidered by the primary examiner Section 1196(d) provides that the Board may remand the case to the examiner for such consideration and that the applishycant shall have an opportunity to ro-o spond to the grounds set forth by tho Board prior to consideration by tho ex aminer If the previously allowed claims are rejected by the examiner the rejeo tion may be appealed to the Board

The new section further provides that a decision of the Board which inoludes a remand wllI not be considered as n 1lnal decision in the case but that tho Board following conclusion of the proceedinfi~ before the primary examiner will either adopt its earlier decision as flnal or will render a new decision based on all apshypealed claims as it considers appro priate In either case final action by thO Board will give rise to the existing alter ~atives available to an appellant followshymg a decision by the Board

In situations where the primary exshyaminer concludes after consideration of all the evidence and argument thnt the remanded claims shOuld be allowed tho new rule dealing with reasons for allow ance (sect 1109) provides an appropriate mechanism for him to explain on tho record his reasoning for coming to thIs conclUSion notWithstanding the grounds set forth by the Board in its statement

Promulgation of new sect 1190(d) docs not affect the Boards existing authority to remand a case to the primary ex aminer without rendering t decision in appropriate circumstances Scotton 1196(d) is not intended as an instruoshytion to the Board to reexamine evory apowed claim in every appe(led applicashytIon It Is rather intended to give the Board express authority to act when it becomes apparent during the considera tion of rejected claims that one or more allowed claims may be subject to rejeoshytion on either the same or on difIercnt grounds from those applied against the r~Jected claims

REASONS FOR A~LOWANCE New sect 1109 is intended to emphasize

and formalize the examiners autho1lty to state his reasoning for allowing Il claim or claims The authorIty is discre tionary with the examiner and is only to

FEDERAL REGISTER VOL 42 ~O 19-FRIDAY JANUARY 28 1977

5592


AND REGULATIONS

be used when the record does not other-wise reveal the reasons for allowance

A-majority of the comments receivedfavored the rule as proposed because Itwould tend to provide courts and otherswho were reviewing the patent with aclearer record Those who opposed therule most often gave the reason that theexaminer might fail to state all the rea-sons or the strongest reasons why a claimwas allowed which could place unneces-sary limitations on the claims or createan estoppel in subsequent litigation orlicensing

To help insure that the examinersstatement of his reasoning in allowing aclaim-will not unnecessarily limit theclaims or create an estoppel a final sen-tence is added to the proposal whichstates -that failure of the applicant tocomment upon or rebut the examinersreasoning shall not give rise to anyimplication that the applicant agreeswith or acquiesces in the reasoning ofthe examiner

Several- commenters suggested thatstricter enforcement of sectsect 1111 and 1133would eliminate the need for a new ruleconcerning reasons for allowance Situa-tions exist however where a statementof reasons for allowance could be help-ful for example when an examiner with-draws a rejection for -reasons not sug-gested by the applicant when an appli-cant submits several arguments forallowing a claim and the examiner findsnot all of them persuasive when anexaminer allows a claim on the firstOffice action after citing very close priorart and when the examiner allows a

claim after remand from the Board ofAppeals (see new sect 1196(d))

The first sentence of the proposed ruleis changed to define more precisely thecircumstances in which an examiners-statement is appropriate as well as todefinemore precisely the content of thestatement The statement will includethe examiners reasoning The exam-iner may state his reasoning wheneverhe believes that the record of the prose-cution as a whole does not make clearhis reasons for allowing a claim orclaims

Several persons commented that therule should provide a procedure forappeal from the examiners statement ofhis reasoning The rule does permit ap-plicants to comment upon the exam-Iners reasoning If the applicant doesnot wish to comment he may reserve fora later proceeding without prejudiceany rebuttal

TE OF RULEs ADOPTED

After consideration of the commentsreceived and pursuant to the authoritycontained in sect 6 of Title 35 of the UnitedStates Code Part 1 of Title 37 of theCode of Federal Regulations is amendedas set forth below

1 Section 111 is revised to read asfollows

111 Files open to the public(a) After a patent has been issued

the specification drawings and all pa-pers relating to the case in the file of

the patent are open to Inspection by thegeneral public and copies may be ob-tained upon paying the fee therefor Af-ter an award of priority by the Boardof Patent Interferences as to all partiesthe file of any interference which in-volved a patent or an application onwhich a patent has issued Is similarlyopen to public inspection and procure-ment of copies See sect 227 for trademarkfiles

(b) All reissue applications and all ap-plications in which the Office has ac-cepted a request filed under sect 1139 andrelated papers in the application file areopen to inspection by the general publicand copies may be obtained upon payingthe fee therefor The fling of reissueapplications will be announced in theOfflcial Ga ette The announcement shallinclude at least the filing date reissueapplication and original patent numbers-title class and subclass name of the in-ventor name of the owner of recordname of the attorney or agent of recordand examining group to whichthe reissueapplication is assigned

2 In sect 114 paragraphs (b) and (d)are revised to read as followssect 114 Patent applications preserved in

secrecy S S S 0

(b) Except as provided in sect 111(b)abandoned applications are likewise notopen to public inspection except that ifan application referred to in a US pat-ent or in an application which s opento inspection pursuant to sect 1139 is aban-doned and is available it may be in-spected or copies obtained by any personon written request without notice to theapplicant Abandoned applications maybe destroyed after 20 years from theirfiling date except those to which par-ticular attention has been called andwhich have been marked for preserva-tion Abandoned applications will not bereturned

(d) Any decision of the Board of Ap-peals _or the Board of Patent Interfer-ences or any decision -of the Commis-sioner on petition not otherwise open topublic inspection shall be published ormade available for public inspection If(1) The Commissioner believes the deci-sion involves an interpretation of patentlaws or regulations that would be of Im-portant precedent value and (2) theapplicant or any party involved in theinterference does not within two monthsafter being notified of the intention tomake the decision public object in writ-ing on the ground that the decision dis-closes a trade secret or other confidentialinformation If a decision discloses suchinformation the applicant or party shallIdentify the deletions in the text of thedecision considered necessary to protectthe information If it is considered theentire decision must be withheld fromthe public to protect such informationthe applicant or party must explain whyApplicants or parties will be given timenot less than twenty days to requestreconsideration and seek court review be-fore any portions of decisions are made

5593

public over their objection See sect 227 fortrademark applications

3 Section 151 is revised to read asfollowssect 151 General requisites of an appli-

cation(a) Applications for patents must be

made to the Commissioner of Patentsand Trademarks A complete applicationcomprises

(1) A specification Including a claimor claims see sectsect 171 to 177

(2) An oath or declaration see sectsect 165and 168

(3) Drawings when necessary seesectsect 181 to 188

(4) The prescribed filing fee (See 35USC section 41 forfillng fees)

(b) Applicants are encouraged to filea prior art statement at the time of filingthe application or within three monthsthereafter See sectsect 197 through 199

4 In sect 152 paragraph (a) Is revisedto read as followssect 152 languagc paper writing mar-

gins(a) The specification and oath or dec-

laration must be In the English languageexcept as provided in sect 169 All paperswhich are to become a part of the per-manentrecordsf the Patent and Trade-mark Office must be legibly written orprinted In permanent ink-or its equiva-lent in quality All of the applicationpapers must be presented in a- Jormhaving sufficient clarity and contrast be-tween the paper and the writing or print-ing thereon to permit the production ofreadily legible copies in any number byuse of photographic electrostatic photo-offset and microfilming processes If thePapers are not of the required qualitysubstitute typewritten or printed papersof suitable quality may be required

5 Section 156 is revised to read asfollowssect 156 Duty of disclosure striking of

applications(a) A duty of candor and good faith

toward the Patent and Trademark Officerests on the inventor on each attorneyor agent who prepares or prosecutes theapplication and on every other-individualwho is substantively involved in the prep-aration or prosecution of the applicationand who is associated with the Inventorwith the assignee or with anyone towhom there Is an obligation to assignthe application All such individuals havea duty to disclose to the Office informa-tion they are aware of which i- materialto the examination of the applicationSuch information is material where thereis a substantial likelihood that a reason-able examiner would consider It impor-tant in deciding whether to allow theapplication to ksue as a patent The dutyis commensurate with the degree of in-volvement in the preparation or prosecu-tion of the application

(b) Disclosures pursuant to this sec-tion may be made to the Office throughan attorney or agent having responsi-bility for the preparation or prosecutionof the application or through an In-ventor who is acting in his own behalfDisclosure to such an attorney agent or


be used when the record does not othershywise reveal the reasons for allowance

A-majority of the comments received - favored the rule as proposed because it

would tend to provide courts and others who were reviewing the patent with a clearer record Those who opposed the rule most often gave the reason that the examiner might fail to state all the reashysons or the strongest reasons why a claim was allowed which could place unnecesshysary limitations on the claims or create an estoppel in subsequent litigation or licensing

To help insure that the _ examiners statement of his reasoning in allowing a claiiQ-will not unnecessarily limit the

c1aims or create an estoppel a final senshytence is added to the proposal which states that failure of the applicant to comment upon or rebut the examiners reasoning shall not give rise to any implication that the applicant agrees

with or acquiesces in the reasoning of tlie examiner

Several commenters suggested that stricter enforcement of sectsect 1111 and 1133 would eliminate the need for a new rule concerning reasons for allowance Situashytions exist however where a statement of reasons for allowance could be helpshyful for example when an examiner withshydraws a rejection for middotreasons not sugshygested by the applicant when an applishycant submits several arguments for allowing a claim and the examiner finds not all of theni persuasive when an eX8JIliDer allows a claim on the first Office action after citing Very close prior art and when the examiner allows a

claim after remand from the Board of Appeals (see new sect 1196(draquo

The first sentence of the proposed ~e is changed to define more precisely the circumstances in which an examinersshystatement is appropriate as well as to definemore precisely the content of the statement The statement will include the examiners reasoning The examshyiner may state his reasonmg whenever he believes that the record of the proseshycution as a whole does not make clear his reasons for allowing a claim or claims

Several persons commented that the rule should provide a procedure for appeal from the examiners statement of hiS reasoning The rule does permit apshyplicants to comment upon the emmshyiners reasoning If the applicant does not wish to comment he may reserve for a later proceeding without prejudice any rebuttal

TExT OF RULES ADO~TED

After consideration of the comments received and pursUant to the authority contained in sect 6 of Title 35 of the United states Code Part 1 of Title 37 of the Code of Federal Regulations is amended as set forth below

1 Section 111 is revised to read as follows sect 111 F~es open to the public (a) After a patent has been issued the SPeCification drawings and all pashypers relating to the case in the file of


the patent are open to inspecUon by the general public and copies may be obshytained upon paying the fee therefor Afshyter an award of priority by the Board of Patent Interferences as to nll parties the file of any interference which inshyvolved a patent or an appUcation on which a patent has issued is s1mllarly open to pubUc inspection and procureshyment of copies See sect 227 for trademark files

(b) All reissue appUcations and all apshyplications in which the Office has acshycepted a request filed under sect 1139 and related papers in the application file are open to inspection by the general pubUc and copies may be obtained upon paying the fee therefor The filing of reissue applications will be announced in the OfficiaZ Gazette The announcement shnll include at least the filing date reIssue application and original patent numbers title class and subclass nrune of the inshyventor name of the owner of r~rd name of the attorney or agent of record and examining group to whIch the rclssue application is nsslgned

2 In sect 114 paragraphs (b) and (d) are revised to read as follows sect 114 Potent opplicalioni presen od in

sccrcc) bull bull bull bull o

(b) Except as provided in sect 111ltb) abandoned applications arc likewise not open 10 pubUc inspection except that U an application referred to in a Us patshyent or 1n an application which is open to inspection pursuant to sect 1139 is abanshydoned and is available it may be inshyspected or copIes obta1ned by any person on written request wIthout notice to the applicant Abandoned applications may be destroyed after 20 years from their filing date e ccpt those to whioh parshyticular attention has been called and which have been marked for preservashytion Abandoned appUcatlons will not be returned bull bull bull bull

(d) Any decisIon of the Board of Apshypeals9r the Board of Patent Interfershyences or any decision -of the Commisshysioner on petition not otherwise open to public inspection shnll be published or made avallable for public Jnspeotion U (1) The Commissioner beHoves the decishysion involves an interpretation of patent laws or regulations that would be of imshyportant precedent value and (2) the applicant or any party involved in the interference does not within two months alter being notlfled of the intention to make the decision public object In writshying on the ground that the decision disshycloses a trade secret or other confidential information U a decision discloses such information the applicant or party shnll identify the deletions in the text of the decision considered necessary to protect the information U it is consIdered the entire decision must be withheld from the public to protect such information tlie applicant or party must etJ)lnin why Applicants or parties will be slven time not Jess than twenty days to request reconsideration and seek court review beshyfore any portions of decIsIons are made

5593

pubUc over their objection See sect 227 for trademark appUcations bull

3 Section 151 is revised to read as follows sect 151 General requisites or an applishy

cation (a) Applications for patents must be

made to the Commissioner of Patents and Trademarks A complete appUcation comprises

(1) A specification including a claim or claims see sectsect 111 to 177

(2) An oath or declaration see sectsect 165 andl68

(3) Drawings when necessary see sectsect 181 to 188

(4) Tne prescribed filing fee (See 35 USC section 41 forfiling fees)

(b) Applicants are encouraged to file a prior art statement at the time of filing the appUcation or within three months thereafter See sectsect 197 through 199

4 In sect 152 paragraph (a) is revised to read as follows sect 152 Language paper writing =_

SUl$

(a) The specification and oath or decshylaration must be In the English language except as provided in sect 169 All papers which are to become a part of the per_ manentrecordsoI the Patent and Tradeshymark Office must be legibly written or prInted In pennanent inkor Hs equivashylent in quality AIl of the appUcation papers must be presented in 2 lorm haing SUfficient cIarny and conttast beshytween the paper and the writing or printshying thereon to permit the production of readIly legible copIes in any number by use of photographic electrostatic photoshyo1lset and micro1lIming processes If he Papers are not of the required quality substitute typewritten or printed papers of suitable quality may be required

bull bull bull bull bull 5 Section 156 is reised to read as

follows sect 156 DUly or disclosure trikin~ of

npplications

(a) A duty of candor and good faith toward the Eatent and Trademark Office rests on the inventor on each attorney or agent who prepares or prosecutes the appUcation and on every othermiddotindividual who is substantively involved in the prepshyaration 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 appUcation All such individuals have a duty to disclose to the Office informashytion they are aware of which is material to the examination of the appUcation Such information is material where there is a substant1alUkel1hood that a reasonshyable examiner would consider it imporshytant in deciding whether to allow the appUcation to i~e as a patent The duty is commensurate with the degree of inshyvolvement in the preparation or prosecushytion of the appUcation

(b) Disclosures pursuant to this secshytion may be made to the Office through an attorney or agent having responsishybwty for the preparation or prosecution of the application or through an inshyventor who is acting in his own behalf Disclosure to such an attorney agent or

FEDERAL REGISTER VOL 42 NO 19-fJUDAY JANUARY ~8 1977


AND REGULATIONS

inventor shall satisfy the duty with re- prescribed in sect 168 See sect 1153 for de-spect to the information disclosed of sign cases and sect 1162 for plant casesany other individual Such an attorney agent or inventor has no duty to trans- 8 Section 169 is added to read asmit information which is not material to followsthe examination of the application

(c) Any application may be stricken sect 169 Foreign language oaths and dec-from the files if (1) Sign6d or sworn larationsto in blank or without actual inspection (a) Whenever an individual making amby the applicant or oath or declaration cannot understand

(2) Altered or partly filled in after English the oath or declaration mtist bebeing signed or sworn to in a language that such individual can

(d) An application shall be stricken understand and shall state that such in-from the files if it is established by clear dividual understands the content of anyand convincing evidence that any fraud documents to which the oath or declara-was practiced or attempted on the Office tion relatesin connection with it or that there was (b) Unless the text of any oath orany violation of the duty of disclosure declaration in a language other thanthrough bad faith or gross negligence English is a form provided or approved

6 In the heading preceding 1 165 by the Patent and Trademark Ofice itSTATEAMNTis deleted must be accompanied by a verified Eng-

7 In sect 165 the heading and para- lish translation except that in the casegraph (a) are revised to read as follows of an oath or declaration filed undersect 165 Oath or declaration sect 165 the translation may be filed in the

(a) (1) The applicant if the inventor Office no later than two months after themust state that he verily believes himself filing dateto be theoriginal and first inventor or 9 The heading PRIOR ART STATE-discoverer of the process machine man- MENT Is added following sect 195 andufacture composition of matter -or im- lreceding sect 197provement thereof for which he solicits 10 Section 197 is added to read asa patent that he does not know and followsdoes not believe that the same was ever sect 197 Filing of prior art statementknown or used in the United States be- (a) As a means of complying withfore his Invention or discovery thereof the duty of disclosure set forth in sect 156and shall state of what country he Is a applicants are encouraged to file a priorcitizen and where he resides and whether art statement at- the time of filing thehe is a sole or joint Inventor of the inapplication or within three monthsvention claimed in his application In thereafter The statement may either beevery original application the applicant separate from the specification or maymust distinctly state that to the best of _ be incororated thereinhis knowledge and belief the Invention (b) The statement shall serve as ahas not been in public use or on sale In representation that the prior art listedthe United States more than one year therein includes in the opinion of theprior to his application or patented or person filing it the closest prior artdescribed In any printed publication in of which that person is aware the state-any country before his invention or more ment shall not be construed as a repre-than one year prior to his application or sentation that a search has been madepatented or made the subject of an in- or that no better art existsventers certificate in any foreign coun-try prior to the date of his application fL Section 198 Is added to read ason an application filed by himself or his followslegal representatives or assigns more sect 198 Content of prior art statementthan twelve months prior to his appli- (a) Any statement filed under sect 197cation in this country He must acknowl- or 1199 shall Include (1) A listing ofedge a duty to disclose Information he is patents publications or other Informa-aware of which i- material to the exami- aet pbiaonorohrnom-aare-of whichpIlimateito He atate tion and (2) a concise explanation of thenation o the application He shall state relevance of each listed item The- state-whetherornofanyapplicatienforpatent ment shall be accompanied by a copyor inventors certificate on the same in- of each listed patent or publication orvention has been filed in any foreign other item of information in writtencountry either by himself or his legal form or of at least the portions thereofrepresentatives or assigns If any such considered by the person filing the state-application has been filed the applicant mere be p ronh

-shall name the country in which the ment to be pertinentearliest such application was filed and (b) When two or more patents orshall give the day month and year of Its publications considered material are-filing he shall alsb identify by country substantially Identical a copy of a rep-and by day month and year of filing resetitative one may be included in theevery such foreign application filed more statement and others merely listed Athan twelve months before the filing of translation of the pertinent portions ofthe application in this country foreign language patents or publications

(2) This statement (I) must be sub- considered material should be transmit-scribed to by the applicant and (ii) must ted if an existing translation is readilyeither (a) be sworn to (or affirmed) as availableto the applicantprovided in sect 166 or (b) include the 12 Section 199 Is added to read aspersonal declaration of the applicant as follows

sect 109 Updating of prior art statementIf prior to issuance of a patent an

applicant pursuant to his duty of disclo-sure under sect 156 wishes to bring to theattention of the Office additional pat-ents publications or other informationnot previously submitted the additionalinformation should be submitted to theOffice with reasonable promptness Itmay be included in a supplemental priorart statement or may be incorporatedinto other communications to be con-sidered by the examiner Any transmit-tal of additional Information shall beaccompanied by explanations of rele-vance and by copies in accordance withthe requirements of sect 198

13 Section 1109 is added to read asfollows

sect 1109 Reasons for allowauceIf the examiner believes that the rec-

ord of the prosecution as a whole does notmake clear his reasons for allowing aclaim or claims the examiner may sotforth such reasoning This shall be In-corporated Into an Office action reject-Ing other claims of the application orbe the subject of a separate communi-cation to the applicant The applicantmay file a statement commenting on thoreasons for allowance within such tim0as may be specified by the examinerFailure to file such a statement shallnot give rise to any Implication thatthe applicant agrees with or acquiesceiin the reasoning of the examiner

14 In sect 1175 paragraph (a) Is revisedto read as followssect 1175 Ressue oath or dcclaration

(a) Applicants for reissue In additionto complying With the requirementa ofthe first sentence of sect 165 must also filewith their applications a statement underoath or declaration as follows

(1) When the applicant verily believesthe original patent to be wholly or partlyinoperative or invalid stating such beliefand the reasons why

(2) When It is claimed that suchpatent Is so inoperative or invalid byreason of a defective specification ordrawing particularly specifying suchdefects

(3) When it is claimed that suchpatent is inoperative or invalid by rea-son of the patentee claiming more or les4than he had a right to claim In thepatent distinctly specifying the excessor insufficiency in the claims

(4) When the applicant Is aware ofprior art or other information relevantto patentability not previously con-sidered by the Office which might causethe examiner to deem the original patentwholly or partly inoperative or Invalidparticularly specifying such prior art orother Information and requesting thatif the examiner so deems the applicantbe permitted to amend the patent andbe granted a reissue patent

(5) Particularly specifying the errorsor what might be deemed to be errorsrelied upon and how they arose oroccurred

FEDERAL REGISTER VOL 42 NO 19-RIDAY JANUARY 28 1977


inventor shall satisfy the duty with re- prescribed in sect 168 Se~ sect 1153 for de- sect 199 Updating of prior art statement spect to the information disclosed of sign cases and sect 1162 f~r plant cases If prior to issuance of n patent an any other individual Such an attorney bull bull applicant pursuant to his duty of dlsclo agent or inventor has no duty to trans- 8 Section 169 is added to read as sure under ti 156 wishes to bring to tho mit information which is not material to follows attention of the Office additional pat the examination of the application ents publications or other information

(c) Any application may be stricken sect 169 Foreign language oaths and dec- not previously submitted the additionnl from the files if (1) Signed or sworn Iarations information should be submitted to tho to in blank or without actual inspection (a) Whenever an individual making all Office with reasonable promptness It by the applicant or oath or declaration cannot understand may be included in a supplemental prior

(2) Altered or partly filled in after English the oath or declaration mUst be art statement or may be incorporated being signed or sworn to _ in a language that such individual can into other communications to be con

(d) An application shall be stricken Uhderstand and shall state that such in- sidered by the examiner Any transmit from the files if it is established by clear dividual understands the content of any tal of additional information shall be and convincing evidence that any fraud documents to which the oath or declara- accOmpanied by explanations of reloshywas practiced or attempted on the Office tion relates vance and by copies in accordance with in connection with it or that there was (b) Unless the text of any oath or the ~equirements of i 198 any violation of the duty of disclosure declaration in a language other than 13 Section 1109 is added to read as through bad faith or gross negligence English is a form provided or approved follOWS

6 In the heading preceding sect165 -by the Patent and Trademark Office it STATEMENT~-is deleted must be accompanied by a verified Eng- sect 1109 Reasolls for allowancl

7 In sect 165 the heading and para- lish translation except that in the case If the examiner believes that the reoshygraph (a) are revised to read as follows of an oath or declaration filed under ord of the prosecution as a whole does not sect 165 Oath or declaration sect 165 the translation may be filed iIi the make clear his reasons for allowing n

Office no later than two months after the I im I im th miner my sot (a) (1) The applicant if the inventor c a or cas e ex tate th t h riI b 11 hims If filing date forth such reasoning This shall be in-

must s a eve y e eves e 9 The neading PRIOR ART STATE- corporated into an Office action reJect-to be the orlginal and first inventor or MENT is added following sect 195 and oth I im r th Ii ti discoverer of the process machine man- ing or cas 0 e opp ca on or Ufnnture composition of matteror 1m- nreceding sect 197 be the subject of a separote communi-

10 Section 197 is added to read as ti - the plicnnt The applicnnt provement thereOf for which he solicits ca on LV ap a patent that he does not know and follows ma1 file a statement commenting on tho does not believe that the same was ev~ sect 197 Filing of prior art statemcnt reasons for allowance Within such timo known or used in the United states be- (a) AJ a means of complying with as may be specified by the examiner ore his invention or dlscovlgt~ thereof Failure to file such a statement shall - the duty of disclosure set forth in sect 156 not give rise to any implication thab and shall state of what country he is a applicants are encouraged to file a prior the applicant agrees with or acquiesCe3 cItizen and where he resides and whether art statement at- the time of filing the in he is a sole or joint inventor of the inapplication or within three months - in the reasoning of the exam er vention claimed in his application In thereafter The statement may either be 14 In sect 1175 paragraph (a) Is revised every original application the applicant separate from the specification or may to read as iollows~ must distinctly state that to the best of - be incorPorated there~ 1175 R - I d I bull his knowledge and belief the ~vention (b) The statementshall serve as a sect bull ClSsnC out lor CC IIraholl has not been in public use or on sale in representation that the prior art listed (a) Applicants for reissue in addition the United states more than one year therein includes in the opinion of the to complying With the requirementt of prior to his application or patented or person filing it the- closest prior art the first sentence of sect 165 must also 1110 descrIbed in any printed publication in of which that person is aware the state- with their applications a statement under any country before his invention or more ment shallnot be construed as a repre- oath or declaration as follows than one year prior to his application or sentation that a search has been made (1) When the applicant verily beliovet patented or made the subject of an in- or that no better art exists the original patent to be wholly or partly ventors certificate in any foreign coun- 11 Section 198 is added to read as inoperative or invalid statinrr such belief try prior to the date of his application and the reasons why on an application filed by himself or his follows (2) When it is claimed that such legal representatives or assigns more Ii 198 Content-of prior art statemcllt patent is so inoperative or invlllid by than twelve months prior to his appli (al Ally statement filed under sect197 reason of a defective specificatIon or cation in this- country He must acknowl- or ~ 199 shall include~ U) A listing of drawing particularly specifying such edge a duty to disclose information he is patents publications or other informa- defects awareofwhichlsmatepattotheexami- tlon-and2gtaconciseexplanationofthe (3) When it is claimed that such nation of the application He shall- state relevance of each listed item The-state- patent is inoperative or invalid by reashywhetherornoampanyapplicatienforpatent ment shall be accompanied by a copy sonotthepatenteeclaimingmoreorlejiS or inventors certificate on the same in- of each llst-ed patent or publication or than he had a right to claim in tho vention has been filed in all1 foreign other item of information in written patent distinctly specifying the excess country eitJler by himself or his legal form or of at least the portions thereof or insufficiency in the claims representatives or assigns If any such considered by the person filing the state- (4) When the applicant is aware of application has been filed the applicant ment to be pertinent prior art or other information relovant

- shall name the country in which the I (b) When two o~ more patents or to patentability not prevIously conshyearliest such application was filed and publications considered material are sidered by the Office which miGht caus) shall give thaday month and year of its sub tanflt~~ identical a cop of a rep- the examiner to deem the Original patent filing he shall also identify b1 country s y h 11 rtl in ti in ltd and by d month and year of filing resentative one may be included in the w OuJ or pa y opera ve or va bull

t tom iii d th el lIsted A particularly specifying such prior art or every such foreign application filed more s a en an a ers mer 1 - other information and requesting that than twelve months before the filing of translation of the pertinent portiorur of it the examiner so deems the applicant the application in this country foreign language patents or publications

(2) This statement (i) must be sub- considered material should be transmit- ~ ~~ o~~~tt patent and scribed to by the applicant and (li) must ted if an existing translation is readilY (5) Particularly specifying the errors either (a) be sworn to- (or affirmed) as available~theappliGSnt or what might be deemed to be crrDrs provided in sect 166 or (b) include the 12 Seytion 199 is added to read as relied upon and how they arose or

personal declaration of the applicant as follows occurred

FEDERAL REGISTER VOL 42 NO 19-fRIDAY JANUAItY 28 1977)


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AND REGULATIONS

(6) Stating that said errors if anyarose without any deceptive intentionon the part of the applicant

S S S


1176 Fxamninationof reissueAn original claim if re-presented in

the reissue application is subject to re-examination and the entire applicationwill be examined in the same manner asoriginal applications subject to the rulesrelating thereto excepting that divisionwill not be required Applications for re-issue Will be acted on by the examiner inadvance of other applications but notsooner than two months after announce-ment of the filing of the reissue applica-tion has appeared in the Official Gazette

16 Section 1194 is revised to read asfollowssect 1194 Oral hearing

(a) An oral hearing should be re-quested only in those circumstances Inwhich the appellant considers such ahearing -necessary or desirable for aproper presentation of his appeal Anappeal decided without an oral hearingwill receive the same consideration bythe Board of Appeals as appeals decidedafter oral hearing

(b) If appellant requests an oral hear-Ing an oral argument may be presentedby or on behalf of the primary exam-iner if considered desirable by either theprimary examiner or the Board

(c) If no-request for oral hearing hasbeen made by the appellant the appealwill be assigned for consideration anddecision If the appellant has requestedan oral hearing a day of hearing will beset and due notice thereof given to theappellant and to the primary examiner

-Hearing will be held as stated in thenotice and oral argument will be limitedto twenty minutes for the appellant andfifteen minutes for the primary exam-ner unless otherwise ordered before the

hearing begins17 Section 1196 is amended by adding

new paragraph (d) to read as followssect 1196 Decision by the Board of Ap-

peals

(d) Although the Board of Appealsnormally will confine its decision to a

review of rejections made by the primaryexaminer should It have hnowledge ofany grounds for rejecting any allowedclaim that it believes should be con-sidered it may include in Its decision astatement to that effect and remand thecase to the primary examiner for con-sideration thereof In such event theBoard shall set a period not less thanone month within which the applicantmay submit to the primary eamlner anappropriate amendment or a showing offacts or reasons or both in order toavoid the grounds set forth in the state-ment of the Board of Appeals If theprimary examiner rejects the previouslyallowed claim or claims on the basis ofsuch statement the applicant may appealto the Board of Appeals from the rejec-tion Whenever a decision of the Boardof Appeals includes a remand that deci-sion shall not be considered as a finaldecision in the case but the Board ofAppeals shall upon conclusion of theproceedings before the primary examineron remand either adopt Its decision asfinal or render a new decision on all ofthe claims on appeal as It may deemappropriate

18 Section 1291 is revised to read asfollowssect 1291 Protests and prior art citations

by public(a) Protests against pending applica-

tiolbs will be acknowledged and referredto the examiner having charge of thesubject matter involved A protest spe-cifically Identifying the application towhich the protest Is directed will be en-tered in the application file atid if timelysubmitted and accompanied by a copy ofeach prior art document relied uponwill be considered by the examiner_ (b) Citations of prior art and anypapers related thereto may be enteredin the patent file after a batent has beengranted at the request of a member ofthe public or the patentee Such clta-tions and papers will be entered withoutcomment by the Patent and TrademarkOffice

(c) Protests and prior art citations bythe public and any accompanying papersshould either (1) reflect that a copy ofthe same has been served upon the ap-plicant or patentee or upon his attorneyor agent of record or (2) be filed with

the Office In duplicate in the event serv-ice Is not possible

19 In sect 1292 paragraph (b) is revisedto read as followssect1292 Public use proceedings

(b) The petition and accompanyingpapers should either (1) reflect t1lat acopy of the same has been served uponthe applicant or upon his attorney oragent of record or (2) be filed with theOffice in duplicate in the event serviceIs not possible The petition and accom-panying papers or a notice that such apetition has been fled shall be enteredin the application file

20 Section 1346 is revised to read asfollowssect 1316 Signature and certificate of at-

torneyEvery paper filed by an attorney or

agent representing an applicant or partyto a proceeding in the Patent and Trade-mark Office must bear the signature ofsuch attorney or agent except paperswhich are required to be signed by theapplicant or party In person (such as theapplication Itself and affidavits or dec-larations required of applicants) Thesignature of an attorney or agent to apaper filed by him or the filing or pres-entation otany paper by him constitutesa certificate that the paper has beenread that Its Ming is authorized thatto the best of his knowledge Informationand belief there is good ground to sup-port It including any allegations of Im-proper conduct contained therein andthat It is not interposed for delay

Effective date These amendments be-come effective on March 1 1977 exceptfor sectsect 151 197 198 and 199 whichbecome effective on July 1 1977 andsectsect 165 and 169 which become effectiveon January 1 1978

Dated January 18 1977C MOM=AL DANN

Commissioner of Patentsand TrademarTcs

Approved January 19 1977Bzrms Axc=-Jom-so2r

Asstitant Secretarg forScience and Technology

tFR Doo77-2528 Piled 1-27-77845 am]

FEDERAL REGISTER VOL 42 NO 19-TIDAY JANUARY 2k IM

5595

(6) stating that said errors if any arose without any deceptive intenUon on the part of the applicant

bull bull bull bull bull 15 Section 1176 is revised to read as

follows sect 1176 E~amination-opound reissue

An original claim if re-presented in the reissue application is subject to reshyexamination and the entire appllcation will be examined in the same manner as original applications subject to the rules relating thereto excepting that division will not be middotrequired Applications fo] re-

o issue will be acted on by the examiner in advance of other applications but not sooner than two months after announceshyment of the filing of the reissue applicashytion has appeared in the Official Gazette

16 Section 1194 is revised to read as follows sect 1 bull 194 Oral hearing


review of rejections made by the primary examiner should it have knowledge of any grounds for rejecting any allowed claim that it belleves should be con~ sidered it may include in its decision n statement to that effect and remand the case to the primary cwmlner for con~ sideration thereof In such event the Board shall set a period not I~s than one month within which the nppllcant may submit to the primary cgtrunlner an appropriate amendment) or a showing of facts or reasons or both in order to avoid the grounds set forth in the stlte~ ment of the Board of Appeals If the primary egtamlner rejects the previously allowed claim or clnlms on the basis of such statement) the appllcunt may appeal to the Board of Appeals from the rejec~ tiOD Whenever a decision of the Board of Appeals includes a remand that dec1~ slon shall not be considered as a finnl decision in the case but the Board of Appeals shall upon conclusion of the proceedings before the primary cxrunlner on remand either adopt its decision as final or render a new decision on all of the claims on appeal as it lrulY deem appropriate

(a) An oral hearing should be reshyquested only in those circumstances in which the appellant considers such a hearing _ necessary or desirable for a proper presentation of his appeal An appeal decided without an oral hearing 18 Section 1291 is revised to read as will receive the same consideration by follows the Board of Appeals as appeals decided sect 1291 Protests ond prior ort dtolions after oral hearing by pubUc

(b) If appellant requests an oral hear- (a) Protests aenlnst pending applica-ing an oral argument may be presented by or on behalf of the primary exam- tiohs will be ncknowledged and referred

to the examiner having charge of the Jner if considered desirable by either the subject matter involved A protest _ primary examiner or the Board UV

(c) If no-request for oral hearing has cifically identifying the appllcation to wblch the protest is directed will be en-

been made by the appellant the appeal tered in the appllcation file and if timely will be assigned for consideration and submitted and aceompanled by a copy of decision If ~e appcl1plt has requ~ted each prior art document relled upon an ora1 hearmg ~ day of heaDg will be will be considered by the cxaminer set and due notice the~eof given to the - (b) Citations of prior art and any appelant and to the pnmary examiner papers related thereto may be entered

Bearmg will be held as stated in the in the patent file after a patent has been notice and oral argument Will be limlted to twenty minutes for the appellant and granted at the request of a member of fifteen minutes for the primary exam- the publlc or the patentee Such c1tashymer unless otherwise ordered before the tions and papers will be entered without hearing begins comment by the Patent and Trademark

17 Section 1196 is amended bymiddot adding Office new paragraph (d) to read as follows (c) Protests and prIor art cItations by sect 1196 Decision by the Board of Ap- the publlc and any accompanying papers

peals should either (1) reflect that a COW of bull bull bull bull the same has been served upon the ap-

(d) Although the Board of Appeals plicant or patentee or upon his attorney normiilly will confine its decision to a or agent of record or (2) be filed with

5595

the Office in duplicate in the event serv-1ce is not possible

19 In sect 1292 paragraph (b) is revised to read as follows sect 1292 Public use proceedings

bull bull bull bull bull (bl The petition and accompanying

PlPers should either (1) reflect tllat a copy of the same has been served upon the appllcant or upon his attorney or agent of record or (2) be filed with the Office in duplicate in the event service is not possible The petition and accomshypanying papers or a notice that such a petition has been rued shall be entered In the appllcation file

20 Section 1346 is revised to read as follows sect 1316 Signalure and certificate of alshy

lomey

Every paper rued by an attorney or agent representing an applicant or party to a proceeding in the Patent and Tradeshymark Office must bear the signature of such nttorney or agent except papers which are required to be signed by the appllcant or party in person (such as the application itself and affidavits or decshylarations requlred of applicants) The sJgnature of an attorney or agent to a paper filed by him or the filing or presshyentation otanypaper by him constitutes a certificate that the paper has been read that its filing is authorized that to the best of his knowledge information and bellef there is good ground to supshypOrt it including any allegations of imshyproper conduct contained therein and thatlt is not interposed tor delay

Effective date These amendments beshycome effective on March 1 1977 except for sectsect 151 197 198 and 199 which become effective on July 1 1977 and sectsect 165 and 169 which become effective on January I 1978

Dated January 18 1977 C IDBSlJATI DANN

Cmnm~~~oJPaumu and TTademaT~

Approved January 19 1977 BElSY AliCKER-JOBNSON bull

A3sftant SecretaT1 Jor Science and Technolcgy

1FR DooT1-2528 Filed 1-27-77845 am

FpoundDElAL lEGIS1EJi Vat 42 NO 1t-RJDAT JAHUAIT 21 Jtn


OF PATENT EXAMINING PROCEDURE

cations and all additions thereto must conform to atleast one of them as it was at the time of the filing ofthe application Matter not found in either involvinga departure from or an addition to the original disclo-sure cannot be added to the application even thoughsupported by a supplemental oath and can be shownor claimed only in a separate application

In establishing a disclosure applicant mayrely not only on the specification and drawingas filed but also on the original claims if theircontent justifies it Note sect 60801(1)

While amendments to the specification andclaims involving new matter are ordinarilyentered such matter is required to be canceledfrom the descriptive portion of the specifica-tion and the claims affected are rejected

A new matter amendment of the drawingis ordinarily not entered Neither is an addi-tional or substitute sheet containing new mat-ter even though stamped APPROVED by theDraftsman and provisionally entered by theclerk See sect 60802(h)

The examiners holding of new matter maybe petitionable or appealable sect 60804(c)

NoTE-New matter in reissue applicationsect 140107 New matter in substitute specifica-tion sect 71420

60804(a) Matter Not in OriginalSpecification Claims orDrawings [R-23]

Matter not in the original specificationclaims or drawings is usually new matterDepending on circumstances such as the ade-quacy of the original disclosure the addition ofinherent characteristics such as chemical orphysical properties a new structural formulaor a new use may be new matter See Ex parteVander Wal et al 1956 CD 11 705 OG 5(physical properties) Ex parte Fox 1960 CD28 761 OG 906 (new formula) and Ex parteAyers et aL 108 USPQ 444 (new use) Forrejection of claim involving new matter seesect 70603 (o)

NoTE-Completeness of disclosure sect 60801(p) Trademarks and trade names sect 60801 (v)

60804(b) New Matter by Prelimi-nary Amendment [R-23]

An amendment is sometimes filed along withthe filing of the application Such amendmentdoes not enjoy the status as part of the originaldisclosure Its test as to involving new matteris the same as though filed on a subsequent dateEx parte Leishman 137 Ms 336 Pat No

1581937 and Ex parte Adams Pat No1789921

60804(c) R e v i e w of ExaminersHolding of New Matter[R-52]

Where the new matter is confined to amend-ments to the specification review of the ex-aminers requirement for cancellation is byway of petition But where the alleged newmatter is introduced into or affects the claimsthus necessitating their rejection on thisground the question becomes an appealableone and should not be considered on petitioneven though that new matter has been intro-duced into the specification also Sections 1181and 1191 afford the explanation of this seem-ingly inconsistent practice as affecting newmatter in the specification

609 Prior Art Statement [R-52]

37 CFR 197 Filing of prior arc statement (a) Asa means of complying with the duty of disclosure setforth in sect 156 applicants are encourage to file a priorart statement at the time of filing the application orwithin three months thereafter The statement mayeither be separate from the specification or may be in-corporated therein

(b) The statement shall serve as a representationthat the prior art listed therein includes in the opin-ion of the person filing it the closest prior art ofwhich that person is aware the statement shall notbe construed as a representation that a search has beenmade or that no better art exists (effective July 11977)

37 CFR 198 Content of prior art statement (a)Any statement filed under sect 197 or sect 199 shall include(1) A listing of patents publications or other infor-mation and (2) a concise explanation of the relevanceof each listed item The statement shall be accompaniedby a copy of each listed patent or publication or otheritem of information in written form or of at least theportions thereof considered by the person filing thestatement to be pertinent

(b) When two or more patents or publications con-sidered material are substantially identical a copy of arepresentative one may be included in the statementand others merely listed A translation of the pertinentportions of foreign language patents or publicationsconsidered material should be transmitted if an exist-ing translation is readily available to the applicant(effective July 1 1977)

37 CFR 199 Updating of prior art statement Ifprior to issuance of a patent an applicant pursuant tohis duty of disclosure under sect 156 wishes to bring tothe attention of the Office additional patents publica-tions or other information not previously submitted the

Rev 52 Apr 1977

60804 (a)60804 (a) MANUAL OF PATENT EXAMINING PROCEDURE

cations and all additions thereto must conform to at least one of them as it was at the time of the filing of the application Matter not found in either involving a departure from or an addition to the original discloshysure cannot be added to the application even though supported by a supplemental oath and can be shown or claimed only in a separate application

In establishing a disclosure applicant may rely not only on the specification and drawing as filed but also on the original claims if their content jnstilies it Note sect 60801 (1)

While amendments to the specification and claims involving new matter are ordinarily entered such matter is required to be canceled from the descriptive portion of the specificashytion and the claims affected are rejected

A new matter amendment of the drawing is ordillarily not entered Neither is an addishytional or substitute sheet containing new matshyter even though stamped APPROVED by the Draftsman and provisionally entered by the clerk See sect 60802(h)

The examiners holding of new matter may be petitionable or appealable sect 60804(c)

NOTE-New matter in reissue application sect 140107 Nmv matter in substitute specificashytion sect 71420

Matter Not in Original Specification Claims or Dra~ngs [R-23]

Matter not in the original specification claims or drawings is usually new matter Depending on circumstances snch as the adeshyquacy of the original disclosure the addition of inherent characteristics snch as chemical or physical properties a new strnctural formula or a new use may be new matter See Ex parte Vander Wal et al 1956 CD 11 705 OG 5 (physical properties) Ex parte Fox 1960 CD 28 761 OG 906 (new formula) and Ex parte Ayers et al 108 USPQ 4H (new use) For rejection of claim involving new matter see sect 70603 (0)

N oTE-Completeness of disclosure sect 60801 (p) Trademarks and trade names sect 60801(v)

60B04(h) New Matter by Prelimishynary Amendment [R-23]

An amendment is sometimes filed along with the filing of the applicrrtion Such amendment does not enjoy the status as part of the original disc-Iosure Its test as to ilwolving ne matter is the same as though filed on a subsequent date Ex parte Leishman 137 Ms 336 Pat No

Rev 52 Apr 1977 60

1581937 and Ex parte Adams Pat No 1789921

60B04(c) Rev i e w of Examiners Holding of New Matter [R-52]

Where the new matter is confined to amendshyments to the specification review of the exshyaminers requirement for cancellation is by way of petition But where the alleged new matter is introduced into or affects the claims thus necessitating their rejection on this ground the question becomes an appealable one and should not be considered on petition even though that new matter has been introshyduced into the specification also Sections 1181 and 1191 afford the explanation of this seemshyingly inconsistent practice as affecting new matter in the specification

609 Prior Art Statement [R-52] 37 CFR 197 Filing of prior are statement (a) A~

a means of complying with the duty of disclosure set forth in sect 156 applicants are encourage to file a prior alltt statement at the time of filing the application or within three months thereafter The statement may either be separate from the specifieation or may be inshycorporated therein

(h) The statement shall serve as a representation that the prior art listed therein includes in the opinshyion of the person filing it the closest prior art of which that person is aware the statement shall not be construed as a representation that a search has been made or that no better art exi~ts (effective July 1 1977)

37 CFR 198 Content of prior art statement (a) Any statement filed under sect 197 or sect 199 shan include (1) A listing of patents publications or ollieI inforshymation and (2) a concise expianation of the relevance of each listed item The statement shall be accompanied by a copy of each listed patent or publication or other item of information in written form or of at least the portions rthereof considered by the person filing the statement to be pertinent

(b) When two or more patents or publications conshysidered material are substantially identiea1 a oopy of a representative one may be included in the staJtemenrt and others merely listed A translation of the pertinent portions of foreign language patpnts or publications considered material should be transmitted if an exisishying toonslation is readily available to the applicant (effective July 1 1977)

37 CFR 199 Updating of prior art 8tatement If prior to issuance of a patent an applicant pursuant to his duty of disclosure under sect 156 wishes to bring to the attention of the Office additional patents publicashytions or other information not previously submitted the

8HeinOnline -- 3 MPEP 60 April 1977

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FORM AND CONTENT OF APPLICATION 609additional information should be submitted to the Of-fice with reasonable promptness It may be includedin a supplemental prior art statement or may be incor-porated into other communications to be considered bythe examiner Any transmittal of additional informa-tion shall be accompanied by explanations of relevanceand by copies in accordance with the requirements -ofsect 198 (effective July 1 1977)

Although new sections 197 through 199 arenot effective until July 1 1977 and are not man-datory upon applicants they provide an idealmechanism for complying with the duty of dis-closure under 37 CFR 156 The statementsshould be submitted in accordance with the fol-lowing guidelines

1) Prior art statements should be submit-ted at the time of filing the applicationor within three months thereafter andmay be separate from the specificationor incorporated therein The statementshall serve as a representation that theperson preparing it has included thereinwhat he believes to be the closest priorart of which he is aware and shall notbe construed as a representation that nobetter art exists or that a search has beenmade If the first action in the applica-tion is received prior to three monthsafter filing of the application and noprior art statement has been submittedthe prior art statement may be submit-ted with the response to the first actionand be considered timely

2) The statement shall include a listing ofof the patents publications or other in-formation which the preparer of thestatement wishes to cite and a conciseexplanation of the relevance of eachlisted item Copies of the pertinent por-tions of all listed documents shall besupplied along with the statement bothwhen incorporated into the specificationand when filed separately If two ormore patents or publications consideredmaterial are substantially identical acopy of a representative one shall be in-cluded with the statement and othersmay merely be listed with an indicationof which are considered to be substan-tantially identical

3) A translation of the pertinent portionsof foreign language patents or publica-tions considered material should betransmitted if an existing translation isreadily available to the applicant Itwill be sufficient however to transmitan equivalent English language patentor publication so long as it is identifiedas an equivalent

Where the applicant has submittedcopies of prior art in accordance withthese guidelines in a prior applicationreference to the prior application andthe submission therein will be sufficientfor the continuing application as far asthe copies are concerned As far as thestatement per se is concerned the rele-vance of the prior art to the claimed sub-ject matter must be indicated if it dif-fers from its relevance as explained inthe prior application

4) If prior to the issuance of a patent anapplicant pursuant to his duty of dis-closure under 37 CFR 156 wishes tobring to the attention of the Office addi-tional patents publications or other in-formation not previously submitted theadditional information should be sub-mitted to the Office with reasonablepromptness It may be included in asupplemental prior art statement or maybe incorporated into other communica-tions to be considered by the examinerAny transmittal of additional informa-tion shall be accompanied by explan-a-tions of relevance and by copies in ac-cordance with the requirements afore-mentioned The transmittal should in-clude a statement explaining why theprior art was not earlier submitted

While the Patent and Trademark Office willnot knowingly ignore any prior art which mightanticipate or suggest the claimed invention noassurance can be given that cited art or otherinformation not submitted in accordance withthese guidelines will be considered by theexaminer

After the claims have been indicated as al-lowable by the examiner eg by the mailing ofan Ex parte Quayle action a notice of allow-ability (PTOL-327) an examiners amendment(PTOIr37) or a Notice of Allowance (PTOL-85) any citations submitted will be placed in thefile Since prosecution has ended however suchsubmissions will not ordinarily be considered bythe examiner unless the citation is accompaniedby

(a) A proposed amendment cancelling orfurther restricting at least one inde-pendent claim and narrowing the scopeof protection sought

(b) A timely affidavit under 37 CFR 1131with respect to the material cited or

(c) A statement by the applicant or hisattorney or agent that in the judgmentof the person making the statementthe prior art or other information citedraises a serious question as to the pat-

Rev 52 Apr 1977

PARTS FORM AND CONTENT OF APPLICATION 609 additional information should be submitted to the Ofshyfice with reasonable promptness It may be included in a supplemental prior art statemfnt or may be incorshyporated into other communications to be considered by the examiner Any transmittal of additional informashytion shall be accompanied by explanations of relevnnce and by copies in accordance with the requirements of sect 198 (effective July 1 1977)

Although new sections 197 through 199 are nQt effective until July 1 1977 and are not manshydatory upon applicants they provide an ideal mechanism for complying with the duty of disshyclosure under 37 CFR 1))6 The statements should be submitted in accordance with the folshylowing guidelines

1) Prior art statements should be submitshyted at the time of filing the application or within three months thereafter and may be separate from the specification or incorporated therein The statement shall serve as a representation that the person preparing it has included therein what he believes to be the closest prior art of which he is aware and shall not be construed as a representation that no better art exists or that a search has been made If the first action in the applicashytion is received prior to three months after filing of the application and no prior art statement has been submitted the prior art statement may be submitshyted with the response to the first action and be considered timely

2) The statement shall include a listing of of the patents publications or other inshyformation which the preparer of the statement wishes to cite and a concise explanation of the relevance of each listed item Copies of the pertinent porshytions of all listed documents shall be supplied along with the statement both when incorporated into the specification and when filed separately If two or more patents or publications considered material are substantially identical a copy of a representative one shall be inshycluded with the statement and others may merely be listed with an indication of which are considered to be substanshytantially identical

3) A translation of the pertinent portions of foreign language patents or publicashytions considered material should be transmitted if an existing translation is readilv available to the applicant It will be sufficient however to transmit an equivalent English language patent or publication so long as it is identified as an equivalent

601

Where the applicant has submitted copies of prior fLIt in accordance with these guidelines in a prior application reference to the prior application and the submission therein will be sufficient for the continuing application as far as the copies are concerned As far as the statement per se is concerned the releshyvance of the prior art to the daimed subshyject mabter must be indicated if it difshyfers from its relevance as explained in the prior application

4) If prior to the issllance of a patent an applicant pursuant to his duty of disshyclosure under 37 CFR 156 wishes to bring to the attention of the Office addishytional patents publications or other inshyformation nOit previously submitted the additional information should be subshymitted to the Office with reasonable promptness It may be included in a supplemental prior art statement or may be incorporated into other communicashytions to be considered by the examiner Any transmittal of additional informftshytion shall be accompanied by explanashytions of relevance and by copies in acshycordance with the requirements aforeshymentioned The transmitlial should inshyclude a statement explaining why the prior art was not earlier submitted

While the Patent and Trademark Office will not knowingly ignOre any prior art which might anticipate or suggest the claimed invention nO assurance can be given that cited art or other infOrmation nOt submitted in accOrdance with these guidelines will be considered by the exam mer

After the claims have been indicated as alshylowable by the examiner eg by the mailing of an Ex parte Quayle action a nOtice of allowshyability (PTOL-327) an examiners amendment (PTOL-37) 01 a Notice of Allowance (PTOL-85) any citatiOns submitted will be placed in the file Since prosecution has ended however such submissions will not ordinarily be considered by the examiner unless the citation is accOmpanied by

(a) A proposed amendment cancelling or further restricting at least one indeshypendent claim and narrOwing the scope Of prote-ction sought

(b) A timely affidavit under 37 CFR 1131 with respect to the material cited or

(0) A statement by the applicant or his attorney or agent that in the judgment Of the person making the statement the prior art or other information cited raises a serious question as to the pat-

Rev 52 Apr 1977


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entability of the claimed subject mat-ter or is closer prior art than that ofrecord

If the material is submitted after the baseissue fee has been paid it must also be accom-panied by a petition under 37 CFR 1183 re-questing a waiver of 37 CFR 1312 Such peti-tion if granted would result in review of theart by the examiner and possible entry of theamendment

In each instance where an examiner considersbut does not cite on form PTO-892 specificprior art referred to in a paper placed in the ap-plication file the examiner will place a notationadjacent to the reference according to the fol-lowing

If included in the specification the exam-iner will write his or her initials adjacentto any references checked and enterchecked in the left margin opposite theinitials If presented in a separate paper orin the remarks of an amendment the exam-iners initials and checked will be enteredadjacent to the citations or wherever possi-ble to indicate clearly those checked

37 CFR 198 (a) calls only for a concise ex-planation of the relevance of each listed itemThis may be nothing more than identification ofthe particular figure or paragraph of the patentor publication which has some relation to theclaimed invention It might be a simple state-ment pointing to similarities between the itemof prior art and the claimed invention It ispermissible but not necessary to discuss differ-enices between the prior art and the claims Itis thought that the explanation of relevance willbe essentially as useful to the examiner as theformerly proposed explanation of patentabilityand should be significantly less burdensome forthe applicant to prepare

Section 198 requires a copy of each patent orpublication cited including US patents toaccompany the prior art statement Substantialtime and effort often is needed to locate a docu-ment in the Offices files Since the person sub-mitting the prior art statement generally hasavailable a copy of the item being cited it isbelieved that expense and effort can be mini-mized by having that person supply the copy inall cases

Rev 52 Apr 1977 602

MANUAL OF PATENT EXAMINING PROCEDURE

entability of the daimed subject matshyter or is closer prior art than that of record

If the material is submitted after the base issue fee has been paid it must also be accomshypanied bya petition nnder 37 CFR 1183 reshyquesting a waier of 37 CFR 1312 Snch petishytIOn if granted would result in review of the art by the examiner and possible entry of the ampoundgtndment

In each instance where an examiner considers but does not cite on form PTO-892 specific prior art referred to in a paper placed in the apshyplication file the examiner will place a notartion adjacent to the reference according to the fol-100ying

If included in the specification the examshyiner will write his or her initials adjacent to any references checked and enter checked in the left margin opposite the initials If presented in a separate paper or in the remarks of an amendment the examshyiners initials and checked will be entered adjacent to the citations or wherever possishyble to indicate clearly those checked

Rev 52 Apr 1977 602

37 CFR 198 (a) calls only for a concise exshyplanation of the relevance of each listed item This may be nothing more than identification of the particular figure or paragraph of the patent or publication which has some relation to the claimed invention It might be a simple stateshyment pointing to similarities between the item of prior art and the claimed invention It is permissible but not necessary to discuss differshy(nces between the prior art and the claims It is thought that the explanation of relevance will be essentially as useful to the examiner as the formerly proposed explanation of patentability and should be significantly less burdensome for thpoundgt applicant to prepare

Section 198 requires a copy of each patent or publication cited including US patents to aecompany the prior art statement Substantial time and effort often is needed to locate a docushyment in the Offices files Since the person subshymitting the prior art statement generally has available a copy of the item being cited it is believed that expense and effort can be minishymized by having that person supply the copy in all cases


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Register Vol 57 No 12 Friday January 17 1992 Rules and Regulations

Reply The certification undersect 197(e) should be made by a personwho has knowledge of the facts beingcertified The certification can be madeby a practitioner who represents aforeign client and who relies onstatements made by the foreign client asto the date the information first becameknown A practitioner who receivesinformation from a client without beinginformed whether the information wasknown for more than three monthshowever cannot make the certificationwithout making a reasonable Inquiry

Comment 57 One comment statedthat the language of proposed sect 197(e)would preclude the use of thecertification in an application bycorporations whose practitioners haveover the years reviewed thousands ofpatents and technical publications eventhough they are unaware of therelevance of any one thereof to theapplication

Reply The language of sect 197(e) is notintended to preclude use of thecertification by representatives ofcorporations The certification can bebased on present good faith knowledgeabout when information became knownwithout a search of files being madeThe Office however does desire tohave information considered promptlyby applicants as to materiality and tohave information submitted to the Officeearly in the prosecution of anapplication

Comment 58 One comment suggestedthat proposed sect 197(e) should permitcertification only as to informationsubmitted within four months of receiptfrom a foreign patent office with allother late-submitted informationrequiring a fee so as to not open a legalquagmire implicit in the proposedcertification requirement

Reply The suggestion in the commentis not adopted The certification setforth in sect 197(e) is preferable since itprovides the avoidance of the paymentof a fee by a person who is submittinginformation promptly to the Office Anapplicant has the option under thecircumstances described in sect 197(c)however to not make the certificationand to pay the fee instead if so desired

Comment 59 One comment suggestedthat proposed sect 197(f) be modified tospecify that not less than one month willbe given if a bona fide attempt is madeto comply with sect 198 but part of therequired content is omitted Anothercomment suggested that sect 197(f) shouldstate that the Office will give (ratherthan may give) additional time forcompliance with sect 198

Reply The suggestions in thecomments are not adopted Thelanguage of sect 197(f) parallels present

sect 1135(c) since the practice andconsiderations are similar for both rulesThe Office intends to provide one monthto comply with 1 198 where a bona fideattempt has been made to do so

Comment 00 One comment statedthat proposed J 197(f) should specifythat the Office shall inform the applicantif a reference will not be considered dueto noncompliance with 1 198 so as toavoid any argument in litigation that acertain reference was not considereddue to clerical noncompliance

Reply The Office plans to notifyapplicants in accordance with sect sect 197 (f)and (i) is submitted information will notbe considered The examiner will alsoindicate in the application record whatinformation has been consideredFurther details will appear in theManual of Patent Examining Procedurein due course

Comment 61 One comment suggestedthat proposed sect 197(g) should bemodified to state that the filing of aninformation disclosure statement shallnot be construed as a representationthat no other material information existssuch as is set forth in current J 197(b)

Reply The suggestion in the commenthas not been adopted since referring tono other material information wouldimply that the information beingsubmitted was admitted to be materialThere is no requirement that informationbeing submitted be material to theapplication

Comment 62 One comment suggestedthat proposed sect 197(h) be modified tostate that information not considered bythe Office will be deemed in all respectsto have not been submitted by theapplicant since this would make anoncompliant submission clearly not afulfillment of the duty of candor

Reply The suggestion in the commentis not adopted The Office has no needor desire to rule on lack of fulfillment ofthe duty of candor in such a situationThe rules are drafted such that J 156sets forth what information is materialto patentability and sect J 197 and 198 setforth procedures to assure considerationof information by the Office

Comment 63 One comment stated theOffice has a duty to considerinformation even if this involveswithdrawing an application from issueor publishing a cancellation notice andthat proposed sect 197(h) should bechanged to so state Another commentstated that it would be an abdication ofthe duty that the Office owes to thepublic for information in the file to beignored since issuance of an invalidpatent can be used to discourage othersin the field The comment suggested thatthe Office should leave in doubt

whether the information will beconsidered or not

Reply It is necessary for the Office tobalance its need and desire to considerall information relevant to anapplication with its need for an efficientoperation and its capability to considerinformation at various stages in theprosecution of an application TheOffice is setting forth when informationwill and will not be considered toprovide certainty for the public

Comment 64 One comment requestedinformation on how a United Statespatent application or other information(sect 198(a)1)(iii)) should be listed on aPTO 1449 form

Reply The PTO 1449 has been draftedso as to provide spaces for listingdocuments which are available to thepublic and which will be printed on thepatent at issuance Other informationshould be listed separately from thePTO 1449 form

Comment 65 One comment statedthat sect 198(a)(2)1i) should not require thesubmission by applicants of UnitedStates patents listed in an informationdisclosure statement since the Office isbetter equipped to provide examinerswith copies of those documents thaninventors and their attorneysAlternatively the comment suggestedthat the Office should establish aprocedure whereby an order for theOffice to provide the copies of thepatents at the usual fee can accompanythe information disclosure statement

Reply At the present time when theAutomated Patent System has not beenfully implemented the overall cost ofthe Office obtaining copies of patentsand associating them with applicationfiles would be greater than forapplicants to provide copies withinformation disclosure statementsPresumably the applicant would beusing a copy of the patent in preparingthe statement and could easily make acopy for submission to the Office

Comment 66 One comment suggestedthat sect 198(a)(2)(iii) as proposed beclarified by substituting except that nocopy of a US patent application needbe included for the proposed phraseexcept a US patent application

Reply The suggested clarification tothe language of the rule has beenadopted

Comment 67 A number of commentsobjected to the requirement insect 198(a)(3) for a concise explanation ofthe relevance of all items of informationbeing submitted

Reply In response to the commentssect 198(a)(3) has been modified to requirea concise explanation only of patentspublications or other information listed

20302030 Federal RegitJter I Vol 57 No 12 1 Friday January 17 1992 I Rules and Regulations

Reply The certification under sect 197(e) should be made by 8 person who has knowledge of the facts being certified The eertification ean be made by a practitioner who represents a foreign elient and who relies on statements made by the foreign client as to the date the information first became known A practitioner who receives information from a client without being informed whether the information was known for more than three months however cannot make the certification without making a reasonable inquiry

Comment 57 One comment stated that the language of proposed sect 197(e) would preclude the use of the certification in an application by corporations whose practitioners have over the years reviewed thousands of patents and technical publications even though they are unaware of the relevance of anyone thereof to the application

Reply The language of sect 197( e) is not intended to preclude use of the certification by representatives of corporations The certification can be based on present good faith knowledge about when information became known without a search of files being made The Office however does desire to have information considered promptly by applicants as to materiality and to have information submitted to the Office early in the prosecution of an application

Comment 58 One eomment suggested that proposed sect 197(e) should permit certification only as to information submitted within four months of receipt from a foreign patent office with all other late-submitted information requiring a fee so as to not open a legal quagmire implicit in the proposed certification requirement

Reply The suggestion in the comment is not adopted The certification set forth in sect 197(e) is preferable since it provides the avoidance of the payment of a fee by a person who is submitting information promptly to the Office An applicant has the option under the circumstances described in sect 197(c however to not make the certification and to pay the fee instead if so desired

Comment fi9 One comment suggested that proposed 1197(f) be modified to specify that not less than one month will be given if a bona fide attempt is made to comply with sect 198 but part of the required content is omitted Another comment suggested that sect 197(f) should state that the Office will give (rather than may give) additioaal time for compliance with sect 198

Reply The suggestions in the comments are not adopted The language of sect 197(f) parallels present

sect 1135[c] since the practice and considerations are similar for both rules The Office intends to provide one month to comply with t 198 where 8 bona fide attempt has been made to do so

Comment 60 One comment stated that proposed sect 197(f should specify that the Office shall inform the applicant if a reference will not be considered due to noncompliance with sect 198 so as to avoid any argument in litigation that It certain reference was not considered due to clerical noncompliance

Reply The Office plans to notify applicants in accordance with 1 sect 197 (f) and (i) is submitted information will not be considered The examiner will also indicate in the application record what information has been considered Further details will appear in the Manual of Patent Examining Procedure in due course

Comment 61 One comment suggested that proposed sect 197g) should be modified to state that the filing of an information disclosure statement shall not be construed as a representation that no other material information exists such as is aet forth in current sect 197(b)

Reply The suggestion in the comment has not been adopted since referring to no other material information would imply that the information being submitted was admitted to be material There is no requirement that information being submitted be material to the application

Comment 62 One comment suggested that proposed sect 197(h) be modified to state that information not considered by the Office will be deemed in all respects to have not been submitted by the applicant since this would make a noncompliant submission clearly not a fulfillment of the duty of candor

Reply The suggestion in the comment is not adopted The Office has no need or desire to rule on lack of fulfillment of the duty of candor in such a situation The rules are drafted such that sect 156 sets forth what information is material to patentability and sect sect 197 and 198 set forth procedures to assure consideration ofinformation by the Office

Comment 63 One comment stated the Office has a duty to consider information even if this involves withdrawing an application from issue or publishing a cancellation notice and that proposed sect 197(h) should be changed to so state Another comment stated that it would be an abdication of the duty that the Office owes to the public for information in the file to be ignored since issuance of an invalid patent can be used to discourage others in the field The comment suggested that the Office should leave in doubt

whether the information will be considered or not

Reply It is necessary for the Office to balance its need and desire to consider all information relevant to an application with its need for an efficient operation and its capability to consider information at various stages in the prosecution of an application The Office is setting forth when information will and will not be considered to provide certainty for the public

Comment 64 One comment requested information on how a United States patent application or other information (I 198(a)1)(iii)) should be listed on a PTO 1449 form

Reply The PTO 1449 has been drafted so as to provide spaces for listing documents which are available to the public and which will be printed on the patent at issuance Other information should be listed separately from the PrO 1449 form

Comment 65 One comment stated that sect 198(a)(2)i) should not require the submission by applicants of United States patents listed in an information disclosure statement since the Office is better equipped to provide examiners with copies of those documents than inventors and their attorneys Alternatively the comment suggested that the Office should establish a procedure whereby an order for the Office to provide the copies of the patents at the usual fee can accompany the information disclosure statement

Reply At the present time when the Automated Patent System has not been fully implemented the overall cost of the Office obtaining copies of patents and associating them with application files would be greater than for applicants to provide copies with information disclosure statements Presumably the applicant would be using a copy of the patent in preparing the statement and could easily make a copy for submission to the Office

Comment 68 One comment suggested that sect 198(a)(2)(iii) as proposed be clarified by substituting except that no copy of a US patent application need be included for the proposed phrase except a US patent application

Reply The suggested clarification to the language of the rule has been adopted

Comment 67 A number of comments objected to the requirement in sect 198a)(3) for a concise explanation of the relevance of all items of information being submitted

RepJy In response to the comments sect 198(a)(3 has been modified to require a concise explanation only of patents publications or other information listed


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Register Vol 57 No 12 Friday January 17 1992 Rules and Regulations 2031

in an information disclosure statementthat are not in the English languageApplicants may if they wish provideconcise explanations of why English-language information is being submittedand how it is understood to be relevantConcise explanations are helpful to theOffice particularly where documentsare lengthy and complex and applicantis aware of a section that is highlyrelevant to patentability

Comment 68 Five comments statedthat the proposed rules should bemodified to state that if information isbeing submitted from a foreign searchreport the requirement for a conciseexplanation in proposed sect 198(a)(3) maybe satisfied by submitting an English-language version of the search report

Reply The language of sect 198(a)(3) hasbeen modified so that no conciseexplanation is required for informationsubmitted in the English language Theconcise explanation requirement fornon-English language information maybe met by the submission of an Englishlanguage version of the search reportindicating the degree of relevance foundby the foreign office It is not necessarythat this detail be included in the rule

Comment 69 Five commentsquestioned whether the requirement inproposed sect 198(a)(3) would be satisfiedby a statement that the references werecited in the prosecution of a parentapplication

Reply The requirement in sect 198(a)(3)for a concise explanation of non-Englishlanguage information would not besatisfied by a statement that a referencewas cited in the prosecution of a parentapplication The concise explanationmust explain the relevance as presentlyunderstood by the person designated insect 156(c) most knowledgeable about thecontent of the information

Comment 70 One comment suggestedthat proposed sect 198(a)(3) should bemodified to require a conciseexplanation of what is believed to bethe relevance of information listed toavoid the accusation of violation of dutyof disclosure merely because morerelevant portions of the information arelater found Another comment suggestedthat the concise explanation shouldstate what is reasonably understood bythe person submitting the statementAnother comment stated that theapplicant should be required to explain(1) only what is understood or believedabout the item of information at the timethe disclosure is made or (2) why theitem is listed

Reply The suggestions in thecomments have been substantiallyadopted in modifying the language ofsect 198(a)(3)

Comment 71 One comment statedthat proposed I 198(b) should notrequire the date (unless material) andplace of publication of journal articlessince such information is not given onsearch reports from foreign patentoffices or on journals published by theAmerican Chemical Society which justgive the year Another commentindicated that sometimes it is not clearwhere the place of publication is

Reply The suggestions in thecomments are not adopted The date ofpublication is necessary for the Office tobe able to determine if the informationmay be used in a rejection of the claimsin an application The place ofpublication refers to the name of thejournal magazine or other publication inwhich the article was published whichshould be available in the vast majorityof cases

Comment 72 One comment suggestedthat sect 198(c) should not require atranslation of a non-English languagedocument to be filed if a translation iswithin the possession custody orcontrol of an individual designated insect 156(c) because such person may notrecall that there is a translationsomewhere in the records of theindividual perhaps having been madefor another application years earlier

Reply The requirement of the rule fora translation to be submitted underlimited conditions is not a change inpractice See prior sect sect 156(j) and 197(b)Since the requirement has caused littleif any problem in the past thesuggestion of the comment is notadopted

Comment 73 One comment suggestedthat sect 198(c) should be revised to makeit clear that a reference that isessentially cumulative to anotherreference need not be listed in aninformation disclosure statement

Reply The concept that cumulativeinformation is not material is set forth insect 156(b) Section 198 does not deal withwhat information must be submitted butprovides an exception for cumulativeinformation to the requirement for acopy to be submitted of each item ofinformation listed in an informationdisclosure statement

Comment 74 One comment statedthat a sentence in the preamblediscussion of proposed sect 198(c) wasburdensome because it would requiresubmission of incomplete or inexacttranslations which may have been madeof an item of information The sentencein question reads

But if the individual has the ability totranslate the non-English language intoEnglish and has done so for the purposes ofreviewing the information relative to the

claimed invention the translation would beconsidered readily available

Another comment stated thatproposed sect 198(c) should be modified torequire a translation if the non-Englishlanguage document is to be consideredby the examiner since the attorneywould want to prepare an accuratetranslation of particularly relevantreferences One comment suggested thatsect 198(c) or the preamble discussionshould make it clear that an English-language translation of a foreignlanguage material reference need not besubmitted where an individual merelyreads in the reference in its originallanguage and translates it mentally butdoes not prepare a written translationFive other comments requestedclarification on this point

Reply The Office does not intend torequire translations unless they havebeen reduced to writing and are actuallytranslations of what is contained in thenon-English language informationApplicants should note however thatmost examiners do not have the abilityto understand information which is notin English and that the Office will notroutinely translate informationsubmitted in a non-English languageThe examiner will consider theinformation insofar as it is understoodon its face eg drawings chemicalformulas English-language abstractsbut will not have the informationtranslated unless it appears to benecessary to do so Applicants arerequired to aid the examiner bycomplying with the requirements for aconcise explanation in sect 198(a)(3) forinformation submitted in a non-Englishlanguage

Comment 75 One comment statedthat sect 198(d) should be clarified to statethat a copy of an item of informationlisted in an information disclosurestatement need not be submitted if thereference was cited by the Office orpreviously submitted to the Office inconnection with a prior application

Reply The suggestion in the commentis adopted The language of sect 198(d) hasbeen modified to state that a copy of anitem of information is not required if itwas previously cited by the Office orpreviously submitted to the Office in aprior application being relied on for anearlier filing date under 35 USC 120

Comment 76 One comment suggestedthat proposed sect 198(d) should berevised to not require the submission ofa copy of the information listed in aninformation disclosure statement if acopy of the information has previouslybeen submitted to the Office in a priorapplication whether or not the earlier

I Federal Register I Vol 57 No 12 I Friday January 17 1992 I Rules and Regulations 2031

in an information disclosure statement that are not in the English language Applicants may if they wish provide concise explanations of why Englishshylanguage information is being submitted and how it is understood to be relevant Concise explanations are helpful to the Office particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability

Comment 68 Five comments stated that the proposed rules should be modified to state that if information is being submitted from a foreign search report the requirement for a concise explanation in proposed sect 198(a)(3) may be satisfied by submitting an Englishshylanguage version of the search report

Reply The language of sect 198(a)(3) has been modified so that no concise explanation is required for information submitted in the English language The concise explanation requirement for non-English language information may be met by the submission of an English language version of the search report indicating the degree of relevance found by the foreign office It is not necessary that this detail be included in the rule

Comment 69 Five comments questioned whether the requirement in proposed sect 198(a)(3) would be satisfied by a statement that the references were cited in the prosecution of a parent application

Reply The requirement in sect 198(a)(3) for a concise explanation of non-English language information would not be satisfied by a statement that a reference was cited in the prosecution of a parent application The concise explanation must explain the relevance as presently understood by the person designated in sect 156(c) most knowledgeable about the content of the information

Comment 70 One comment suggested that proposed sect 198(a)(3) should be modified to require a concise explanation of what is believed to be the relevance of information listed to avoid the accusation of violation of duty of disclosure merely because more relevant portions of the information are later found Another comment suggested that the concise explanation should state what is reasonably understood by the person submitting the statement Another comment stated that the applicant should be required to explain (1) only what is understood or believed about the item of information at the time the disclosure is made or (2) why the item is listed

Reply The suggestions in the comments have been substantially adopted in modifying the language of sect 198(a)(3)

Comment 71 One comment stated that proposed sect 198(b) should not require the date (unless material) and place of publication of journal articles since such information is not given on search reports from foreign patent offices or on journals published by the American Chemical Society which just give the year Another comment indicated that sometimes it is not clear where the place of publication is

Reply The suggestions in the comments are not adopted The date of publication is necessary for the Office to be able to determine if the information may be used in a rejection of the claims in an application The place of publication refers to the name of the journal magazine or other publication in which the article was published which should be available in the vast majority of cases

Comment 72 One comment suggested that sect 198(c) should not require a translation of a non-English language document to be filed if a translation is within the possession custody or control of an individual designated in sect 156(c) because such person may not recall that there is a translation somewhere in the records of the individual perhaps having been made for another application years earlier

Reply The requirement of the rule for a translation to be submitted under limited conditions is not a change in practice See prior sectsect 156(j) and 197(b) Since the requirement has caused little if any problem iIi the past the suggestion of the comment is not adopted

Comment 73 One comment suggested that sect 198(c) should be revised to make it clear that a reference that is essentially cumulative to another reference need not be listed in an information disclosure statement

Reply The concept that cumulative information is not material is set forth in sect 156(b) Section 198 does not deal with what information must be submitted but provides an exception for cumulative information to the requirement for a copy to be submitted of each item of information listed in an information disclosure statement

Comment 74 One comment stated that a sentence in the preamble discussion of proposed sect 198(c) was burdensome because it would require submission of incomplete or inexact translations which may have been made of an item of information The sentence in question reads

But if the individual has the ability to translate the non-English language into English and has done 80 for the purposes of reviewing the infonnation relative to the

claimed invention the translation would be considered readily available

Another comment stated that proposed sect 198(c) should be modified to require a translation if the non-English language document is to be considered by the examiner since the attorney would want to prepare an accurate translation of particularly relevant references One comment suggested that sect 198(c) or the preamble discussion should make it clear that an Englishshylanguage translation of a foreign language material reference need not be submitted where an individual merely reads in the reference in its original language and translates it mentally but does not prepare a written translation Five other comments requested clarification on this point

Reply The Office does not intend to require translations unless they have been reduced to writing and are actually translations of what is contained in the non-English language information Applicants should note however that most examiners do not have the ability to understand information which is not in English and that the Office will not routinely translate information submitted in a non-English language Themiddot examiner will consider the information insofar as it is Wlderstood on its face eg bull drawings chemical formulas English-language abstracts but will not have the information translated unless it appears to be necessary to do so Applicants are required to aid the examiner by complying with the requirements for a concise explanation in sect 198(a)(3) for information submitted in a non-English language

Comment 75 One comment stated that sect 198(d) should be clarified to state that a copy of an item of information listed in an information disclosure statement need not be submitted if the reference was cited by the Office or previously submitted to the Office in connection with a prior application

Reply The suggestion in the comment is adopted The language of sect 198(d) has been modified to state that a copy of an item of information is not required if it was previously cited by the Office or previously submitted to the Office in a prior application being relied on for an earlier filing date Wlder 35 USC 120

Comment 76 One comment suggested that proposed sect 198d) should be revised to not require the submission of a copy of the information listed in an information disclosure statement if a copy of the information has previously been submitted to the Office in a prior application whether or not the earlier


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application is being relied upon for anearlier filing date under 35 USC 120

Reply The suggestion in the commentis not adopted The exception to therequirement for a copy of each item ofinformation to be submitted has beenmade with regard to prior applicationswhich will normally be available to andconsidered by the examiner It wouldnot be efficient for the examiner to berequired to seek out unrelatedapplication files to obtain a copy of anitem of information when a copy couldeasily be submitted by applicant

Comment 77 One commentquestioned what would be consideredtimely under sect 1291 so thatinformation would be considered by theexaminer without payment of a fee incontrast to proposed sect 197 which mayrequire a fee

Reply Section 1291 has not beenamended to redefine timeliness Thecomment seems to imply that the feerequirements of sect 197 can be avoidedthrough the use of a protest submittinginformation but such a course of actionmight raise questions regardingcompliance with the duty of candor andgood faith required in dealings with theOffice

Comment 78 One comment statedthat the Office should not drop theacknowledgment of a protest havingbeen filed under sect 1291 in a reissueapplication because theacknowledgment served as anindication that the protest had beenreceived in the examining group fromthe mail room

Reply The suggestion in the commentis not adopted Any perceived benefitfrom retaining the acknowledgment isoutweighed by the administrativeburden it causes There is no goodreason to treat the filing of protests inreissue applications differently from thefiling of protests in original applicationsor from the filing of other papers in theOffice

Comment 79 One commentquestioned whether an application couldbe withdrawn from issue pursuant toproposed sect 1313(b)(5) without admittingunpatentability

Reply There is no requirement thatunpatentability must be admitted beforean application can be withdrawn fromissue pursuant to sect 1313(b)(5) The ruleprovides for applications to bewithdrawn from issue and abandonedfor consideration of information in acontinuing application This differs froma petition under sect 1313(b)(3) based onunpatentability of one or more claims

Comment 80 One commentquestioned whether if an application iswithdrawn from issue pursuant toproposed sect 1313(b)(5) an information

disclosure statement can be submittedin the continuing application undersect 197(b) without a certification

Reply A continuing application istreated like any other application withregard to the times set forth in sect 197(b)Thus for example an informationdisclosure statement could be filedwithout a fee or certification in acontinuing application within threemonths of the filing date of thecontinuing application

Comment 81 One commentquestioned whether an applicationwithdrawn from issue pursuant tosect 1313(b)(5) could have new art andamendments considered in thatapplication rather than in a continuingapplication The comment alsoquestioned the handling of applicationswithdrawn from issue pursuant tosect 1313(b)(3)

Reply The language of sect 1313(b)(5)makes it clear that an applicationwithdrawn from issue thereunder is tobe abandoned without furtherprosecution This differs from anapplication withdrawn from issuepursuant to sect 1313(b)(3) becauseapplicant had admitted theunpatentability of one or more claims

Comment 82 One commentquestioned whether the continuingapplication mentioned in proposedsect 1313(b)(5) could be a file wrappercontinuing applicants under sect 162 andhow applicants can accomplish thewithdrawal from issue under proposedsect 1313(b) late in the prosecution of anapplication

Reply The continuing applicationmentioned in sect 1313(b)(5) can be a filewrapper continuing application undersect 162 Even though sect 162 requires a filewrapper continuing application to befiled before the payment of the issue feethe Office will consider the filing of apetition to withdraw from issue undersect 1313(b)(5) as sufficient grounds towaive that requirement of sect 162 Late inthe prosecution of an application theOffice has difficulty in matching paperswith the application file Papersrequesting that an application bewithdrawn from issue after the issue feeis paid should be directed or preferablyhand-carried to the Office of Petitionsin the Office of the AssistantCommissioner for Patents

Comment 83 Seven commentssuggested that sect 1555(a) should not beamended to require the submission ofall information material topatentability since a reexaminationproceeding is limited to consideration ofpatents and printed publications

Reply The suggestion in thecomments has been adopted Aparagraph (b) which defines what

information is material to patentabilityin a reexamination proceeding has beenadded to the rule

Comment 84 One comment suggestedthat proposed sect 1555(a) should bemodified to make clear that there is noduty of disclosure on employees of acorporate patent owner if the employeesare not substantively involved in thepreparation of the reexaminationrequest of the reexaminationproceeding

Reply The suggestion in the commentto modify the language in sect 1555(a) hasnot been adopted The rule refers toindividuals who are substantivelyinvolved on behalf of the patent ownerin a reexamination proceeding

Comment 85 Two comments statedthat the Office should consider fraud orother inequitable conduct issues ininterference proceedings

Reply The suggestion in thecomments has been adopted The Officewill consider inequitable conduct issuesin interference proceedings asannounced on November 19 1991 in theOfficial Gazette of the Patent andTrademark Office at 1132 Off Gaz PatOff 33

Comment 86 One comment requestedmore examples with regard to proposedsect 1023(c)(10) of what alteration ofcombination of alterations in adeclaration would be consideredmaterial

Reply It is not the function of therules or the rulemaking process toprovide a detailed listing of whatalterations may be considered to beimproper This consideration willnecessarily be made in view of thetotality of the circumstances involvedPractitioners would be well advised toavoid filing applications which containalterations which have not beeninitialed and dated

Comment 87 Two comments statedthat sect 1023(c)(10) should be amended toprohibit knowingly attempting tomislead the Office in the drafting orprosecution of a patent application Onecomment stated that attempted fraud orinequitable conduct would not beprohibited by proposed sect 1023(c)(10)because such conduct would not be aviolation of proposed sect sect 156 and 1555

Reply No amendment is necessary tothe language of sect 1023(c)(10) It shouldbe noted that the duty of candor andgood faith in dealing with the Office isincluded in sect sect 156 and 1555 This dutyincludes a prohibition against knowinglyattempting to mislead the Office

Comment 88 Five comments statedthat it would be unfair to impose thenew disclosure requirements and feeson applications that are pending before

20322032 Fedelul Register I Vol 57 No 12 I Friday January 17 1992 I Rules and Regulations

application is being relied upon for an earlier filing date under 35 USC 120

Reply The suggestion in the comment is not adopted The exception to the requirement for a copy of each item of information to be submHted has been made with regard to prior applications which will normally be available to and considered by the examiner It would not be efficient for the examiner to be required to seek out unrelated application files to obtain a copy of an item of infOlmation when a copy could easily be submitted by applicant

Comment 77 One comment questioned what would be considered timely under sect 1291 so that information would be considered by the examiner without payment of a fee in contrast to proposed sect 197 which may require a fee

Reply Section 1291 has not been amended to redefine timeliness The comment seems to imply that the fee requirements of sect 197 can be avoided through the use of a protest submitting information but such a course of action might raise questions regarding compliance with the duty of candor and good faith required in dealings with the Office

Comment 78 One comment stated that the Office should not drop the acknowledgment of a protest having been filed under sect 1291 in a reissue application because the acknowledgment served as an indication that the protest had been received in the examining group from the mail room -

Reply The suggestion in the comment is not adopted Any perceived benefit from retaining the acknowledgment is outweighed by the administrative burden it causes There is no good reason to treat the filing of protests in reissue applications differently from the filing of protests in original applications or from the filing of other papers in the Office

Comment 79 One comment questioned whether an application could be withdrawn from issue pursuant to proposed sect 1313(b)(S) without admitting unpatentability

Reply There is no requirement that unpatentability must be admitted before an application can be withdrawn from issue pursuant to sect 1313(b)(S) The rule provides for applications to be withdrawn from issue and abandoned for consideration of information in a continuing application This differs from a petition under sect 1313(b)(3) based on unpatentability of one or more claims

Comment 80 One comment questioned whether if an application is withdrawn from issue pursuant to proposed sect 1313(b)(S) an information

disclosure statement can be submitted in the c(lntinuing application under sect 197(b) without a certification

Reply A continuing application is treated like any other application with regard to the times set forth in sect 197(b) Thus for example an information disclosure statement could be filed without a fee or certification in a continuing application within three months of the filing date of the continuing application

Comment 81 One comment questioned whether an application withdrawn from issue pursuant to sect 1313(b)(S) could have new art and amendments considered in that application rather than in a continuing application The comment also questioned the handling of applications withdrawn from issue pursuant to sect 1313(b )(3)

Reply The language of sect 1313(b)(S) makes it clear that an application withdrawn from issue thereunder is to be abandoned without further prosecution This differs from an application withdrawn from issue pursuant to sect 1313(b)(3) because applicant had admitted the unpatentability of one or more claims

Comment 82 One comment questioned whether the continuing application mentioned in proposed sect 1313(b)(S) could be a file wrapper continuing applicants under sect 162 and how applicants can accomplish the withdrawal from issue under proposed sect 1313(b) late in the prosecution of an application

Reply The continuing application mentioned in sect 1313(b)(S) can be a file wrapper continuing application under sect 162 Even though sect 162 requires a file wrapper continuing application to be filed before the payment of the issue fee the Office will consider the filing of a petition to withdraw from issue under sect 1313(b)(S) as sufficient grounds to waive that requirement of sect 162 Late in the prosecution of an application the Office has difficulty in matching papers with the application file Papers requesting that an application be withdrawn from issue after the issue fee is paid should be directed or preferably hand-carried to the Office of Petitions in the Office of the Assistant Commissioner for Patents

Comment 83 Seven comments suggested that sect 1555(a) should not be amended to require the submission of all information material to patentability since a reexamination proceeding is limited to consideration of patents and printed publications

Reply The suggestion in the comments has been adopted A paragraph (b) which defines what

information is material to patentability in a reexamination proceeding has been added to the rule

Comment 84 One comment suggested that proposed sect 1SS5(a) should be modified to make clear that there is no duty of disclosure on employees of a corporate patent owner if the employees are not substantively involved in the preparation of the reexamination request of the reexamination proceeding

Reply The suggestion in the comment to modify the language in sect 15SS(a) has not been adopted The rule refers to individuals who are substantively involved on behalf of the patent owner in a reexamination proceeding

Comment 85 Two comments stated that the Office should consider fraud or other inequitable conduct issues in interference proceedings

Reply The suggestion in the comments has been adopted The Office will consider inequitable conduct issues in interference proceedings as announced on November 19 1991 in the Official Gazette of the Patent and Trademark Office at 1132 Off Gaz Pat Off 33

Comment 86 One comment requested more examples with regard to proposed sect 1023(c)(10) of what alteration of combination of alterations in a declaration would be considered material

Reply It is not the function of the rules or the rule making process to provide a detailed listing of what alterations may be considered to be improper This consideration will necessarily be made in view of the totality of the circumstances involved Practitioners would be well advised to avoid filing applications which contain alterations which have not been initialed and dated

Comment 87 Two comments stated that sect 1023(c)(10) should be amended to prohibit knowingly attempting to mislead the Office in the drafting or prosecution of a patent application One comment stated that attempted fraud or inequitable conduct would not be prohibited by proposed sect 1023(c)(10) because such conduct would not be 8

violation of proposed sect sect 156 and 1555 Reply No amendment is necessary to

the language of sect 1023(c)(10) It should be noted that the duty of candor and good faith in dealing with the Office is included in sect sect 156 and 1555 This duty includes a prohibition against knowingly attempting to mislead the Office

Comment 88 Five comments stated that it would be unfair to impose the new disclosure requirements and fees on applications that are pending before



the Office on the effective date of thenew rule Another comment stated thatthe rules should be immediatelyeffective for all pending applicationswith some grace period for making theinitial disclosure without penalty andwithout fee

Reply The Office will apply the newrules to all applications pending on orfiled on or after the effective date of therules While this implementation maycause some burden on some applicantsother applicants will obtain benefits nototherwise available This decision willalso ease the administrative burden onthe Office in implementing the newrules

Other ConsiderationsThe rule change is in conformity with

the requirements of the RegulatoryFlexibility Act 5 USC 601 et seqExecutive Orders 12291 and 12612 andthe Paperwork Reduction Act of 1980 44USC 3501 et seq

The General Counsel of theDepartment of Commerce has certifiedto the Small Business Administrationthat the rule change will not have asignificant adverse economic impact ona substantial number of small entities(Regulatory Flexibility Act 5 USC605(b)) because the rules as adopted donot require individuals to submitinformation that they are not alreadyaware of and are not already under anobligation to provide to the Office Therules further promote the efficiency ofthe examination process by encouraginga timely submission of an informationdisclosure statement and bysubstantially eliminating rejectionsbased on inequitable conduct therebyreducing the costs to all patentapplicants

The Patent and Trademark Office hasdetermined that this rule change is not amajor rule under Executive Order 12291The annual effect on the economy willbe less than $100 million There will beno major increase in costs or prices forconsumers individual industriesFederal state or geographic regionsThere will be no significant adverseeffects on competition employmentinvestment productivity or innovationor on the ability of the United States-based enterprises to compete withforeign-based enterprises in domestic orexport markets

The Patent and Trademark Office hasalso determined that this rule changehas no Federalism implications affectingthe relationship between the NationalGovernment and the States as outlinedin Executive Order 12612

This rule contains a collection ofinformation requirement subject to thePaperwork Reduction Act which has

previously been approved by the Officeof Management and Budget underControl No 0651-0011 Each informationdisclosure statement is estimated to takeapproximately 30 minutes includingtime for reviewing instructionsgathering and maintaining data neededand completing and reviewing thecollection of information The timeestimate has been reduced from thatstated in the proposal since therequirement for a concise explanation ofthe relevance of each item ofinformation cited in an informationdisclosure statement has been limited toinformation submitted in a languageother than English Send commentsregarding this burden estimate to thePatent and Trademark Office Office ofManagement and Organization and tothe Office of Information and RegulatoryAffairs Office of Management andBudget Washington DC 20503(Attention Paper Reduction Project0651-0011)

List of Subjects

37 CFR Part 1

Administrative practice andprocedure Inventions and patentsReporting and record keepingrequirements Small businesses

37 CFR Part 10

Administrative practice andprocedure Inventions and patentsLawyers Reporting and record keepingrequirements

For the reasons set forth in thepreamble 37 CFR parts I and 10 areamended as follows

PART 1-RULES OF PRACTICE INPATENT CASES

1 The authority citation for part 1continues to read as follows

Authority 35 USC 6 unless otherwisenoted

2 In sect 117 paragraph [i)(1) is revisedand paragraph (p) is added to read asfollows

sect 117 Patent application processing fees

(i)(1) For filing a petition to theCommissioner under a section of thispart listed below which refers to thisparagraph-$13000

sect 112-for access to an assignmentrecord

sect 114-for access to an applicationsect 153-to accord a filing datesect 155-for entry of late priority

paperssect 160-to accord a filing datesect 162-to accord a filing date

sect 197(d)-to consider an informationdisclosure statement

sect 1103-to suspend action inapplication

sect 1177-for divisional reissues toissue separately

sect 1312-for amendment afterpayment of issue fee

sect 1313-to withdraw an applicationfrom issue

sect 1314-to defer issuance of a patentsect 1334-for patent to issue to

assignee assignment recorded latesect 1666(b)-for access to interference

settlement agreement bull

(p) For submission of an informationdisclosure statement under sect 197(c)-$20000

3 Section 128 paragraph (d)(Z) isrevised to read as follows

sect 128 Effect on fees of failure to establishstatus or change status as a small entityd1

(d)(1)

(2) Improperly and with intent todeceive

(i) establishing status as a smallentity or

(ii) paying fees as a small entityshall be considered as a fraud practicedor attempted on the Office

4 Section 151 paragraph (b) isrevised to read as follows

sect 151 General requisites of an application

(b) Applicants are encouraged to filean information disclosure statement Seesect sect 197 and 198

5 Section 152 paragraph (c) isrevised to read as follows

sect 152 Language paper writing margins

(c) Any interlineation erasurecancellation or other alteration of theapplication papers filed should be madebefore the signing of any accompanyingoath or declaration pursuant to sect 163referring to those application papers andshould be dated and initialed or signedby the applicant on the same sheet ofpaper Application papers containingalterations made after the signing of anoath cr declaration referring to thoseappliction papers must be supported bya supplemental oath or declarationunder sect 167(c) After the signing of theoath or declaration referring to theapplication papers amendments may bemade in the manner provided bysectsect 1121 and 1123 through 1125bull bull bull


2033Federal Register I Vol 57 No 12 I Friday January 17 1992 I Rules and Regulations 2033

the Office on the effective date of the new rule Another comment stated that the rules should be immediately effective for all pending applications with some grace period for making the initial disclosure without penalty and without fee

Reply The Office will apply the new rules to all applications pending on or filed on or after the effective date of the rules While this implementation may cause some burden on some applicants other applicants will obtain benefits not otherwise available This decision will also ease the administrative burden on the Office in implementing the new rules

Other Considerations

The rule change is in conformity with the requirements of the Regulatory Flexibility Act 5 USC 601 et seq Executive Orders 12291 and 12612 and the Paperwork Reduction Act of 1980 44 USC 3501 et seq

The General Counsel of the Department of Commerce has certified to the Small Business Administration that the rule change will not have a significant adverse economic impact on a substantial number of small entities (Regulatory Flexibility Act 5 USC 605(b)) because the rules as adopted do not require individuals to submit information that they are not already aware of and are not already under an obligation to provide to the Office The rules further promote the efficiency of the examination process by encouraging a timely submission of an information disclosure statement and by substantially eliminating rejections based on inequitable conduct thereby reducing the costs to all patent applicants

The Patent and Trademark Office has determined that this rule change is not a major rule under Executive Order 12291 The annual effect on the economy will be less than $100 million There will be no major increase in costs or prices for consumers individual industries Federal state or geographic regions There will be no significant adverse effects on competition employment investment productivity or innovation or on the ability of the United Statesshybased enterprises to compete with foreign-based enterprises in domestic or export markets

The Patent and Trademark Office has also determined that this rule change has no Federalism implications affecting the relationship between the National Government and the States as outlined in Executh(e Order 12612

This rule contains a collection of information requirement subject to the Paperwork Reduction Act which has

previously been approved by the Office of Management and Budget under Control No 0651-0011 Each information disclosure statement is estimated to take approximately 30 minutes including time for reviewing instructions gathering and maintaining data needed and completing and reviewing the collection of information The time estimate has been reduced from that stated in the proposal since the requirement for a concise explanation of the relevance of each item of information cited in an information disclosure statement has been limited to information submitted in a language other than English Send comments regarding this burden estimate to the Patent and Trademark Office Office of Management and Organization and to the Office of Information and Regulatory Affairs Office of Management and Budget Washington DC 20503 (Attention Paper Reduction Project 0651-00(1)

List of Subjects

37CFR Part 1

Administrative practice and procedure Inventions and patents Reporting and record keeping requirements Small businesses

37 CFR Part 10

Administrative practice and procedure Inventions and patents Lawyers Reporting and record keeping requirements

For the reasons set forth in the preamble 37 CFR parts 1 and 10 are amended as follows

PART 1-RULES OF PRACTICE IN PATENT CASES

1 The authority citation for part 1 continues to read as follows

Authority 35 USC 6 unless otherwise noted

2 In sect 117 paragraph (i)(l) is revised and paragraph (p) is added to read as follows

sect 117 Patent application proceaalng fees bull bull bull

(i)(l) For filing a petition to the Commissioner under a section of this part listed below which refers to this paragraph-$13000

sect 112-for access to an assignment record

sect 114-for access to an application sect 153-to accord a filing date sect 155-for entry of late priority

papers sect 160-to accord a filing date sect 162-to accord a filing date

sect 197(d)-to consider an information disclosure statement

sect 1103-to suspend action in application

sect 1177-for divisional reissues to issue separately

sect 1312-for amendment after payment of issue fee

sect 1313-to withdraw an application from issue

sect 1314-to defer issuance of a patent sect 1334-for patent to issue to

assignee assignment recorded late sect 1666(b)-for access to interference


(p) For submission of an information disclosure statement under sect 197(c)shy$20000

3 Section 128 paragraph (d)(~) is revised to read as follows

sect 128 Effect on ee of failure to establish status or change status as a mellentity

bull (d)(l) bull bull bull (2) Improperly and with intent to

deceive (i) establishing status as a small

entity or (ii) paying fees as a small entity

shall be considered as a fraud practiced or attempted on the Office

4 Section 151 paragraph (b) is revised to read as follows

sect 151 General requisites of an application bull

(b) Applicants are encouraged to file an information disclosure statement See sect sect 197 and 198

bull 5 Section 152 paragraph (c) is

revised to read as follows

sect 152 Language paper writing margins bull

(c) Any interlineation erasure cancellation or other alteration of the application papers filed should be made before the signing of any accompanying oath or declaration pursuant to sect 163 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 Gr declaration referring to those applici1tion papers must be supported by a supphmental oath or declaration under sect 167(c) After the signing of the oath or declaration referring to the application papers amendments may be made in the manner provided by sect sect 1121 and 1123 through 1125

bull bull 6 Section 156 is revised to read as

follows



sect 156 Duty to disclose Informationmaterial to patentability

(a) A patent by its very nature isaffected with a public interest Thepublic interest is best served and themost effective patent examinationoccurs when at the time an applicationis being examined the Office is awareof and evaluates the teachings of allinformation material to patentabilityEach individual associated with thefiling and prosecution of a patentapplication has a duty of candor andgood faith in dealing with the Officewhich includes a duty to disclose to theOffice all information known to thatindividual to be material to patentabilityas defined in this section The duty todisclose information exists with respectto each pending claim until the claim iscancellbd or withdrawn fromconsideration or the applicationbecomes abandoned Informationmaterial to the patentability of a claimthat is cancelled or withdrawn fromconsideration need not be submitted ifthe information is not material to thepatentability of any claim remainingunder consideration in the applicationThere is no duty to submit informationwhich is not material to thepatentability of any existing claim Theduty to disclose all information knownto be material to patentability is deemedto be satisfied if all information knownto be material to patentability of anyclaim issued in a patentwas cited by theOffice or submitted to the Office in themanner prescribed by sectsect 197(b)-(d) and198 However no patent will be grantedon an application in connection withwhich fraud on the Office was practicedor attempted or the duty of disclosurewas violated through bad faith orintentional misconduct The Officeencourages applicants to carefullyexamine

(1) prior art cited in search reports ofa foreign patent office in a counterpartapplication and

(2) the closest information over whichindividuals associated with the filing orprosecution of a patent applicationbelieve any pending claim patentablydefines to make sure that any materialinformation contained therein isdisclosed to the Office

(b) Under this section information ismaterial to patentability when it is notcumulative to information already ofrecord or being made of record in theapplication and

(1) It establishes by itself or incombination with other information aprima facie case of unpatentability of aclaim or

(2) It refutes or is inconsistent with aposition the applicant takes in

(i) Opposing an argument ofunpatentability relied on by the Officeor

(ii) Asserting an argument ofpatentability

A prima facie case of unpatentability isestablished when the informationcompels a conclusion that a claim isunpatentable under the preponderanceof evidence burden-of-proof standardgiving each term in the claim itsbroadest easonable constructionconsistent with the specification andbefore any consideration is given toevidence which may be submitted in anattempt to establish a contraryconclusion of patentability

(c) Individuals associated with thefiling or prosecution of a patentapplication within the meaning of thissection are

(1) Each inventor named in theapplication

(2) Each attorney or agent whoprepares or prosecutes the applicationand

(3) Every other person who issubstantively involved in thepreparation or prosecution of theapplication and who is associated withthe inventor with the assignee or withanyone to whom there is an obligationto assign the application

(d) Individuals other than theattorney agent or inventor may complywith this section by disclosinginformation to the attorney agent orinventor

7 Section 163 paragraphs (b)(3) and(d) are revised to read as follows

sect 163 Oath or declaration

(b) (3) Acknowledges the duty to disclose

to the Office all information known tothe person to be material topatentability as defined in sect 156

(d) In any continuation-in-partapplication filed under the conditionsspecified in 35 USC 120 whichdiscloses and claims subject matter inaddition to that disclosed in the priorcopending application the oath ordeclaration must also state that theperson making the oath or declarationacknowledges the duty to disclose to theOffice all information known to theperson to be material to patentability asdefined in sect 156 which becameavailable between the filing date of theprior application and the national orPCT international filing date of thecontinuation-in-part application

8 Section 167 is amended by adding anew paragraph (c) to read as follows

sect 167 Supplemental oath or declaration

(c) A supplemental oath or declarationmeeting the requirements of sect 163 mustalso be filed if the application wasaltered after the oath or declaration wassigned or if the oath or declaration wassigned

(1) In blank(2) Without review thereof by the

person making the oath or declarationor

(3) Without review of thespecification including the claims asrequired by sect 163(b)(1)


sect 197 Filing of Information disclosurestatement

(a) In order to have informationconsidered by the Office during thependency of a patent application aninformation disclosure statement incompliance with sect 198 should be filed inaccordance with this section

(b) An information disclosurestatement shall be considered by theOffice if filed

(1) Within three months of the filingdate of a national application

(2) Within three months of the date ofentry of the national stage as set forth insect 1491 in an international applicationor

(3) Before the mailing date of a firstOffice action on the meritswhichever event occurs last

(c) An information disclosurestatement shall be considered by theOffice if filed after the period specifiedin paragraph (b) of this section butbefore the mailing date of either

(1) A final action under sect 1113 or(2) A notice of allowance under

sect 1311whichever occurs first provided thestatement is accompanied by either acertification as specified in paragraph(3) of this section or the fee set forth insect 117(p)

(d) An information disclosurestatement shall be considered by theOffice if filed after the mailing date ofeither


sect 1311whichever occurs first but beforepayment of the issue fee provided thestatement is accompanied by

(i) A certification as specified inparagraph (e) of this section

(ii) A petition requestingconsideration of the informationdisclosure statement and

20342034 Federal Register I Vol 57 No 12 I Friday January 17 1992 I Rules and Regulations

sect 156 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 cancellld 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 patentwas cited by the Office or submitted to the Office in the manner prescribed by sectsect 197(bHd) and 198 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 applicationand

(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 lgteasonable 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

7 Section 163 paragraphs (b)(3) and (d) are revised to read as follows

sect 163 Oath or declaration bull

(b)middot bull bull (3) Acknowledges the duty to disclose

to the Office all information known to the person to be material to patentability as defined in sect 156

bull bull (d) In any continuation-in-part

application filed under the conditions specified in 35 USC 120 which discloses and claims subject matter in addition to that disclosed in the prior copending application the oath or declaration must also 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 sect 156 which became available between the filing date of the prior application and the national or PCT international filing date of the continuation-in-part application

8 Section 167 is amended by adding a new paragraph (c) to read as follows


(c) A supplemental oath or declaration meeting the requirements of sect 163 must also be filed if the application was altered after the oath or declaration was signed or if the oath or declaration was signed

(1) In blank (2) Without review thereof by the

person making the oath or declaration or

(3) Without review of the specification including the claims as required by sect 163(b)[1)

9 Section 197 is revised to read as follows

sect 197 Filing of Information disclosure statement

(a) In order to have information considered by the Office during the pendency of a patent application an information disclosure statement in compliance with sect 198 should be filed in accordance with this section

(b) An information disclosure statement shall be considered by the Office if filed

(1) Within three months of the filing date of a national application

(2) Within three months of the date of entry of the national stage as set forth in sect 1491 in an international application or

(3) Before the mailing date of a first Office action on the merits whichever event occurs last

(c) An information disclosure statement shall be considered by the Office if filed after the period specified in paragraph (b) of this section but before the mailing date of either

(1) A final action under sect 1113 or (2) A notice of allowance under

sect 1311 whichever occurs first provided the statement is accompanied by either a certification as specified in paragraph (3) of this section or the fee set forth in sect 117(p)

(d) An information disclosure statement shall be considered by the Office if filed after the mailing date of either


sect 1311 whichever occurs first but before payment of the issue fee provided the statement is accompanied by

(i) A certification as specified in paragraph (e) of this section

(ii) A petition requesting consideration of the information disclosure statement and



(iii) The petition fee set forth insect 117(i)(1)

(e) A certification under this sectionmust state either

(1) That each item of informationcontained in the information disclosurestatement was cited in a communicationfrom a foreign patent office in acounterpart foreign application not morethan three months prior to the filing ofthe statement or

(2) That no item of informationcontained in the information disclosurestatement was cited in a communicationfrom a foreign patent office in acounterpart foreign application or to theknowledge of the person signing thecertification after making reasonableinquiry was known to any individualdesignated in sect 156(c) more than threemonths prior to the filing of thestatement

(f) No extensions of time for filing aninformation disclosure statement arepermitted under sect 1136 If a bona fideattempt is made to comply with sect 198but part of the required content isinadvertently omitted additional timemay be given to enable full compliance

(g) An information disclosurestatement filed in accordance with thissection shall not be construed as arepresentation that a search has beenmade

(h) The filing of an informationdisclosure statement shall not beconstrued to be an admission that theinformation cited in the statement is oris considered to be material topatentability as defined in sect 156(b)

(i) Information disclosure statementsfiled before the grant of a patent whichdo not comply with this section andsect 198 will be placed in the file but willnot be considered by the Office


sect 198 Content of Information disclosurestatement

(a) Any information disclosurestatement filed under sect 197 shallinclude

(1) A list of all patents publicationsor other information submitted forconsideration by the Office

(2) A legible copy of(i) Each US and foreign patent(ii) Each publication or that portion

which caused it to be listed and(iii) All other information or that

portion which caused it to be listedexcept that no copy of a US patentapplication need be included and

(3) A concise explanation of therelevance as it is presently understoodby the individual designated in sect 150(c)most knowledgeable about the contentof the information of each patent

publication or other information listedthat is not in the English language Theconcise explanation may be eitherseparate from the specification orincorporated therein

(b) Each US patent listed in aninformation disclosure statement shallbe identified by patentee patent numberand issue date Each foreign patent orpublished foreign patent applicationshall be identified by the country orpatent office which issued the patent orpublished the application anappropriate document number and thepublication date indicated on the patentor published application Eachpublication shall be identified by author(if any) title relevant pages of thepublication date and place ofpublication

(c) When the disclosures of two ormore patents or publications listed in aninformation disclosure statement aresubstantively cumulative a copy of oneof the patents or publications may besubmitted without copies of the otherpatents or publications provided that astatement is made that these otherpatents or publications are cumulativeIf a written English-language translationof a non-English language document orportion thereof is within the possessioncustody or control of or is readilyavailable to any individual designatedin sect 156(c) a copy of the translationshall accompany the statement

(d) A copy of any patent publicationor other information listed in aninformation disclosure statement is notrequired to be provided if it waspreviously cited by or submitted to theOffice in a prior application providedthat the prior application is properlyidentified in the statement and reliedupon for an earlier filing date under 35USC 120

sect 199 [Removed]

11 Section 199 is removed andreserved

12 Section 1175 paragraph (a)(7) isrevised to read as follows

sect 1175 Reissue oath or declaration(a]

(7) Acknowledging the duty todisclose to the Office all informationknown to applicants to be material topatentability as defined in sect 156

sect 1193 [Amended]13 Section 1193(c) is removed and

reserved14 Section 1291 paragraphs (a) and

(c) are revised to read as follows

sect 1291 Protests by the public againstpending applications

(a) Protests by a member of the publicagainst pending applications will bereferred to the examiner having chargeof the subject matter involved A protestspecifically identifying the applicationto which the protest is directed will beentered in the application file if

(1) The protest is timely submittedand

(2) The protest is either served uponthe applicant in accordance with sect 1248or filed with the Office in duplicate inthe event service is not possibleProtests raising fraud or otherinequitable conduct issues will beentered in the application file generallywithout comment on those issuesProtests which do not adequatelyidentify a pending patent applicationwill be disposed of and will not beconsidered by the Office

(c) A member of the public filing aprotest in an application underparagraph (a) of this section will notreceive any communications from theOffice relating to the protest other thanthe return of a self-addressed postcardwhich the member of the public mayinclude with the protest in order toreceive an acknowledgment by theOffice that the protest has beenreceived The Office may communicatewith the applicant regarding any protestand may require the applicant torespond to specific questions raised bythe protest In the absence of a requestby the Office an applicant has no dutyto and need not respond to a protestThe limited involvement of the memberof the public filing a protest pursuant toparagraph (a) of this section ends withthe filing of the protest and no furthersubmission on behalf of the protestorwill be considered unless suchsubmission raises new issues whichcould not have been earlier presented


sect 1313 Withdrawal from Issue t

(b) When the issue fee has been paidthe application will not be withdrawnfrom issue for any reason except

(1) A mistake on the part of the Office(2) A violation of sect 156 or illegality in

the application(3) Unpatentability of one or more

claims(4) For interference or(5) For abandonment to permit

consideration of an informationdisclosure statement under sect 197 in acontinuing application

2035Federal Register I Vol 57 No 12 I Friday January 17 1992 I Rules and Regulations 2035 bullbull

(iii) The petition fee set forth in sect 117(i)(1)

(e) A certification under this section must state either

(1) That each item of information contained in the information disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the 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 or to the knowledge of the person signing the certification after making reasonable inquiry was known to any individual designated in sect 156(c) more than three months prior to the filing of the statement

(f) No extensions of time for filing an information disclosure statement are permitted under sect 1136 If a bona fide attempt is made to comply with sect 198 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 this 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 sect 156(b)

(i) Information disclosure statements filed before the grant of a patent which do not comply with this section and sect 198 will be placed in the file but will not be considered by the Office


sect 198 Content of Information disclosure statement

(a) Any information disclosure statement filed under sect 197 shall include

(1) A list of all patents publications or other information submitted for consideration by the Office

(2) A legible copy of (i) Each uS and foreign patent (ii) Each publication or that portion

which caused it to be listed and (iii) All other information or that

portion which caused it to be listed except that no copy of a uS patent application need be included and

(3) A concise explanation of the relevance as it is presently understood by the individual deSignated in sect 156(c) most knowledgeable about the content of the information of each patent

m bull

publication or other information listed that is not in the English language The concise explanation may be either separate from the specification or incorporated therein

(b) Each US patent listed in an information disclosure statement shall be identified by patentee patent number and issue date Each foreign patent or published foreign patent application shall 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 Each publication shall be identified by 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 may be submitted without copies of the other patents or publications provided that a statement is made that these other patents or publications are cumulative 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 sect 156(c) a copy of the translation shall accompany the statement

(d) A copy of any patent publication or other information listed in an information disclosure statement is not required to be provided if it was previously cited by or submitted to the Office in a prior application provided that the prior application is properly identified in the statement and relied upon for an earlier filing date under 35 USC120

sect 199 [Removed]

11 Section 199 is removed and reserved

12 Section 1175 paragraph (a)(7) is revised to read as follows

sect 1175 Reissue oath or declaration

(a) bull bull (7) Acknowledging the duty to

disclose to the Office all information known to applicants to be material to patentability as defined in sect 156

bull bull bull bull

sect 1193 [Amended]

13 Section 1193(c) is removed and reserved

14 Section 1291 paragraphs (aJ and (c) are revised to read as follows

sect 1291 Protests by the public against pending applications

(a) Protests by a member of the public against pending applications will be referred to the examiner having charge of the subject matter involved A protest specifically identifying the application to which the protest is directed will be entered in the application file if

(1) The protest is timely submitted and

(2) The protest is either served upon the applicant in accordance with sect 1248 or filed with the Office in duplicate in the event service is not possible Protests raising fraud or other inequitable conduct issues will be entered in the application file generally without comment on those issues Protests which do not adequately identify a pending patent application will be disposed of and will not be considered by the Office

bull bull (c) A member of the public filing a

protest in an application under paragraph (a) ofthis section will not receive any communications 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 acknowledgment by the Office that the protest has been received The Office may communicate with the applicant regarding any protest and may require the applicant to respond to specific questions raised by the protest In the absence of a request by the Office an applicant has no duty to and need not respond to a protest The limited involvement of the member of the public filing a protest pursuant to paragraph (a) of this section ends with the filing of the protest and no further submission on behalf of the protestor will be considered unless such submission raises new issues which could not have been earlier presented


sect 1313 Withdrawal from Issue bull bull bull

(b) When the issue fee has been paid the application will not be withdrawn from issue for any reason except

(1) A mistake on the part of the Office (2) A violation of 1156 or illegality in

the application (3) Unpatentability of one or more

claims (4) For interference or (5) For abandonment to permit

consideration of an information disclosure statement under 1197 in a continuing application


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FORM AND CONTENT OF APPLICATION

Relatively short computer program listings (10 pages orless) must be submitted on paper and will be printed as part ofthe patent If the computer program listing is II or more pagesin length it may be submitted on either paper or microfichealthough microfiche is preferred

Copies of publicly available computer program listingsgtarelt available from the Patent and Trademark Office onpaper gtand on microfiche at the cost set forth in 37 CFR119(a)(5) and (6)lt

OTHER INFORMATION

The micrographic standards referred to in gt37 CFRlt196(b)(2) may be obtained from either the National Microgra-phic Association 8719 Colesville Road Silver Spring Mary-land 20910 or the American National Standards Institute 1430Broadway New York New York 10018

The effect of gt37 CFRlt 196 is that if a computer programlisting (printout) is 11 or more pages long the applicant maysubmit such listing in the form of microfiche Relatively shortcomputer program listings (10 pages or less) must be submittedon paper and will be printed as part of the patent as in the pastWhen the computer program listing is 11 or more pages inlength it may be submitted on either paper or microfichealthough microfiche is preferred A microfiche filed with apatent application will be referred to as a Microfiche Appen-dix and will be identified as such on the front page of thepatent but will not be part of the printed patent MicroficheAppendix denotes the total microfiche whether only one ortwo or more One microfiche is equivalent to a maximum ofeither 63 (9x7) or 98 (14x7) frames (pages) or less

The face of the file jacket will bear a label to denote that aMicrofiche Appendix is included in the application A statementmust be included in the specification to the effect that a micro-fiche appendix is included in the application The specificationentry must appear at the beginning of the specification immedi-ately following any cross reference to related applications 37CFR 177(c)(2) The patent front page and the Official Gazetteentry will both contain information as to the number of micro-fiche and frames of computer program listings appearing in themicrofiche appendix

When an application containing microfiche is received inthe Correspondence gtand Mail Divisionlt a special pocketwill be affixed to the center section of the inside of the filewrapper underneath all papers and the microfiche insertedtherein The application file will then proceed on its normalcourse and when it reaches the Application gtBranchlt a labelwhich sticks up above the file wrapper will be placed at thecenter section of the face of the wrapper When the applicationfile reaches the gtMicrographicslt Division the MicroficheAppendix label will be placed on the face of the file wrapperWhen the Allowed Files gtand Assembly Branchlt of gttheOffice of Publicationslt receives the application file the personplacing the patent number on the face of the file upon seeing theMicrofiche Appendix label will give the file to the Supervisorwho will call gtMicrographicslt Division and give the serialnumber and patent number and request copies of the micro-

fiche gtMicrographicslt Division personnel will then put thepatent number on the microfiche(s) making certain each micro-fiche is the most recent and numbering each correctly eg 1 of1 1 of 2 etc Upon completion two copies will be produced andprovided to Allowed gtand Assembly Branchlt Files - one forthe grant head and one for the file wrapper

At the time of assembly the Microfiche Appendix will beplaced inside the grant head behind the patent grant for eyelet-ting ribboning and mailing to the patenteeattorney During thesigning of the grant heads by the Attesting Officer the patentwill be checked to assure proper assembly prior to mailing

609 Information Disclosure Statement [R-14]

37 CFR 197 Filing of information disclosure statement(a) gtIn order to have information considered by the Office

during the pendency of a patent application an information disclosurestatement in compliance with sect 198 should be filed in accordance withthis section

(b) An information disclosure statement shall be considered by theOffice if filed

(1) Within three months of the filing date of a national application(2) Within three months of the date of entry of the national stage

as set forth in sect 1491 in an international application or(3) Before the mailing date of a first Office action on the meritswhichever event occurs last(c) An information disclosure statement shall be considered by the

Office if filed after the period specified in paragraph (b) of this sectionbut before the mailing date of either

(1) A final action under sect 1113 or(2) A notice of allowance under sect 1311

whichever occurs first provided the statement is accompanied byeither a certification as specified in paragraph (3) of this section or thefee set forth in sect 117(p)

(d) An information disclosure statement shall be considered by theOffice if filed after the mailing date of either


whichever occurs first but before payment of the issue feeprovided the statement is accompanied by

(i) A certification as specified in paragraph (e) of this section(ii) A petition requesting consideration of the information dis-

closure statement and(iii) The petition fee set forth in sect 117(i)(1)

(e) A certification under this section must state either(1) That each item of information contained in the information

disclosure statement was cited in a communication from a foreignpatent office in a counterpart foreign application not more than threemonths prior to the filing of the statement or

(2) That no item of information contained in the informationdisclosure statement was cited in a communication from a foreignpatent office in a counterpart foreign application or to the knowledgeof the person signing the certification after making reasonable inquirywas known to any individual designated in sect 156(c) more than threemonths prior to the filing of the statement

(f) No extensions of time for filing an information disclosurestatement are permitted under sect 1136 If a bona fide attempt is madeto comply with sect 198 but part of the required content is inadvertentlyomitted additional time may be given to enable full compliance

(g) An information disclosure statement filed in accordance withthis section shall not be construed as a representation that a search hasbeen made

Rev 14 Nov 1992

609

600 -65

PARTS FORM AND CONTENT OF APPUCA TION 609

Relatively short computer program listings (10 pages or less) must be submitted on paper and will be printed as part of the patent If the computer program listing is 11 or more pages in length it may be submitted on either paper or microfiche although microfiche is preferred

Copies of publicly available computer program listings gtarelt available from the Patent and Trademark Office on paper gtand on microfiche at the cost set forth in 37 CFR 119(a)(5) and (6)lt

OTHER INFORMATION

The micrographic standards referred to in gt37 CFRlt 196(b )(2) may be obtained from either the National Micrograshyphic Association 8719 Colesville Road Silver Spring Maryshyland 20910 or the Alnerican National Standards Institute 1430 Broadway New York New York 10018

The effect of gt37 CFRlt 196 is that if a computer program listing (printout) is 11 or more pages long the applicant may submit such listing in the form of microfiche Relatively short computer program listings (10 pages or less) must be submitted on paper and will be printed as part of the patent as in the past When the computer program listing is 11 or more pages in length it may be submitted on either paper or microfiche although microfiche is preferred A microfiche filed with a patent application will be referred to as a Microfiche Appenshydix and will be identified as such on the front page of the patent but will not be part of the printed patent Microfiche Appendix denotes the total microfiche whether only one or two or more One microfiche is equivalent to a maximum of either 63 (9x7) or 98 (14x7) frames (pages) or less

The face of the file jacket will bear a label to denote that a Microfiche Appendix is included in the application A statement must be included in the specification to the effect that a microshyfiche appendix is included in the application The specification entry must appear at the beginning of the specification immedishyately following any cross reference to related applications 37 CFR 177(c)(2) The patent front page and the Official Gazette entry will both contain information as to the number of microshyfiche and frames of computer program listings appearing in the microfiche appendix

When an application containing microfiche is received in the Correspondence gtand Mail Divisionlt a special pocket will be affixed to the center section of the inside of the file wrapper underneath all papers and the microfiche inserted therein The application file will then proceed on its normal course and when it reaches the Application gtBranchlt a label which sticks up above the file wrapper will be placed at the center section of the face of the wrapper When the application file reaches the gtMicrographicslt Division the Microfiche Appendix label will be placed on the face of the file wrapper When the Allowed Files gtand Assembly Branchlt of gtthe Office of Publicationslt receives the application file the person placing the patent number on the face of the file upon seeing the Microfiche Appendix label will give the file to the Supervisor who will call gtMicrographicslt Division and give the serial number and patent number and request copies of the micro-

fiche gtMicrographicslt Division personnel will then put the patent number on the microfiche(s) making certain each microshyfiche is the most recent and numbering each correctly eg 1 of 1 1 of 2 etc Upon completion two copies will be produced and provided to Allowed gtand Assembly Branchlt Files - one for the grant head and one for the file wrapper

At the time of assembly the Microfiche Appendix will be placed inside the grant head behind the patent grant for eyeletshyting ribboning and mailing to the patenteeattorney During the signing of the grant heads by the Attesting Officer the patent will be checked to assure proper assembly prior to mailing

609 Information Disclosure Statement [Rmiddot14]

37 CFR 197 Filing of information disclosure statement (a) gtIn order to have information considered by the Office

during the pendency of a patent application an information disclosure statement in compliance with sect 198 should be filed in accordance with this section


(1) Within three months ofthe filing date of a national application (2) Within three months of the date of entry of the national stage

as set forth in sect 1491 in an international application or (3) Before the mailing date of a first Office action on the merits whichever event occurs last (c) An information disclosure statement shall be considered by the

Office if filed after the period specified in paragraph (b) of this section but before the mailing date of either

(1) A fmal action under sect 1113 or (2) A notice of allowance under sect 1311

whichever occurs first provided the statement is accompanied by either a certification as specified in paragraph (3) of this section or the fee set forth in sect 117(p)


(1) A final action under sect 1113 or (2) A notice of allowance under sect 1311

whichever occurs first but before payment of the issue fee provided the statement is accompanied by

(i) A certification as specified in paragraph (e) of this section (ii) A petition requesting consideration of the information disshy

closure statement and (iii) The petition fee set forth in sect 117(i)(I)

(e) A certification under this section must state either (1) That each item of information contained in the information

disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement or



(g) An information disclosure statement med in accordance with this section shall not be construed as a representation that a search has been made

600 - 65 Rev 14 Nov 1992

17HeinOnline -- 5 MPEP 600-65 November 1992


(h) The filing of an information disclosure statement shall not beconstrued to be an admission that the information cited in the statementis or is considered to be material to patentability as defined insect 156(b)

(i) Information disclosure statements filed before the grant of apatent which do not comply with this section and sect 198 will be placedin the file but will not be considered by the Officelt

[Amended 57 FR 2021 Jan 17 1992 effective Mar 16 1992]

37 CFR 198 Content of information disclosure statement(a) gtAny information disclosure statement filed under sect 197

shall include(1) A list of all patents publications or other information submit-

ted for consideration by the Office(2) A legible copy of

(i) Each US and foreign patent(ii) Each publication or that portion which caused it to be listed

and(iii) All other information or that portion which caused it to be

listed except that no copy of aUS patent application need be includedand

(3) A concise explanation of the relevance as it is presentlyunderstood by the individual designated in sect 156(c) most knowledge-able about the content of the information of each patent publicationor other information listed that is not in the English language Theconcise explanation may be either separate from the specification orincorporated therein

(b) Each US patent listed in an information disclosure statementshall be identified by patentee patent number and issue date Eachforeign patent or published foreign patent application shall be identi-fied by the country or patent office which issued the patent or publishedthe application an appropriate document number and the publicationdate indicated on the patent or published application Each publicationshall be identified by author (if any) title relevant pages of thepublication date and place of publication

(c) When the disclosures of two or more patents or publicationslisted in an information disclosure statement are substantively cumu-lative a copy of one of the patents or publications may be submittedwithout copies of the other patents or publications provided that astatement is made that these other patents or publications are cumula-tive If a written English-language translation of a non-English lan-guage document or portion thereof is within the possession custodyor control of or is readily available to any individual designated insect 156(c) a copy of the translation shall accompany the statement

(d) A copy of any patent publication or other information listed inan information disclosure statement is not required to be provided if itwas previously cited by or submitted to the Office in a prior applicationprovided that the prior application is properly identified in the state-

ment and relied upon for an earlier filing date under 35 USC 120lt[Amended 57 FR 2021 Jan 17 1992 effective Mar 16 1992]

gtApplicants and other individuals substantively involved

with the preparation andor prosecution of a patent applicationhave a duty to submit to the Office information which is materialto patentability as defined in 37 CFR 156 These individualsalso may want the Office to consider information for a varietyof other reasons eg without first determining whether theinformation meets any particular standard of materiality orbecause another patent office considered the information to berelevant in a counterpart or related patent application filed inanother country or to make sure that the examiner has anopportunity to consider the same information that was consid-

eredby the individuals that were substantively involved with thepreparation or prosecution of a patent application

An information disclosure statement filed in accordancewith the provisions of 37 CFR 197 and 198 provides theprocedure available to an applicant to submit information to theOffice so that the information will be considered by the exam-iner assigned to the application The requirements for thecontent of a statement have been simplified in the new ruleswhich became effective on March 16 1992 to encourageindividuals associated in a substantive way with the filing andprosecution of a patent application to submit information to theOffice so the examiner can determine its relevance to theclaimed invention The procedures for submitting an informa-tion disclosure statement under the new rules are designed toencourage individuals to submit information to the Officepromptly

In order to have information considered by the Office duringthe pendency of a patent application an information disclosurestatement in compliance with 37 CFR 198 as to content must befiled in accordance with the procedural requirements of 37 CFR197 The requirements as to content are discussed in A belowThe requirements based on the time of filing the statement arediscussed in B below Examiner handling of information disclo-sure statements is discussed in C below

The Office has set forth the minimum requirements forinformation to be considered in 37 CFR 197 and 198 Once theminimum requirements are met the examiner has an obligationto consider the information These rules provide certainty forthe public by defining the requirements for submitting informa-tion to the Office so that the Office will consider informationbefore a patent is granted Information submitted to the Officethat does not comply with the requirements of 37 CFR 197 and198 will not be considered by the Office but will be placed inthe application file

The filing of an information disclosure statement shall notbe construed as a representation that a search has been made 37CFR 197(g) There is no requirement that an applicant for apatent make a patentability search Further the filing of aninformation disclosure statement shall not be construed to be anadmission that the information cited in the statement is or isconsidered to be material to patentability as defined in 37 CFR156(b) 37 CFR 197(h) See MPEP sect 70602(b) regardingadmissions by applicant

Multiple information disclosure statements may be filed ina single application and they will be considered provided eachis in compliance with the appropriate requirements Use of formPTO- 1449 Information Disclosure Citation is encouraged asa means to provide the required list of information See C(2)below

Information which is cited or submitted to the Office in theparent application of a file wrapper continuing applicationunder 37 CFR 162 will be part of the file before the examinerand need not be resubmitted in the continuing applicationLikewise the examiner will consider information cited orsubmitted to the Office in a parent application when examininga continuing application and a list of the information need notbe submitted in the continuing application unless applicant

609

600-66Rev 14 Nov 1992

609 MANUALOFPATENTEXAM~NGPROCEDURE


(i) Information disclosure statements filed before the grant of a patent which do not comply with this section and sect 198 will be placed in the file but will not be considered by the Officelt

[Amended 57 FR 2021 Jan 17 1992 effective Mar 16 1992)

37 CFR 198 Content ofinformaJion disclosure staJement (a) gtAny information disclosure statement filed under sect 197

shall include (1) A list of all patents publications or other information submitshy

ted for consideration by the Office (2) A legible copy of

(i) Each US and foreign patent (ii) Each publication or that portion which caused it to be listed

and (iii) All other information or that portion which caused it to be

listed except that no copy of a US patent application need be included and

(3) A concise explanation of the relevance as it is presently understood by the individual designated in sect 156(c) most knowledgeshyable 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 the specification or incorporated therein

(b) Each US patent listed in an information disclosure statement shall be identified by patentee patent number and issue date Each foreign patent or published foreign patent application shall be identishyfied 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 Each publication shall be identified by 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 cumushylative a copy of one of the patents or publications may be submitted without copies of the other patents or publications provided that a statement is made that these other patents or publications are cumulashytive If a written English-language translation of a non-English lanshyguage document or portion thereof is within the possession custody or control of or is readily available to any individual designated in sect 156(c) a copy of the translation shall accompany the statement

(d) A copy of any patent publication or other information listed in an information disclosure statement is not required to be provided if it was previously cited by or submitted to the Office in a prior application provided that the prior application is properly identified in the stateshyment and relied upon for an earlier filing date under 35 USC 120lt


gtApplicants andotherindividuals substantively involved with the preparation andor prosecution of a patent application have aduty to submit to the Office infonnation which is material to patentability as defined in 37 CFR 156 These individuals also may want the Office to consider infonnation for a variety of other reasons eg without first determining whether the information meets any particular standard of materiality or because another patent office considered the information to be relevant in a counterpart or related patent application filed in another country or to make sure that the examiner has an opportunity to consider the same infonnation that was consid-

ered by the individuals that were substantively involved with the preparation or prosecution of a patent application

An infonnation disclosure statement filed in accordance with the provisions of 37 CFR 197 and 198 provides the procedure available to an applicant to submit information to the Office so that the infonnation will be considered by the examshyiner assigned to the application The requirements for the content of a statement have been simplified in the new rules which became effective on March 16 1992 to encourage individuals associated in a substantive way with the filing and prosecution of a patent application to submit information to the Office so the examiner can determine its relevance to the claimed invention The procedures for submitting an infonnashytion disclosure statement under the new rules are designed to encourage individuals to submit information to the Office promptly

In order to have information considered by the Office during the pendency of a patent application an information disclosure statement in compliance with 37 CFR 198 as to content must be filed in accordance with the procedural requirements of 37 CFR 197 The requirements as to content are discussed in Abelow The requirements based on the time of filing the statement are discussed in B below Examiner handling of information discloshysure statements is discussed in C below

The Office has set forth the minimum requirements for information to be considered in 37 CFR 197 and 198 Once the minimum requirements are met the examiner has an obligation to consider the information These rules provide certainty for the public by defining the requirements for submitting informashytion to the Office so that the Office will consider information before a patent is granted Information submitted to the Office that does not comply with the requirements of 37 CFR 197 and 198 will not be considered by the Office but will be placed in the application file

The filing of an infonnation disclosure statement shall not be construed as a representation that a search has been made 37 CFR 197(g) There is no requirement that an applicant for a patent make a patentability search Further the filing of an information disclosure statement shall not be construed to be an admission that the infonnation cited in the statement is or is considered to be material to patentability as defined in 37 CFR 156(b) 37 CFR 197(h) See MPEP sect 70602(b) regarding admissions by applicant

Multiple information disclosure statements may be filed in a single application and they will be considered provided each is in compliance with the appropriate requirements Use of form PTO-I449 Infonnation Disclosure Citation is encouraged as a means to provide the required list of information See C(2) below

Infonnation which is cited or submitted to the Office in the parent application of a file wrapper continuing application under 37 CFR 162 will be part of the file before the examiner and need not be resubmitted in the continuing application Likewise the examiner will consider information cited or submitted to the Office in a parent application when examining a continuing application and a list of the infonnation need not be submitted in the continuing application ul)less applicant

Rev 14 Nov 1992 600-66


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desires the information to be printed on the patent

An information disclosure statement must comply with theprovisions of 37 CFR 198 as to content in order to be consideredby the Office Each information disclosure statement mustcomply with the applicable provisions of A(1) A(2) and A(3)below

A (1)Each information disclosure statement must include a listof all patents publications or other information submitted forconsideration by the Office

37 CFR 198(b) requires that each US patent listed in aninformation disclosure statement be identified by patenteepatent number and issue date Each foreign patent or publishedforeign patent application must be identified by the country orpatent office which issued the patent or published the applica-tion an appropriate document number and the publication dateindicated on the patent or published application Each publica-tion must be identified by author (if any) title relevant pages ofthe publication date (at least month and year) and place ofpublication The place of publication refers to the name of thejournal magazine or other publication in which the informationbeing submitted was published

To comply with this requirement the list may not be incor-porated into the specification butmustbe submitted in a separatepaper A separate list is required so that it is easy to confirm thatapplicant intends to submit an information disclosure statementand because it provides a readily available checklist for theexaminer to indicate which identified documents have beenconsidered A copy of a separate list will also provide a simplemeans of communication to applicant to indicate the listeddocuments that have been considered and those listed docu-ments that have not been considered Use of form PTO-1449Information Disclosure Citation is encouraged See C(2)below

AM In addition to the list each information disclosure state-ment must also include a legible copy of

(i)Each US and foreign patent(ii)Each publication or that portion which caused it to be

listed and(iii)Al other information or that portion which caused it to

be listed except that no copy of a US patent application needbe included

There are exceptions to this general rule that a copy must beprovided First 37 CFR 198(d) states that a copy of any patentpublication or other information listed in an information disclo-sure statement is not required to be provided if it was previouslycited by or submitted to the Office in a prior applicationprovided that the prior application is properly identified in thestatement and relied upon for an earlier filing date under 35USC 120 The examiner will consider information cited or

submitted to the Office in a prior application relied on under 35USC 120 This exception to the requirement for copies ofinformation does not apply to information which was cited in aninternational application under the Patent Cooperation TreatyIf the information cited or submitted in the prior application wasnot in English a concise explanation of the relevance of theinformation to the new application is not required unless therelevance of the information differs from its relevance asexplained in the prior application See A(3) below

Second 37 CFR 198(c) states that when the disclosures oftwo or more patents or publications listed in an informationdisclosure statement are substantively cumulative a copy of oneof the patents or publications may be submitted without copiesof the other patents or publications provided that a statement ismade that these other patents or publications are cumulativeThe examiner will then consider only the patent or publicationof which a copy is submitted and will so indicate on the list orform PTO-1449 submitted eg by crossing out the listing of thecumulative information

37 CFR 198(c) further states that if a written Englishlanguage translation of a non-English language document orportion thereof is within the possession custody or control ofor is readily available to any individual designated in 37CFR 156(c) a copy of the translation shall accompany thestatement Translations are not required to be filed unless theyhave been reduced to writing and are actually translations ofwhat is contained in the non-English language information Ifno translation is submitted the examiner will consider theinformation in view of the concise explanation and insofar as itis understood on its face eg drawings chemical formulasEnglish language abstracts in the same manner that non-English language information in Office search files is consid-ered by examiners in conducting searches

AM Each information disclosure statement must further in-clude a concise explanation of the relevance as it is presentlyunderstood by the individual designated in 37 CFR 156(c) mostknowledgeable about the content of the information of eachpatent publication or other information listed that is not in teEnglish angnag The concise explanation may be either sepa-rate from the specification or incorporated therein

The requirement for a concise explanation of relevance islimited to information that is not in the English language Theexplanation required is limited to the relevance as understood bythe individual designated in 37 CFR 156(c) most knowledge-able about the content of the information at the time theinformation is submitted to the Office If a translation of theinformation into English is submitted with the foreign languageinformation no concise explanation is required An English-language equivalent application may be submitted to fulfill thisrequirement if it is in fact a translation of a foreign languageapplication being listed in an information disclosure statementThere is no requirement for the translation to be verified Wherethe information listed is not in the English language but wascited in a search report or other action by a foreign patent officein a counterpart foreign application the requirement for a

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600-67 Rev 14 Nov 1992

PARTS FORM AND CONTENT OF APPUCATION 609

desires the infonnation to be printed on the patent

A CONTENT

An information disclosure statement must comply with the provisions on 7 CFR 198 as to content in order to be considered by the Office Each information disclosure statement must comply with the applicable provisions of A(1) A(2) and A(3) below

AUl Each information disclosure statement must include a list of all patents publications or other information submitted for consideration by the Office

37 CFR 198(b) requires that each US patent listed in an information disclosure statement be identified by patentee patent number and issue date Each foreign patent or published foreign patent application must be identified by the country or patent office which issued the patent or published the applicashytion an appropriate document number and the publication date indicated on the patent or published application Each publicashytion must be identified by author (if any) title relevant pages of the publication date (at least month and year) and place of publication The place of publication refers to the name of the journal magazine or other publication in which the infonnation being submitted was published

To comply with this requirement the list may not be incorshyporated into the specification but must be submitted in a separate paper A separate list is required so that it is easy to confum that applicant intends to submit an information disclosure statement and because it provides a readily available checklist for the examiner to indicate which identified documents have been considered A copy of a separate list will also provide a simple means of communication to applicant to indicate the listed documents that have been considered and those listed docushyments that have not been considered Use of form PTO-I449 Information Disclosure Citation is encouraged See C(2) below

am In addition to the list each infonnation disclosure stateshyment must also include a legible copy of

(i)Each US and foreign patent (ii)Each publication or that portion which caused it to be

listed and (iii)AU other information or that portion which caused it to

be listed except that no copy of a US patent application need be included

There are exceptions to this general rule that a copy must be provided First 37 CFR 198(d) states that a copy of any patent publication or other information listed in an information discloshysure statement is not required to be provided if it was previously cited by or submitted to the Office in a prior application provided that the prior application is properly identified in the statement and relied upon for an earlier filing date under 35 USC 120 The examiner will consider information cited or

submitted to the Office in a prior application relied on under 35 USC 120 This exception to the requirement for copies of information does not apply to information which was cited in an international application under the Patent Cooperation Treaty If the information cited or submitted in the prior application was not in English a concise explanation of the relevance of the information to the new application is not required unless the relevance of the information differs from its relevance as explained in the prior application See A(3) below

Second 37 CFR 198(c) states that 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 may be submitted without copies of the other patents or publications provided that a statement is made that these other patents or publications are cumulative The examiner will then consider only the patent or publication of which a copy is submitted and will so indicate on the list or form PTO-I449 submitted eg by crossing out the listing of the cumulative information

37 CFR 198(c) further states that 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 37 CFR 156(c) a copy of the translation shall accompany the statement Translations are not required to be filed unless they have been reduced to writing and are actually translations of what is contained in the non-English language information If no translation is submitted the examiner will consider the information in view of the concise explanation and insofar as it is understood on its face eg drawings chemical formulas English language abstracts in the same manner that nonshyEnglish language information in Office search files is considshyered by examiners in conducting searches

Aili Each information disclosure statement must further inshyclude a concise explanation of the relevance as it is presently understood by the individual designated in 37 CFR 156( c) most knowledgeable about the content of the information of each patent publication or other information listed that is not in the En~lish lan~ua~e The concise explanation may be either sepashyrate from the specification or incorporated therein

The requirement for a concise explanation of relevance is limited to information that is not in the English language The explanation required is limited to the relevance as understood by the individual designated in 37 CFR 156(c) most knowledgeshyable about the content of the information at the time the information is submitted to the Office If a translation of the information into English is submitted with the foreign language information no concise explanation is required An Englishshylanguage equivalent application may be submitted to fulfill this requirement if it is in fact a translation of a foreign language application being listed in an infonnation disclosure statement There is no requirement for the translation to be verified Where the information listed is not in the English language but was cited in a search report or other action by a foreign patent office in a counterpart foreign application the requirement for a

600-67 Rev 14 Nov 1992


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concise explanation of relevance can be satisfied by submittingan English language version of the search report or action whichindicates the degree of relevance found by the foreign officeThis may be an explanation of which portion of the reference isparticularly relevant to which claims it applies or merely anX Y or A indication on a search report The requirementfor a concise explanation of non-English language informationwould not be satisfied by a statement that a reference was citedin the prosecution of a parent related or copending UnitedStates application

The concise explanation may indicate that a particular figureor paragraph of the patent or publication is relevant to theclaimed invention It might be a simple statement pointing tosimilarities between the item of information and the claimedinvention It is permissible but not necessary to discuss differ-ences between the cited information and the claims

Applicants may if they wish provide a concise explanationof why English-language information is being submitted andhow it is understood to be relevant Concise explanations arehelpful to the Office particularly where documents are lengthyand complex and applicant is aware of a section that is highlyrelevant to patentability or where a large number of documentsare submitted and applicant is aware that one or more are highlyrelevant to patentability

B TIME FOR FILING

The procedure and requirements for submitting an informa-tion disclosure statement are linked to four stages in the process-ing of a patent application (1) within three months of filing orbefore first Office action whichever is later (2) after the periodin (1) but before final Office action or a Notice of Allowancewhichever is earlier (3) after the period in (2) but on or beforethe date the issue fee is paid and (4) after the period in (3) andup to the time the patent application can be effectively with-drawn from issue The procedures and requirements apply toapplications filed under 35 USC 111 (utility) 161 (plants)171 (designs) and 251 (reissue) as well as international appli-cations entering the national stage under 35 USC 371

The requirements based on the time when the informationdisclosure statement is filed are summarized as follows

Time when IDS is filed

(1) Within 3 months of filing cbefore first Office action onthe merits whichever is later

(2) After (1) but before finalaction or notice of allowance

(3) After final action or noticeof allowance and before pay-ment of issue fee

37 CFR 197 Requirements

Ir None (alwaysconsidered)

Certification or117(p) fee

Certificationpetition andpetition fee

LW Statement filed BEORE first action on the merits orwithin three (3) months of actual filing date (37 CFR 197(b))

An information disclosure statement will be considered bythe examiner if filed

(i) within three months of the filing date of a nationalapplication

(ii) within three months of the date of entry of the nationalstage as setforth in 37 CFR 1491 in an international applicationor

(iii) before the mailing date of a first Office action on themerits

whichever event occurs last A statement filed within this periodrequires neither a fee nor a certification of prompt filing

The term national application includes continuing appli-cations (continuations divisions continuations-in-part) sothree-months will be measured from the actual filing date of anapplication as opposed to the effective filing date ofa continuingapplication

All information disclosure statements that comply with thecontent requirements of 37 CFR 198 and are filed within threemonths of the filing date will be considered by the examinerregardless of whatever else has occurred in the examinationprocess up to that point in time Thus in the rare instance that afinal Office action or a notice of allowance is prepared andmailed prior to a date which is three months from the filing dateany information contained in a complete information disclosurestatement filed within that three-month window will be consid-ered by the examiner

Likewise an information disclosure statement will be con-sidered if it is filed later than three months after the filing datebut before the mailing date of a first Office action on the meritsAn action on the merits means an action which treats thepatentability of the claims in an application as opposed to onlyformal or procedural requirements An action on the meritswould for example contain a rejection or indication ofallowability of a claim or claims rather than just a restrictionrequirement (37 CFR 1142) orjust a requirement for additionalfees to have a claim considered (37 CFR 116(d)) Thus if anapplication was filed on January 1 and the first Office action onthe merits was not mailed until six months later on July 1 theexaminer would be required to consider any proper informationdisclosure statement filed prior to July 1

An information disclosure statement will be considered tohave been filed on the day it was received in the Office or on anearlier date of mailing if accompanied by a properly executedcertificate of mailing under 37 CFR 18 or Express Mailcertificate under 37 CFR 110 An Office action is mailed on thedate indicated in the Office action

11(Z Statement filed after B(1) but lEEORE mailing of finalaction or notice of allowance (37 CFR 197(c))

An information disclosure statement will be considered bythe examiner if filed after the period specified in B (1) above butbefore (not on the same day as) the mailing date of either

609

600 -68Rev 14 Nov 1992

609 MANUAL OF PATENT EXAMINING PROCEDURE

concise explanation of relevance can be satisfied by submitting an English language version of the search report or action which indicates the degree of relevance found by the foreign office This may be an explanation of which portion of the reference is particularly relevant to which claims it applies or merely an X Y or A indication on a search report The requirement for a concise explanation of non-English language information would not be satisfied by a statement that a reference was cited in the prosecution of a parent related or copending United States application

The concise explanation may indicate that a particular figure or paragraph of the patent or publication is relevant to the claimed invention It might be a simple statement pointing to similarities between the item of information and the claimed invention It is permissible but not necessary to discuss differshyences between the cited information and the claims

Applicants may if they wish provide a concise explanation of why English-language information is being submitted and how it is understood to be relevant Concise explanations are helpful to the Office particularly where documents are lengthy and complex and applicant is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability

Be TIME FOR FILING

The procedure and requirements for submitting an informashytion disclosure statement are linked to four stages in the processshying of a patent application (1) within three months of filing or before frrst Office action whichever is later (2) after the period in (1) but before final Office action or a Notice of Allowance whichever is earlier (3) after the period in (2) but on or before the date the issue fee is paid and (4) after the period in (3) and up to the time the patent application can be effectively withshydrawn from issue The procedures and requirements apply to applications filed under 35 USC 111 (utility) 161 (plants) 171 (designs) and 251 (reissue) as well as international applishycations entering the national stage under 35 USC 371

The requirements based on the time when the information disclosure statement is filed are summarized as follows

Time when IDS is filed 37 CFR 1 97 RCQuirements

(1) Within 3 months of filing or before frrst Office action on the merits whichever is later

(2) After (1) but before final action or notice of allowance

(3) After final action or noticemiddot of allowance and before payshyment of issue fee

None (always considered)

Certification or 117(p) fee

Certification petition and petition fee

B1ll Statement filed BEFORE fmt action on the merits or within three (3) months of actual filing date (37 CFR 197(braquo

An information disclosure statement will be considered by the examiner if filed

(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 37 CFR 1491 in an international application or

(iii) before the mailing date of a frrst Office action on the merits

whichever event occurs last A statement filed within this period requires neither a fee nor a certification of prompt filing

The term national application includes continuing applishycations (continuations divisions continuations-in-part) so three-months will be measured from the actual filing date of an application as opposed to the effective filing date of a continuing application

All information disclosure statements that comply with the content requirements of 37 CFR 198 and are filed withiit three months of the filing date will be considered by the examiner regardless of whatever else has occurred in the examination process up to that point in time Thus in the rare instance that a final Office action or a notice of allowance is prepared and mailed prior to a date which is three months from the filing date any information contained in a complete information disclosure statement filed within that three-month window will be considshyered by the examiner

Likewise an information disclosure statement will be conshysidered if it is filed later than three months after the filing date but before the mailing date of a frrst Office action on the merits An action on the merits means an action which treats the patentability of the claims in an application as opposed to only formal or procedural requirements An action on the merits would for example contain a rejection or indication of allowability of a claim or claims rather than just a restriction requirement (37 CFR 1142) orjustarequirementforadditional fees to have a claim considered (37 CFR 116(draquo Thus if an application was filed on January 1 and the frrst Office action on the merits was not mailed until six months later on July 1 the examiner would be required to consider any proper information disclosure statement filed prior to July 1

An information disclosure statement will be considered to have been filed on the day it was received in the Office or on an earlier date of mailing if accompanied by a properly executed certificate of mailing under 37 CFR 18 or Express Mail certificate under 37 CFR 110 An Office action is mailed on the date indicated in tle Office action

IlW Statement filed after B(1) but BEfORE mailing of fmal action or notice of allowance (37 CFR 197(craquo

An information disclosure statement will be considered by the examiner if filed after the period specified in B (1) above but before (not on the same day as) the mailing date of either

Rev 14 Nov 1992 600- 68 20

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a final action under 37 CFR 1113 eg final rejection ornotice of allowability or

a notice of allowance under 37 CFR 1311

whichever occurs first provided (1) the statement is accompa-nied by either a certification as specified in 37 CFR 197(e) or(2) the fee set forth in 37 CFR 117(p) If a final action or noticeof allowance is mailed in an application and later withdrawn theapplication will be considered as not having had a final actionor notice of allowance mailed for purposes of considering aninformation disclosure statement

(i) If information submitted during the period set forth in 37CFR 197(c) with a certification is used in a new ground ofrejection on unamended claims the next Office action will notbe made final since in this situation it is clear that applicant hassubmitted the information to the Office promptly after it hasbecome known and the information is being submitted prior toa final determination on patentability by the Office The infor-mation submitted with a certification can be used in a newground of rejection and the next Office action made finalhowever if the new ground of rejection was necessitated byamendment of the application by applicant Where the informa-tion is submitted during this period with a fee the examiner mayuse the information submitted eg printed publication orevidence of public use and make the next Office action finalwhether or not the claims have been amended provided that noother new ground of rejection which was not necessitated byamendment to the claims is introduced by the examiner SeeMPEP sect 70607(a) If a new ground of rejection is introducedthat is neither necessitated by an amendment to the claims norbased on the information submitted with the fee set forth in 37CFR 117(p) the Office action shall not be made final

(ii) A certification under 37 CFR 197(e) must state either(a) that each item of information contained in the informa-

tion disclosure statement was cited in a communication from aforeign patent office in a counterpart foreign application notmore than three months prior to the filing of the statement or

(b) that no item of information contained in the informationdisclosure statement was cited in a communication from aforeign patent office in a counterpart foreign application or tothe knowledge of the person signing the certification aftermaking reasonable inquiry was known to any individual desig-nated in 37 CFR 156(c) more than three months prior to thefiling of the statement

A certification can contain either of two statements Onestatement is that each item of information in an informationdisclosure statement was cited in a communication such as asearch report from a patent office outside the US in a counter-part foreign application not more than three months prior to thefiling date of the statement Under this certification it does notmatter whether any individual with a duty of disclosure actuallyknew about any of the information cited before receiving thesearch report The date on the communication by the foreignpatent office begins the three-month period in the same manneras the mailing of an Office action starts a three-month shortened

statutory period for response If the communication containstwo dates the mailing date of the communication is the onewhich begins the three month period The date which begins thethree-month period is not the date the communication wasreceived by a foreign associate or the date it was received by aUS registered practitioner Likewisethe statement will beconsidered to have been filed on the date the statement wasreceived in the Office or on an earlier date of mailing ifaccompanied by a properly executed certificate of mailingunder 37 CFR 18 or Express Mail certificate under 37 CFR110

The term counterpart foreign patent application means thata claim for priority has been made in either the US applicationor a foreign application based on the other or that the disclo-sures of the US and foreign patent applications are substan-tively identical (eg an application filed in the European PatentOffice claiming the same UK priority as claimed in the USapplication)

In the alternative a certification can be made if no item ofinformation contained in the information disclosure statementwas cited in a communication from a foreign patent office in acounterpart foreign application and to the knowledge of theperson signing the certification after making reasonable in-quiry neither was it known to any individual having a duty todisclose more than three months prior to the filing of thestatement

The phrase after making reasonable inquiry makes it clearthat the individual making the certification has a duty to makereasonable inquiry regarding the facts that are being certifiedThe certification can be made by a registered practitioner whorepresents a foreign client and who relies on statements made bythe foreign client as to the date the information first becameknown A registered practitioner who receives informationfrom a client without being informed whether the informationwas known for more than three months however cannot makethe certification without making reasonable inquiry For ex-ample if an inventor gave a publication to the attorney prosecut-ing an application with the intent that it be cited to the Office theattorney should inquire as to when that inventor became awareof the publication and should not submit a certification under 37CFR 197(e)(2) to the Office until a satisfactory response isreceived The certification can be based on present good faithknowledge about when information became known without asearch of files being made

Certification need not be in the form of an oath or adeclaration under 37 CFR 168 Certification by a registeredpractitioner or any other individual that the statement was filedwithin the three-month period of either first citation by a foreignpatent office or first discovery of the information will beaccepted as dispositive of compliance with this provision in theabsence of evidence to the contrary For example acertificationcould read as follows

I hereby certify that each item of informationcontained in this Information Disclosure Statementwas cited in a communication from a foreign patentoffice in a counterpart foreign application not more

Rev 14 Nov 1992

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600 -69


a final action under 37 CFR 1113 eg final rejection or notice of allowability or


whichever occurs first provided (1) the statement is accompashynied by either a certification as specified in 37 CFR 197(e) or (2) the fee set forth in 37 CFR 117(p) If a final action or notice of allowance is mailed in an application and later withdrawn the application will be considered as not having had a final action or notice of allowance mailed for purposes of considering an information disclosure statement

(i) If information submitted during the period set forth in 37 CFR 197(c) with a certification is used in a new ground of rejection on unamended claims the next Office action will not be made final since in this situation it is clear that applicant has submitted the information to the Office promptly after it has become known and the information is being submitted prior to a final determination on patentability by the Office The inforshymation submitted with a certification can be used in a new ground of rejection and the next Office action made final however if the new ground of rejection was necessitated by amendment of the application by applicant Where the informashytion is submitted during this period with a fee the examiner may use the information submitted eg printed publication or evidence of public use and make the next Office action fmal whether or not the claims have been amended provided that no other new ground of rejection which was not necessitated by amendment to the claims is introduced by the examiner See MPEP sect 70607(a) If a new ground of rejection is introduced that is neither necessitated by an amendment to the claims nor based on the information submitted with the fee set forth in 37 CFR 117(p) the Office action shall not be made final

(ii) A certification under 37 CFR 197(e) must state either (a) that each item of information contained in the informashy

tion disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application not more than three months prior to the filing of the statement or

(b) that no item of information contained in the infomiation disclosure statement was cited in a communication from a foreign patent office in a counterpart foreign application or to the knowledge of the person signing the certification after making reasonable inquiry was known to any individual desigshynated in 37 CFR 156(c) more than three months prior to the flIing of the statement

A certification can contain either of two statements One statement is that each item of information in an information disclosure statement was cited in a communication such as a search report from a patent office outside the US in a countershypart foreign application not more than three months prior to the filing date of the statement Under this certification it does not matter whether any individual with a duty of disclosure actually knew about any of the information cited before receiving the search report The date on the communication by the foreign patent office begins the three-month period in the same manner as the mailing of an Office action starts a three-month shortened

statutory period for response If the communication contains two dates the mailing date of the communication is the one which begins the three month period The date which begins the three-month period is not the date the communication was received by a foreign associate or the date it was received by a US registered practitioner Likewisethe statement will be considered to have been flIed on the date the statement was received in the Office or on an earlier date of mailing if accompanied by a properly executed certificate of mailing under 37 CFR 18 or Express Mail certificate under 37 CFR 110

The term counterpart foreign patent application means that a claim for priority has been made in either the US application or a foreign application based on the other or that the discloshysures of the US and foreign patent applications are substanshytively identical (eg an application filed in the European Patent Office claiming the same UK priority as claimed in the US application)

In the alternative a certification can be made if 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 inshyquiry neither was it known to any individual having a duty to disclose more than three months prior to the filing of the statement

The phrase after making reasonable inquiry makes it clear that the individual making the certification has a duty to make reasonable inquiry regarding the facts that are being certified The certification can be made by a registered practitioner who represents a foreign client and who relies on statements made by the foreign client as to the date the information frrst became known A registered practitioner who receives information from a client without being informed whether the information was known for more than three months however cannot make the certification without making reasonable inquiry For exshyample if an inventor gav1 a publication to the attorney prosecutshying an application with the intent that it be cited to the Office the attorney should inquire as to when that inventor became aware of the publication and should not submit a certification under 37 CFR 197(e)(2) to the Office until a satisfactory response is received The certification can be based on present good faith knowledge about when information became knoWn without a search of files being made

Certification need not be in the form of an oath or a declaration under 37 CFR 168 Certification by a registered practitioner or any other individual that the statement was flIed within the three-month period of either frrst citation by a foreign patent office or frrst discovery of the information will be accepted as dispositive of compliance with this provision in the absence of evidence to the contrary For example a certification could read as follows

ttl hereby certify that each item of information contained in this Information Disclosure Statement was cited in a communication from a foreign patent office in a counterpart foreign application not more

600 - 69 Rev 14 Nov 1992 21


OF PATENT EXAMINING PROCEDURE609than three months prior to the filing of this state-ment or

I hereby certify that no item of information inthe Information Disclosure Statement filed herewithwas cited in a communication from a foreign patentoffice in a counterpart foreign application or to myknowledge after making reasonable inquiry wasknown to any individual designated in 37 CFR156(c) more than three months prior to the filing ofthis Information Disclosure Statement

An information disclosure statement may include two listsand two certifications similar to the above examples in situa-tions where some of the information listed was cited in acommunication from a foreign patent office not more than threemonths prior to filing the statement and some was not but wasnot known more than three months prior to filing the statement

A copy of the foreign search report need not be submittedwith the certification but an individual may wish to submit anEnglish-language version of the search report to satisfy therequirement for a concise explanation where non-English lan-guage information is cited The time at which information wasknown to any individual designated in 37 CFR 156(c) is thetime when the information was discovered in association withthe application even if awareness of the materiality came laterThe Office wishes to encourage prompt evaluation of therelevance of information and to have a date certain for determin-ing if a certification can properly be made A statement oninformation and belief would not be sufficient Examinersshould not remind or otherwise make any comment about anindividuals duty of candor and good faith but questions aboutthe adequacy of any certification received in writing by theOffice should be directed to the Office of the Assistant Commis-sioner for Patents

D-W Statement filed after B(2) but Prior to Payment of IssueFee (37 CFR 197(d))

An information disclosure statement will be considered bythe examiner if filed on or after the mailing date of either a finalaction under 37 CFR 1113 or a notice of allowance under 37CFR 1311 whichever occurs first but before or simultaneouswith payment of the issue fee provided the statement is accom-panied by

(i) a certification as specified in 37 CFR 197(e) (see thediscussion in B(2)(ii) above)

(ii) a petition requesting consideration of the informationdisclosure statement and

(iii) the petition fee set forth in 37 CFR 117(i)(1)

These requirements are appropriate in view of the late stageof prosecution when the information is being submitted ieafter the examiner has reached a final determination on thepatentability of the claims presented for examination Thepetition should be directed to the Group Director of the exam-

ining group handling the application The petition need donothing more than request consideration of the informationbeing submitted Payment of the petition fee (37 CFR117(iX1)) and submission of the appropriate certification (37CFR 197(e)) are the essential elements for having informationconsidered at this advanced stage of prosecution assuming thecontent requirements of 37 CFR 198 are satisfied

The requirements of 37 CFR 197 provide for considerationby the Office of information which is submitted within areasonable time ie within 3 months after an individual desig-nated in 37 CFR 156(c) becomes aware of the information orwithin 3 months of the information being cited in a communi-cation from a foreign patent office in a counterpart foreignapplication This undertaking by the Office to consider informa-tion would be available throughout the pendency of the applica-tion until the point where the patent issue fee was paid If anapplicant chose not to comply or could not comply with therequirements of 37 CFR 197(d) a continuing application couldbe filed to have the information considered by the examinerThe parent application could be permitted to become abandonedby not paying the issue fee required in the Notice of Allowancefor example or by the filing of a file wrapper continuingapplication under 37 CFR 162 It would not be proper to makefinal a first Office action in the continuing application if theinformation submitted is used in a new ground of rejection

B4)_ Statement filed after Payment of Issue Fee

After the issue fee has been paid on an application it isimpractical for the Office to attempt to consider newly submit-ted information Information disclosure statements filed afterpayment of the issue fee in an application will not be consideredbut will merely be placed in the application file See C belowThe application may be withdrawn from issue at this pointhowever pursuant to 37 CFR 1313(b)(5) so that the informa-tion can be considered in a continuing application In thissituation a file wrapper continuing application under 37 CFR162 could be filed even though the issue fee had already beenpaid The Office will consider the filing of a petition under 37CFR 1313(bX5) as sufficient grounds to waive the requirementthat an application under 37 CFR 162 be filed before paymentof the issue fee Alternatively for example a petition pursuantto 37 CFR 1313(b)(3) could be filed if applicant states that oneor more claims are unpatentable This statement that one ormore claims are unpatentable over the information must beunequivocal A statement that a serious question as to patent-ability of a claim has been raised for example would not beacceptable to withdraw an application from issue under 37 CFR1313(b)(3)

If an application has been withdrawn from issue under oneof the provisions of 37 CFR 1313(b)(1)-(4) it will be treated asthough no notice of allowance had been mailed and the issue feehad not yet been paid with regard to the time for filing informa-tion disclosure statements Petitions under 37 CFR 1313(b)should be directed to the Office of Petitions in the Office of theAssistant Commissioner for Patents

Rev 14 Nov 1992 600 -70


than three months prior to the filing of this stateshyment or

I hereby certify that no item of information in the Information Disclosure Statement filed herewith was cited in a communication from a foreign patent office in a counterpart foreign application or to my knowledge after making reasonable inquiry was known to any individual designated in 37 CFR 156(c) more than three months prior to the filing of this Information Disclosure Statement

An information disclosure statement may include two lists and two certifications similar to the above examples in situashytions where some of the information listed was cited in a communication from a foreign patent office not more than three months prior to filing the statement and some was not but was not known more than three months prior to filing the statement

A copy of the foreign search report need not be submitted with the certification but an individual may wish to submit an English-language version of the search report to satisfy the requirement for a concise explanation where non-English lanshyguage information is cited The time at which information was known to any individual designated in 37 CFR 156(c) is the time when the information was discovered in association with the application even if awareness of the materiality carne later The Office wishes to encourage prompt evaluation of the relevance of information and to have a date certain for determinshying if a certification can properly be made A statement on information and belief would not be sufficient Examiners should not remind or otherwise make any comment about an individuals duty of candor and good faith but questions about the adequacy of any certification received in writing by the Office should be directed to the Office of the Assistant Commisshysioner for Patents

BpoundJl Statement filed after B(2) but Prior to Payment of Issue Fee (37 CFR 197(draquo

An information disclosure statement will be considered by the examiner if filed on or after the mailing date of either a fmal action under 37 CFR 1113 or a notice of allowance under 37 CFR 1311 whichever occurs frrst but before or simultaneous with payment of the issue fee provided the statement is accomshypanied by

(i) a certification as specified in 37 CFR 197(e) (see the discussion in B(2)(ii) above)

(ii) a petition requesting consideration of the information disclosure statement and

(iii) the petition fee set forth in 37 CFR 117(i)(l)

These requirements are appropriate in view of the late stage of prosecution when the information is being submitted ie after the examiner has reached a final determination on the patentability of the claims presented for examination The petition should be directed to the Group Director of the exam-

ining group handling the application The petition need do nothing more than request consideration of the information being submitted Payment of the petition fee (37 CFR 117(iXlraquo awl submission of the appropriate certification (37 CFR 197(eraquo are the essential elements for having information considered at this advanced stage of prosecution assuming the content requirements of 37 CFR 198 are satisfied

The requirements of 37 CFR 197 provide for consideration by the Office of information which is submitted within a reasonable time ie within 3 months after an individual desigshynated in 37 CFR 156(c) becomes aware of the information or within 3 months of the information being cited in a communishycation from a foreign patent office in a counterpart foreign application This undertaking by the Office to consider informashytion would be available throughout the pendency of the applicashytion until the point where the patent issue fee was paid If an applicant chose not to comply or could not comply with the requirements of37 CFR 197(d) a continuing application could be filed to have the information considered by the examiner The parent application could be permitted to become abandoned by not paying the issue fee required in the Notice of Allowance for example or by the filing of a me wrapper continuing application under 37 CFR 162 It would not be proper to make fmal a frrst Office action in the continuing application if the information submitted is used in a new ground of rejection

Ilil Statement filed after Payment of Issue Fee

After the issue fee has been paid on an application it is impractical for the Office to attempt to consider newly submitshyted information Information disclosure statements filed after payment of the issue fee in an application will not be considered but will merely be placed in the application file See C below The application may be withdrawn from issue at this point however pursuant to 37 CFR 1313(b)(5) so that the informashytion can be considered in a continuing application In this situation a file wrapper continuing application under 37 CFR 162 could be filed even though the issue fee bad already been paid The Office will consider the filing of a petition under 37 CFR 1313(bX5) as sufficient grounds to waive the requirement that an application under 37 CFR 162 be flIed before payment of the issue fee Alternatively for example a petition pursuant to 37 CFR 1313(b X3) could be filed if applicant states that one or more claims are unpatentable This statement that one or more claims are unpatentable over the information must be unequiVOCal A statement that a serious question as to patentshyability of a claim has been raised for example would not be acceptable to withdraw an application from issue under 37 CFR 1313(b)(3)

If an application has been withdrawn from issue under one of the provisions of37 CFR 1313(b )(1 )-(4) it will be treated as though no notice of allowance had been mailed and the issue fee had not yet been paid with regard to the time for filing informashytion disclosure statements Petitions under 37 CFR 1313(b) should be directed to the Office of Petitions in the Office of the Assistant Commissioner for Patents

Rev 14 Nov 1992 600-70 22


MEMORANDUM

October 5 2012

Via Electronic Mail fitf rulesusptogov

TO The Honorable David J Kappos Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office

FROM Robert C Ryan Esq (Reg No 29343) Craig H Macy Esq (Reg No 68344) Connor L McCune (Reg No 69726)

DATE October 5 2012

RE First-Inventor-to-File (Response to Proposed Rules)


Below are our comments on proposed rule 178 as seen in Vol 77 No 144 of the Federal Register dated Thursday July 262012

PROBLEMS PRESENTED BY PROPOSED RULE 178(a)3

Proposed section 178(a)(3) requires that if an applicant believes new matter is added to a nonprovisional application claiming priority to a provisional application filed before March 16 2013 the applicant must certify that the application includes new matter so that the PTO can determine which law to apply to the application This requirement should not be enacted because it imposes a very serious costly and risky burden on applicants and their counsel and reduces the incentive to patent innovate expand human knowledge and create new products services enterprises and jobs

I First every attorney has the duty zealously to protect and pursue a clients legitimate interests within the bounds of the lawj A duty to concede the existence of subject matter not also disclosed in (the) provisional application runs directly counter to that duty jj Like obviousness and thus materiality the determination of what constitutes new matter can involve

Holland amp HartLLP Attorneys at Law

Pho ne (775) 327-3000 Fax (775) 786-6179 wwwhollandhartcom

5441 Kietzke Lane Second Floor Reno NV 89511

Aspen Billings Boise Boulder carson City Cheyenne Colorado Springs Denver Denver Tech Center Jackson Hole Las V~as Reno Salt Lake City Santa Fe Washington DC














Very truly yours






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Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22


AND REGULATIONS




























55905590
























CL_McCune
Highlight

AND REGULATIONS





























391


























S591













CL_McCune
Highlight






PATENT APPEALS













1010



























5592


AND REGULATIONS








TE OF RULEs ADOPTED








secrecy S S S 0



5593






































5593











SUl$




npplications





AND REGULATIONS







































CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight

AND REGULATIONS


S S S











peals


















tFR Doo77-2528 Piled 1-27-77845 am]


5595


















5595






lomey







1FR DooT1-2528 Filed 1-27-77845 am
























Rev 52 Apr 1977













Rev 52 Apr 1977 60











CL_McCune
Highlight
CL_McCune
Highlight













Rev 52 Apr 1977






601








Rev 52 Apr 1977


CL_McCune
Highlight








Rev 52 Apr 1977 602






Rev 52 Apr 1977 602




CL_McCune
Highlight






















































CL_McCune
Highlight
CL_McCune
Highlight














































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22


AND REGULATIONS





























391


























S591













CL_McCune
Highlight






PATENT APPEALS













1010



























5592


AND REGULATIONS








TE OF RULEs ADOPTED








secrecy S S S 0



5593






































5593











SUl$




npplications





AND REGULATIONS







































CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight

AND REGULATIONS


S S S











peals


















tFR Doo77-2528 Piled 1-27-77845 am]


5595


















5595






lomey







1FR DooT1-2528 Filed 1-27-77845 am
























Rev 52 Apr 1977













Rev 52 Apr 1977 60











CL_McCune
Highlight
CL_McCune
Highlight













Rev 52 Apr 1977






601








Rev 52 Apr 1977


CL_McCune
Highlight








Rev 52 Apr 1977 602






Rev 52 Apr 1977 602




CL_McCune
Highlight






















































CL_McCune
Highlight
CL_McCune
Highlight














































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22







PATENT APPEALS













1010



























5592


AND REGULATIONS








TE OF RULEs ADOPTED








secrecy S S S 0



5593






































5593











SUl$




npplications





AND REGULATIONS







































CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight

AND REGULATIONS


S S S











peals


















tFR Doo77-2528 Piled 1-27-77845 am]


5595


















5595






lomey







1FR DooT1-2528 Filed 1-27-77845 am
























Rev 52 Apr 1977













Rev 52 Apr 1977 60











CL_McCune
Highlight
CL_McCune
Highlight













Rev 52 Apr 1977






601








Rev 52 Apr 1977


CL_McCune
Highlight








Rev 52 Apr 1977 602






Rev 52 Apr 1977 602




CL_McCune
Highlight






















































CL_McCune
Highlight
CL_McCune
Highlight














































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22


AND REGULATIONS








TE OF RULEs ADOPTED








secrecy S S S 0



5593






































5593











SUl$




npplications





AND REGULATIONS







































CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight

AND REGULATIONS


S S S











peals


















tFR Doo77-2528 Piled 1-27-77845 am]


5595


















5595






lomey







1FR DooT1-2528 Filed 1-27-77845 am
























Rev 52 Apr 1977













Rev 52 Apr 1977 60











CL_McCune
Highlight
CL_McCune
Highlight













Rev 52 Apr 1977






601








Rev 52 Apr 1977


CL_McCune
Highlight








Rev 52 Apr 1977 602






Rev 52 Apr 1977 602




CL_McCune
Highlight






















































CL_McCune
Highlight
CL_McCune
Highlight














































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22


AND REGULATIONS







































CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight

AND REGULATIONS


S S S











peals


















tFR Doo77-2528 Piled 1-27-77845 am]


5595


















5595






lomey







1FR DooT1-2528 Filed 1-27-77845 am
























Rev 52 Apr 1977













Rev 52 Apr 1977 60











CL_McCune
Highlight
CL_McCune
Highlight













Rev 52 Apr 1977






601








Rev 52 Apr 1977


CL_McCune
Highlight








Rev 52 Apr 1977 602






Rev 52 Apr 1977 602




CL_McCune
Highlight






















































CL_McCune
Highlight
CL_McCune
Highlight














































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22


AND REGULATIONS


S S S











peals


















tFR Doo77-2528 Piled 1-27-77845 am]


5595


















5595






lomey







1FR DooT1-2528 Filed 1-27-77845 am
























Rev 52 Apr 1977













Rev 52 Apr 1977 60











CL_McCune
Highlight
CL_McCune
Highlight













Rev 52 Apr 1977






601








Rev 52 Apr 1977


CL_McCune
Highlight








Rev 52 Apr 1977 602






Rev 52 Apr 1977 602




CL_McCune
Highlight






















































CL_McCune
Highlight
CL_McCune
Highlight














































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22























Rev 52 Apr 1977













Rev 52 Apr 1977 60











CL_McCune
Highlight
CL_McCune
Highlight













Rev 52 Apr 1977






601








Rev 52 Apr 1977


CL_McCune
Highlight








Rev 52 Apr 1977 602






Rev 52 Apr 1977 602




CL_McCune
Highlight






















































CL_McCune
Highlight
CL_McCune
Highlight














































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22














Rev 52 Apr 1977






601








Rev 52 Apr 1977


CL_McCune
Highlight








Rev 52 Apr 1977 602






Rev 52 Apr 1977 602




CL_McCune
Highlight






















































CL_McCune
Highlight
CL_McCune
Highlight














































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22









Rev 52 Apr 1977 602






Rev 52 Apr 1977 602




CL_McCune
Highlight






















































CL_McCune
Highlight
CL_McCune
Highlight














































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22























































CL_McCune
Highlight
CL_McCune
Highlight














































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22















































CL_McCune
Highlight
CL_McCune
Highlight





































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22






































































List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22












List of Subjects

37 CFR Part 1


37 CFR Part 10























(d)(1)





















List of Subjects

37CFR Part 1


37 CFR Part 10



































follows












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22












































































































sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22























sect 199 [Removed]





































m bull





sect 199 [Removed]






bull bull bull bull

sect 1193 [Amended]

















CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight




OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22





OTHER INFORMATION


























Rev 14 Nov 1992

609

600 -65




OTHER INFORMATION


























600 - 65 Rev 14 Nov 1992


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22


























609

600-66Rev 14 Nov 1992
























Rev 14 Nov 1992 600-66


CL_McCune
Highlight
CL_McCune
Highlight

















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22


















609

600-67 Rev 14 Nov 1992



A CONTENT















600-67 Rev 14 Nov 1992


CL_McCune
Highlight
CL_McCune
Highlight
CL_McCune
Highlight





B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22






B TIME FOR FILING























609

600 -68Rev 14 Nov 1992





Be TIME FOR FILING






















Rev 14 Nov 1992 600- 68 20


CL_McCune
Highlight
CL_McCune
Highlight
















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22

















Rev 14 Nov 1992

609

600 -69
















600 - 69 Rev 14 Nov 1992 21

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22

















Rev 14 Nov 1992 600 -70

















Rev 14 Nov 1992 600-70 22


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Robert C. Ryan Patent Attorney/Partner & HART LLP · 2012-10-05 · From: Bob Ryan Sent: Friday,...

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